What types of information are considered material in reexamination proceedings?
What types of information are considered material in reexamination proceedings?
In reexamination proceedings, certain types of information are considered material to patentability. According to MPEP 2280, material information includes:
- Prior art patents or printed publications that are material to patentability under 37 CFR 1.56(b)
- Information on enablement, written description, and utility that is material to patentability under 37 CFR 1.56(b)
- Information on best mode, if applicable, that is material to patentability under 37 CFR 1.56(b)
The MPEP states: “However, information material to patentability in a reexamination proceeding may be limited to:
(A) the prior art patents or printed publications which are material to patentability under 37 CFR 1.56(b);
(B) the enablement under 35 U.S.C. 112 with respect to the claimed subject matter;
(C) the written description under 35 U.S.C. 112 with respect to the claimed subject matter; and
(D) the utility under 35 U.S.C. 101 and/or 35 U.S.C. 112 with respect to the claimed subject matter.”
It’s crucial for patent owners and practitioners to understand these categories of material information to ensure proper disclosure during reexamination proceedings.
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