MPEP Q & A 225: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification.

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Question:

What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification?

Answer:

Reasons, why the prior art element should not be considered an equivalent to the invention disclosed in the specification, may include:

  • teachings in the specification that the particular prior art is not equivalent
  • teachings in the prior art reference itself that may tend to show nonequivalence
  • 37 CFR 1.132 affidavit evidence of facts tending to show nonequivalence.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2184 of the MPEP.  The following is a brief summary of section 2184.

2184 Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made

If the applicant disagrees with the inference of equivalence drawn from a prior art reference, the applicant may provide reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification. Further details on determining whether an applicant has met the burden of proving nonequivalence after a prima facie case is made are discussed.

MPEP Q & A 224: What are the “Appropriate circumstances” to vacate the order granting reexamination?

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Question:

What are the “Appropriate circumstances” to vacate the order granting reexamination?

Answer:

“Appropriate circumstances” exist to vacate the order granting reexamination where, for example:

  • (A) the reexamination order is facially not based on prior art patents or printed publications;
  • (B) reexamination is prohibited under 37 CFR 1.907;
  • (C) all claims of the patent were held to be invalid by a final decision of a federal court after all appeals;
  • (D) reexamination was ordered for the wrong patent; or
  • (E) reexamination was ordered based on a duplicate copy of the request.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexaminations.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2646 of the MPEP.  The following is a brief summary of section 2646.

2646 Decision Ordering Reexamination

This section covers the decision ordering reexamination. The decision will identify all claims and issues, identify the patents and/or printed publications relied upon, and provide a brief statement of the rationale supporting each SNQ/RLP.

A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise. This section covers further details on petitions to vacate the order granting the reexamination.

MPEP Q & A 223: What Size Non-Patent Documents Require Document Size Fees?

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Question:

Document size fees are only applicable to non-patent documents having greater than what number of pages?

Answer:

The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees.

Chapter Details:

The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2810.01 of the MPEP.  The following is a brief summary of section 2810.01.

2810.01 Document Size Fees

The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees.

MPEP Q & A 222: What are the Three Conditions That Must be Satisfied …?

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Three Conditions That Must be Satisfied …?

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Question:

AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. What are these three conditions?

Answer:

AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement.

  • First, the subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
    • The AIA defines the term “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
  • Second, the claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
  • Third, the application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2156 of the MPEP.  The following is a brief summary of section 2156.

2156 Joint Research Agreements

This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

This section covers joint research agreements. AIA 35 U.S.C. 102(c) discusses common ownership under joint research agreements. This portion of the statute provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. The three conditions are covered in this section.

MPEP Q & A 221: What are the Three Types of Patent Documents Available as Prior Art …?

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Question:

AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. What are they?

Answer:

AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor:

  • U.S. patents;
  • U.S. patent application publications; and
  • certain WIPO published applications.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2154.01 of the MPEP.  The following is a brief summary of section 2154.01.

2154.01   Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents”

This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

This section discusses prior art under AIA 35 U.S.C. 102(a)(2). These are termed U.S. patent documents. They include U.S. patents, U.S. patent application publications, and certain WIPO published applications.

MPEP Q & A 220: What are the Section 42.208 paragraph (c) Amendments?

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What are the Section 42.208

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Question:

What was Section 42.208 paragraph (c) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board?

Answer:

Section 42.208 is amended by revising paragraph (c) to read as follows:

* * * * *
(c) Sufficient grounds. Post-grant review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute a post-grant review. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause.

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.

MPEP Q & A 219: When may the OPAP object to and require corrected drawings within a set time period?

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When may the OPAP object to and require corrected drawings within a set time period?

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Question:

When may the OPAP object to and require corrected drawings within a set time period?

Answer:

The OPAP may object to and require corrected drawings within a set time period, if the drawings:

  • have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible).
  • have missing lead lines. Lead lines are those lines between the reference characters and the details referred to;
  • contain excessive text or text that is not in English (including, for example, a flow chart that was originally not in English that has been marked up to include the English text).
  • do not have the appropriate margin or are not on the correct size paper.
  • have more than one figure and each figure is not labeled “Fig.” With a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.).
  • include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning.
  • contain color drawings or color photographs, but not a petition to accept color drawings/photographs.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 507 of the MPEP.  The following is a brief summary of section 507.

507    Drawing Review in the Office of Patent Application Processing

This section covers the drawing review process. It covers the reasons drawings are often objected to and a few details on the process for correcting them.

MPEP Q & A 218: What is the issue of correlation about as related to matters of invitro/in vivo?

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The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

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Question:

What is the issue of correlation as related to matters of invitro/in vivo?

Answer:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Chapter Details:

“Correlation” as used herein refers to the relationship between in vitro or in vivo animal model assays and a disclosed or a claimed method of use. An in vitro or in vivo animal model example in the specification, in effect, constitutes a “working example” if that example “correlates” with a disclosed or claimed method invention. If there is no correlation, then the examples do not constitute “working examples.”

Section Summary:

This question and answer comes from section 2164.02 of the MPEP.  The following is a brief summary of section 2164.02.

2164.02 Working Example

Compliance with the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, does not turn on whether an example is disclosed.

An example may be “working” or “prophetic.” A working example is based on work actually performed.

A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved. Further details on the working example are discussed here.

MPEP Q & A 217: What are the Section 42.23 paragraph (b) Amendments?

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Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

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Question:

What was Section 42.23 paragraph (b) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board?

Answer:

Section 42.23 is amended by revising paragraph (b) to read as follows:

42.23 Oppositions and replies.
* * * * *
(b) All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.

MPEP Q & A 216: Time for Establishing ISR and WO of the International Search Authority

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Question:

What is the time limit for establishing the International Search Report and the Written Opinion of the International Searching Authority?

Answer:

Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is subject to international publication.

For international applications filed before July 1, 2014, the written opinion of the International Searching Authority (ISA) is not published but is made available to the public after the expiration of 30 months from the priority date. For international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant will be made available to the public in their original language as of the publication date.

The Office goal is to have the search report and written opinion mailed in sufficient time to reach the International Bureau by the end of 16 months from the priority date or 9 months from the filing date if no priority claim is made.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1843.05  of the MPEP

1843.05   Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority

Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is subject to international publication.

For international applications filed before July 1, 2014, the written opinion of the International Searching Authority (ISA) is not published but is made available to the public after the expiration of 30 months from the priority date. For international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant will be made available to the public in their original language as of the publication date.

The Office goal is to have the search report and written opinion mailed in sufficient time to reach the International Bureau by the end of 16 months from the priority date or 9 months from the filing date if no priority claim is made.