MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

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Question:

What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”?

Answer:

In the first final rule, the Office changed the existing rules to, among other things:

  1. Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and
  2. increase the page limit for petitioner’s reply to patent owner’s response by ten pages.

In the second final rule, the Office changed the existing rules to, among other things:

  1. Allow new testimonial evidence to be submitted with a patent owner’s preliminary response;
  2. allow a claim construction approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final written decision;
  3. replace page limits with word count limits for major briefing; and
  4. add a Rule 11-type certification for papers filed in a proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings 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:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

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Question:

Name two types of patents that may not use the provisions of 37 C.F.R. 1.114.

Answer:

The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents:

  • design patent applications
  • provisional applications
  • applications filed before June 8, 1995
  • international applications filed before June 8, 1995
  • an international design application
  • reexamination patents

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

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 706.07(h) of the MPEP.  The following is a brief summary of this section:

706.07(h)   Request for Continued Examination (RCE) Practice

Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.

MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

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Question:

What must an application filed under 37 CFR 1.53(d) be filed before the earliest of?

Answer:

An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

  • (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application;
  • (B) abandonment of the prior application; or
  • (C) termination of proceedings on the prior application.

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 506 of the MPEP.  The following is a brief summary of this section:

506    Completeness of Original Application

This section covers the completeness of the original application including both nonprovisional and provisional applications. A Notice of Incomplete Application will be mailed for incomplete nonprovisional applications. The filing date will not be granted until the nonprovisional application is deemed complete. In addition, no filing date will be granted for an incomplete provisional application.

Applications are deemed informal and therefore not granted a filing date for numerous reasons including if it is typed on both sides of the paper.

A discussion on filing dates for nonprovisional and provisional applications is also included in this section.

MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

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Question:

A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A?

Answer:

For Step 2A, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception.

  • For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.
  • Similarly, if the claim is directed to a law of nature or a natural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e., set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.

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 2106.07(a) of the MPEP.  The following is a brief summary of this section:

2106.07(a)  Formulating a Rejection For Lack of Subject Matter Eligibility 

After determining what the applicant invented and establishing the broadest reasonable interpretation of the claimed invention, the eligibility of each claim should be evaluated as a whole using the analysis detailed in MPEP § 2106. If it is determined that the claim does not recite eligible subject matter, a rejection under 35 U.S.C. 101 is appropriate. When making the rejection, the Office action must provide an explanation as to why each claim is unpatentable, which must be sufficiently clear and specific to provide applicant sufficient notice of the reasons for ineligibility and enable the applicant to effectively respond.

MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

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Question:

When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply?

Answer:

As shown in the supplement …

The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018).

  • The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule.
  • The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed before the effective date of the final rule.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings 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:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 182: Characteristics of Ex Parte Reexamination

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Question:

List one of the basic characteristics of ex parte reexamination.

Answer:

The basic characteristics of ex parte reexamination are as follows:

  • Anyone can request reexamination at any time during the period of enforceability of the patent;
  • In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection;
  • A substantial new question of patentability must be present for reexamination to be ordered;
  • If ordered, the actual reexamination proceeding is ex parte in nature;
  • Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office;
  • If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;
  • The scope of a claim cannot be enlarged by amendment;
  • All reexamination and patent files are open to the public;
  • The reexamination file is scanned into IFW to provide an electronic format copy of the file.

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents.

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 2209 of the MPEP.  The following is a brief summary of section 2209.

2209  Ex Parte Reexamination

The reexamination statute and rules permit any person to file a request for an ex parte reexamination containing certain elements and the fee required. The Office initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered.

This section covers how reexamination proceedings differ from regular examination procedures and the basic characteristics of ex parte reexamination. For instance, anyone can request reexamination at any time during the period of enforceability of the patent and the prior art considered during reexamination is limited to prior art patents or printed publications.

MPEP Q & A 181: Summary of Claim Construction Standard

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Question:

What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018?

Answer:

This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).

The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny.

Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims.

This final rule also amends the rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination is timely filed in the record of the IPR, PRG or CBM proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings 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: “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. The supplement specifically covers details including the following…

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 180: AIA 35 U.S.C. 102(b)

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Question:

What does AIA 35 U.S.C. 102(b) discuss?

Answer:

AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a).

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 2152 of the MPEP.  The following is a brief summary of section 2152.

2152  Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)

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

This section provides explicit details on AIA 35 U.S.C. 102(a) and (b). It includes a definition of each along with similarities and differences to pre-AIA 35 U.S.C. 102(a), (b), and (e).

MPEP Q & A 179: What is the 3-Step Test for Recapture?

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Question:

What is the 3-step test for recapture?

Answer:

The three-step test for recapture is:

  • First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
  • Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
  • Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

Chapter Details:

The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents.

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 1412.02 of the MPEP.  The following is a brief summary of section 1412.02.

1412.02 Recapture of Canceled Subject Matter

A reissue will not be granted to “recapture” claimed subject matter which was surrendered in an application to obtain the original patent. This section covers the three-step test for recapture:

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

Claims to separate inventions/embodiments/species that were not claimed in the original application prosecution (i.e., “overlooked aspects”) are not a part of a recapture analysis. 

MPEP Q & A 178: What is the Difference Between Derivation and Priority of Invention?

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Question:

What is the difference between derivation and priority of invention?

Answer:

Derivation and priority of invention both focus on inventorship.  Derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first.

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 2137 of the MPEP.  The following is a brief summary of section 2137.

2137 Pre-AIA 35 U.S.C. 102(f)

This section discusses pre-AIA 35 U.S.C. 102(f) which states that a person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. A rejection under 35 U.S.C. 102(f) is proper where it can be shown that an applicant derived an invention from another. Derivation requires complete conception by another and communication to the alleged deriver. The party alleging derivation does not have to prove an actual reduction to practice, derivation of public knowledge, or derivation in this country. In addition, there is a discussion that pre-AIA 35 U.S.C. 102(f) may apply where pre-AIA 35 U.S.C. 102(a) and pre-AIA 35 U.S.C. 102(e) are not available statutory grounds for rejection.