37 CFR § 42.401 — Definitions. (MPEP Coverage Index) – BlueIron IP
37 CFR § 42.401 Definitions.
This page consolidates MPEP guidance interpreting 37 CFR § 42.401, including 14 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The 37 CFR 42.401 Definitions section provides critical guidance for patent review proceedings, specifically addressing the nuanced conditions for affidavits, declarations, and derivation proceedings when multiple patent applications involve potentially overlapping inventive claims.
What this section covers
- Interpretive parameters for inter partes review proceedings and related patent terminology.
- Scope and applicability of definitions in patent application publication contexts.
Key obligations
- Precise conditions restricting the use of affidavits or declarations in patent review.
- Identity requirements for evaluating anticipation and prior art in patent applications.
Conditions and exceptions
- Scenarios where standard documentation procedures might be modified or limited.
Practice notes
- Understand restrictions on affidavits when prior art involves U.S. patents or publications.
- Carefully evaluate publication and anticipation requirements before submitting documentation.
Official MPEP § 42.401 — Definitions.
Source: USPTOLast Modified: 10/30/2024 08:50:22
42.401 Definitions.
In addition to the definitions in § 42.2 , the following definitions apply to proceedings under this subpart:
- Agreement or understanding under 35 U.S.C. 135(e) means settlement for the purposes of § 42.74 .
- Applicant includes a reissue applicant.
- Application includes both an application for an original patent and an application for a reissued patent.
- First publication means either a patent or an application publication under 35 U.S.C. 122(b) , including a publication of an international application designating the United States as provided by 35 U.S.C. 374 .
- Petitioner means a patent applicant who petitions for a determination that another party named in an earlier-filed patent application allegedly derived a claimed invention from an inventor named in the petitioner’s application and filed the earlier application without authorization.
- Respondent means a party other than the petitioner.
- Same or substantially the same means patentably indistinct.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]
- Aia Practice
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- Applicability
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- Application Publication
- Derivation Proceedings
- Section 102
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- Prior Art 102A1
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| MPEP Section | Rules |
|---|---|
| MPEP § 2155 | |
| MPEP § 2155.06 | |
| MPEP § 717.01 | |
| MPEP § 717.01(d) |