37 CFR 1.75 - Claim(s)
| Cite as | 37 CFR 1.75 |
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520 practice notes
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Patent cases: Patent business goals; implementation,
...for submission of the basic filing fee and English translation (37 CFR 1.52, 1.53); (4) Limiting the number of claims in an application (37 CFR 1.75); (5) Harmonizing standards for patent drawings (37 CFR (6) Printing patents in color (37 CFR 1.84); (7) Reducing time for filing corrected or......
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Part II
...will be required to help focus examination by providing additional information to the Office. Applicability Dates: The changes to 37 CFR 1.75, 1.142(c), and 1.265 are applicable to any nonprovisional application filed under 35 U.S.C. 111(a) on or after November 1, 2007, and to any nonprovis......
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Patents: Supplemental guidelines,
...art would recognize what structure, material, or acts perform the claimed function, the examiner may still require applicant, pursuant to 37 CFR 1.75 (d)(1), to clarify the record by amending the written description such that it expressly recites what structure, material, or acts perform th......
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Separate Parts In This Issue
Part II
Commerce Department, Patent and Trademark Office,
...will be required to help focus examination by providing additional information to the Office. Applicability Dates: The changes to 37 CFR 1.75, 1.142(c), and 1.265 are applicable to any nonprovisional application filed under 35 U.S.C. 111(a) on or after November 1, 2007, and to any nonprovis......
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492 cases
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Tafas v. Doll, No. 2008-1352.
...independent claims or twenty-five total claims to provide the examiner with information in an examination support document ("ESD"). 37 C.F.R. § 1.75(b)(1). The requirements for ESDs are set forth in Final Rule 265. To comply with Final Rule 265, an applicant must conduct a preexamination pr......
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Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
...claims 5 and 6, which depend from claim 9 and which incorporate all of the limitations of that claim, see 35 U.S.C. § 112, ¶ 4 (1994); 37 C.F.R. § 1.75(c) (1999). 8. SMC did not argue prosecution history estoppel with respect to the Carroll patent before the district court. But upon a GVR f......
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Phillips v. Awh Corp., No. 03-1269.
...in the description Page 1317 so that the meaning of the terms in the claims may be ascertainable by reference to the description." 37 C.F.R. § 1.75(d)(1). It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for gui......
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Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., No. 77-1753
...or set forth the meaning" of that term. (4) Claims 1-7 are invalid for being "in contravention of the provisions of Rule 75(d)(1)," 37 C.F.R. § 1.75(d)(1), 9 because all claims Page 892 contain terms ("at a location not coincident with the location of the key recess," "coincident," and "rec......
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10 firm's commentaries
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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 9, Issue 1 - Winter 2011
...62. Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (“[D]ata-gathering steps cannot make an otherwise nonstatutory claim statutory.”).See 37 C.F.R. § 1.75(e).See U.S. Patent and Tradem ark Office, U.S. Dept. of Comme rce, Manual of Patent Examining Procedure § 2129(III) (8th ed. 2001, rev. Jul. 2......
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Impact Looms Large in Federal Circuit Decision: USPTO and Patentees Still Locked in Showdown Following Tafas v. Doll
...2009). [2] 72 Fed. Reg. 46,716 (Aug. 21, 2007). [3] 37 C.F.R. § 1.78(d)(1). [4] Id. [5] Id. § 1.114(f). [6] 72 Fed. Reg. 46,721. [7] 37 C.F.R. § 1.75(b)(1). [8] Section 2(b)(2) of the Patent Act gives the USPTO authority to “establish regulation, not inconsistent with law, which . . . (A) s......
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USPTO Rescinds Controversial New Patent Rules
...Id. at § 1.114(f). [6] 72 Fed. Reg. 46,724. [7] 37 C.F.R. § 1.75(b)(1). [8] Tafas v. Dudas, 511 F. Supp. 2d 652 (E.D. Va. 2007). [9] Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2007), aff’d in part and vacated in part sub nom Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009). Document hosted at...
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Arctic Cat Inc. v. GEP Power Products, Inc.
...comprises” followed by a listing of elements that the applicant considers as the new or improved portion.” Id. at [16]; see also 37 C.F.R. 1.75(e)(providing a template for improvement claims); Ex parte Jepson, 243 Off. Gaz. Pat. Office 525 (Ass’t Comm’r Pat. 1917); Rowe v Dror, 112 F.3d 473......
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8 books & journal articles
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Printed Publications and Persons of Ordinary Skill: Did the PTAB in GoPro v. Contour IP Holding Apply an Overly Restrictive Standard?
...than “interpretative” rules. Agencies use them to express agency preferences (for example, the USPTO’s preference for Jepson claims in 37 C.F.R. § 1.75(e)), but with no binding effect. Agencies likewise use “policy statements” to offer a unilateral quid pro quo or set a floor for agency pro......
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The PTAB is Not an Article III Court: A Primer on Federal Agency Rule Making
...permit filing of a continuation application on the day that the parent issues. The elaboration of the CREATE Act in MPEP § 706.02(l) 37 C.F.R. § 1.75(e), stating that independent claims “should” be in Jepson format. PTO policy to accept an attorney’s statement to establish common ownership ......
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A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact
...to a validity challenge, the BRI standard made it easier to invalidate patent claims in PTAB proceedings than in district court 151. 37 C.F.R. § 1.75 (2018). 152. 35 U.S.C. § 6(a) (2012). 153. Dreyfuss, supra note 9, at 260. 154. 37 C.F.R. § 42.100(b). 155. Phillips v. AWH Corp., 415 F.3d 1......
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ASSIGNED ALL MY RIGHTS AWAY: The Overuse of Assignment Provisions in Contracts for Patent Rights
...reviewed the issue of conception in a meaningful way). 281. 35 U.S.C. § 112 (2012). 282. See supra note 25 and accompanying text. 283. 37 C.F.R. § 1.75 (2017). 284. For more discussion on the potential longevity of the doctrine of conception, see MERGES & DUFFY, supra note 23, at 470. 285. ......
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