The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a... more »
As a suggestion, in relation to Minton v. Nat’l Ass’n of Securities Dealers, Inc, this section could be expanded, if deemed applicable, to include other words with a similar meaning to 'wherein' and 'whereby' which may also be interpreted as merely indicating the intended outcome of a positively-recited method step; e.g., 'thereby,' thereto,' 'therein.' It would also be very helpful, especially for new examiners, to... more »
The MPEP here states: When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation. See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a chimeric gene capable of being expressed in any cyanobacterium and thus defining the claimed gene by its use). Quite respectfully, is it 'defining the claimed gene by... more »
Similar to Justin's idea* - 2145 would also be much easier to navigate if split. I suggest moving the text under Roman numeral XI just before the current Roman numeral I to form new 2145. I suggest changing Roman numerals I-X to 2145.01-2145.10 respectively. Apologies if this is a duplicate - I can't find it mentioned through the Ideascale search or a targeted Google search. * https://uspto-mpep.ideascale.com/a/dtd/%C2%A7-2181-should-be-broken-up-into-subsections/540832-9426... more »
Fact pattern: A corporation is applying for a patent. A first inventor has signed the Assignment papers assigning that inventor's rights to the corporation. A second inventor is on vacation and cannot sign the Assignment before filing, but is under an obligation to assign to the corporation. MPEP 605.01, and the language in the ADS (PTO/AIA/14 (11-15)), are unclear about whether to list one or two Applicants in this... more »
I think 1893 (Nov. 2015) and its subsections could improve clarity on the national-stage status of amendments other than those made during Chapter II. Currently: - 1893.01(d) mentions that a translation in the national stage should incorporate any Rule 26 corrections or Rule 91 rectifications. - 1893.03(e), I. references the WIPO pamphlet of the application, but does not specify the effect of any republications.... more »
Thanks very much for the 01-2018 publication! I am looking forward to enjoying the changes as I work with it. Would you be willing to provide a PDX index file to the downloadable PDF version, or point me to where it is? I can't find it on the MPEP page or in e9r-08-2017.zip. The 11-2015 publication included the "E9R-07.2015.pdx" index file, and I have made good use of that over the last two years. (The 11-2015 publication... more »
Opening a new chapter! Not a situation I have personally encountered, but I just ran across this in 1122, II (p. 1100-11) (Jan. 2018): > A nonpublication request must be filed upon the filing of the > application. This is a statutory requirement and cannot be waived. So far, so good. But then: > The nonpublication request must also be included with the application > papers. The nonpublication request cannot... more »
MPEP 1306 (Issue Fee) opens with "The issue fee ... [is] due 3 months from the date of the Notice of Allowance." However, as far as I know, the weekend rule of 35 USC 21(b) still extends the time period if it would otherwise end on a weekend. Could 1306 be amended to reference this statute, for completeness? 35 USC 151 Issue of Patent.--- (a) ... The notice shall specify a sum ... which shall be paid within 3 months... more »
MPEP paragraphs often contain explanatory links to other short sections, laws, rules, etc. They would be easier to comprehend if the links were displayed as popups so the reader wouldn't have to jump back and forth in the manual. I've never seen popup footnotes or links in pdf myself, but I've seen references to such in a brief search, so I guess it's possible: https://accessible-digital-documents.com/blog/accessible-pdf-footnotes-endnotes/... more »
602.08(a), II (Jan. 2018), p. 600-97, left column, first full paragraph:
Line 5 is missing an "is" at the end of the line. The text should be amended: "If the inventor lives at a location which >>is<< different from the inventor’s mailing address...".
1. App. L (Jan. 2018) at L-29, left column, in 35 USC 119(a): comma placement:
, pursuant to which..."
pursuant to which..."
2. Id. at L-30, right column, 35 USC 120: spacing:
"...or as provided by section 363 or 385which"
"...or as provided by section 363 or 385 which"
(with space after "385")
Jan. 2018, using Acrobat v11.0.23. In the index, on p. 35, left column, lines 4 and 6, the links to section 503 do not take me there when I click them. I checked them by going to Tools | Interactive Objects | Select Object, right-clicking each one in turn, and choosing Properties | Actions. The Action shows as "Go to a page in another document," which is correct. However, the File shows as "C:\(the path to the PDFs)\.pdf"... more »
MPEP 2106.04 (Jan. 2018) (at 2100-21, right column) quotes the original 2014 Guidance (79 FR 74618, 74622) that “A claim is directed to a judicial exception when ... an abstract idea is recited (i.e., set forth or described) in the claim.” However, the Federal Circuit’s Enfish decision specifically found that the “‘directed to’ inquiry ... cannot simply ask whether the claims *involve* a patent-ineligible concept.”... more »
602.01(a) and 602.01(b) (Jan. 2018) are nested under 602.01 Inventorship. However, 01(a) and 01(b) deal with the oath/declaration generally, not just with inventorship issues. I suggest promoting them one level, or moving them out from under 602.01. Perhaps 602.01(a) could become 602.10 and 602.01(b) become 602.11. Alternatively, perhaps a new 601.10 "General requirements and procedures" could be added, with 602.01(a)... more »