MPEP 2163 is about the Written Description requirement. MPEP 2163(II)(A)(3)(a) cited Autogiro as support for the following quote: "An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole... Autogiro Co. of Am. v. United States, 384 F.2d 391, 398, 155 USPQ 697,... more »
MPEP 1309.02 says applications with errors preventing issue "are placed on the examiner's 'expedited' tab in eDan and should be taken up for immediate action." We have not used eDan in several years, and I think it was even removed from our computers nearly four years ago. So "eDan" should be replaced either with "DAV" or "PE2E-DAV."
2141.01(a)(I) need to be completely re-written! This section correctly cites In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d1209, 1212 (Fed. Cir. 2004). However, everything following that citation that references KSR is nonsense! The 'problem' described in KSR was in relation for reasoning associated with combining the teachings of references. It had absolutely NOTHING to do with deciding whether a reference is analogous... more »
MPEP 2144.04(VI)(C) cites Chicago Rawhide, 223 USPQ 351 (Bd. Pat App. & Inter. 1984) for both "[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness" and "[t]he prior art must provide a motivation or reason for the worker in the art, without the benefit of the appellant's specification,... more »
when an inventor submits a new idea to be patented without help from a patent attorney it should be automatically placed into the correct category. Either Utility Patent, if it is truly a utility patent, or Design patent, if that is truly what it is. This would save a lot of time and money on everyone's part. For instance, I submitted my provisional application for an idea on my own and because i thought that i had to... more »
MPEP § 2111.03 explains how different transitional phrases in a claim affect claim scope with respect to what "unrecited" additional components or steps, if any, are excluded from the scope of the claim. I proposed replacing all instances of the word "unrecited" with the word "non-recited." This word, "unrecited," does not accurately describe the concept. When the "un-" prefix is paired with a verb, it typically causes... more »
Medical products have been given some leeway by the USPTO, in terms of product safety. Their safety is regulated by another government division, the Food and Drug Administration (FDA). Medical product makers do not want to "publicize" inventions prior to patenting. If USPTO demanded FDA approval, that would allow other companies to copy the invention while it was being tested for the FDA. It makes more sense to patent... more »
MPEP § 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard... more »
"Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984)" should say "Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894)". The year is wrong.
MPEP 608.01(w) (Jan. 2018) and 27 CFR 1.71(d) suggest that a copyright-notice paragraph should "preferably [be] the first paragraph ... of the specification." However, this is often not the case. Would the Office please clarify at least the MPEP, and preferably also 1.71(d), to reflect current practice? For example, in recent US 10,219,356 (the first hit in a quick patft search), the "cross-reference to related applications"... more »
MPEP 608.01(n)(III) is labeled "infringement test," but the "infringement test" is actually described in the previous section, MPEP 608.01(n)(II), third paragraph, discussing whether or not claims could be met without infringing the parent claims. In contrast, MPEP 608.01(n)(III) references infringement in its first paragraph, but then only discusses the "further limitation" requirement.
MPEP § 602.01(I) cites pre-AIA 37 C.F.R. 1.41 "Applicant for patent" instead of post-AIA 37 C.F.R. 1.41 "Inventorship."
This observation is similar to one noted before for 602.01(c)(1) for 37 C.F.R. 1.48 [https://uspto-mpep.ideascale.com/a/dtd/Fix-Error-in-602-01-c-1/464461-9426]
MPEP 2163.03(V) states "An original claim may lack written description support when ... (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc)." Here, the use of the singular in "a narrow species" could suggest that this rejection is only allowed... more »
MPEP 818.02(a) says that in making a determination of whether election by original presentation has occurred, the present claimed should be compared to the "original claims." But this section directs the examiner to 821.03, which in turn cites 37 CFR 1.145, both of which say "previously claimed" instead of "original claims." A distinction can arise because application may have more than one set of amendments (i.e.,... more »
MPEP 140, I. (Jan. 2018), at 100-35--36, is titled "Expedited Foreign Filing License." It references 37 CFR 5.12(b), which relates to a "petition for license." Would the Office please clarify what "Expedited" means here? For most petitions, the Applicant can submit a separate petition under 1.182 to request expedited consideration of the substantive petition. However, as far as I know, there is only one type of petition... more »