Question 1

Where can I find additional information on submitting reproductions through EFS-Web for international design applications?

Accepted Answer

The MPEP 2909.02(a) provides several resources for additional information on submitting reproductions through EFS-Web for international design applications:

General EFS-Web information:
"See MPEP § 502.05 for additional information on using EFS-Web."
You can find more details about using EFS-Web in general in MPEP 502.05.
Specific guide for international design applications:
"For further information concerning submitting reproductions through EFS-Web, filers may consult the EFS-Web Quick Start Guide: International Design Application (Hague) for filing through the USPTO as an office of indirect filing available at www.uspto.gov/sites/default/files/documents/Hague-QSG.pdf."
This guide provides step-by-step instructions specifically for international design applications.
Technical requirements:
"Technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are also set forth on the website of the International Bureau at www.wipo.int/hague/en/hague_file_renew.html."
This WIPO website offers detailed technical specifications for reproduction files.

These resources can provide comprehensive guidance on the process and requirements for submitting reproductions through EFS-Web for international design applications.

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Question 2

Where can I find the full text of WIPO Standard ST.26?

Accepted Answer

The full text of WIPO Standard ST.26 can be accessed through several official sources. MPEP 2412 provides direct links to the standard:

1. WIPO's official website: www.wipo.int/export/sites/www/standards/en/pdf/03-26-01.pdf

2. USPTO's Sequence Listing Resource Center: www.uspto.gov/patents/apply/sequence-listing-resource-center/learning-and-resources#standard26

Additionally, MPEP 2412 notes that "WIPO Standard ST.26 is incorporated by reference into the USPTO regulations by including new regulatory text at 37 CFR 1.839." This means that the standard is officially part of USPTO regulations and can be referenced as such.

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Question 3

Where can I find the recommended presentation of foreign application numbers?

Accepted Answer

The recommended presentation of foreign application numbers can be found in the WIPO Handbook on Industrial Property Information and Documentation. The MPEP provides specific guidance:

A complete updated list of the recommended presentation of a foreign application number based on the numbering system used by the foreign intellectual property office is maintained by the WIPO and can be found in the online WIPO Handbook on Industrial Property Information and Documentation

To access this information:

Visit the WIPO website (www.wipo.int/standards/en/)
Navigate to Part 7: Examples and Industrial Property Offices Practices
Refer to Part 7.2.1: Presentation of Application Numbers

Additionally, the MPEP mentions a survey of current practices: www.wipo.int/export/sites/www/standards/en/pdf_/07-02-06.pdf

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Question 4

Where can I find the most up-to-date list of PCT Contracting States?

Accepted Answer

The most current list of PCT Contracting States can be found on the World Intellectual Property Organization (WIPO) website. The MPEP Section 1817 provides direct links to these resources:

An updated list of PCT Contracting States is available from WIPO's website ( www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf or www.wipo.int/pct/en/pct_contracting_states.html ).

You can access the list in two formats:

PDF format: This provides a detailed list that may include additional information about each contracting state.
Web page format: This offers an easily accessible and potentially more frequently updated list of PCT member states.

It's important to check these official sources regularly, as the list of PCT Contracting States can change when new countries join the treaty.

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Question 5

How can I access the Cooperative Patent Classification (CPC) system?

Accepted Answer

The Cooperative Patent Classification (CPC) system can be accessed through various online tools provided by the USPTO and EPO. According to MPEP 902:

"The CPC system and CPC definitions are available online from the USPTO's website at https://www.uspto.gov/patents/search and from the EPO's website at http://worldwide.espacenet.com/classification."

To access and utilize the CPC system:

Visit the USPTO's CPC webpage for detailed information and search tools
Use the CPC scheme browser to navigate through classification symbols
Explore CPC definitions for comprehensive explanations of each classification
Utilize the CPC-to-IPC or IPC-to-CPC concordance for cross-referencing

These resources are freely available and can be valuable tools for patent searchers, examiners, and applicants in understanding and applying the CPC system.

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Question 6

What is the test for obviousness under pre-AIA 35 U.S.C. 103(a)?

Accepted Answer

The test for obviousness under pre-AIA 35 U.S.C. 103(a) is outlined in form paragraph 7.23.fti. This paragraph summarizes the factual inquiries established by the Supreme Court in Graham v. John Deere Co.:

The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.

The MPEP notes: This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the factors for determining obviousness.

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Question 7

Can an interim copy of the foreign priority application be filed to meet the certified copy requirement?

Accepted Answer

Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:

A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.

However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).

Question 8

What are the written description and enablement requirements related to test results in patent applications?

russ.krajec@blueironip.com · Accepted Answer

The written description and enablement requirements are crucial when considering test results in patent applications. The MPEP 707.07(l) references these requirements:

See MPEP §§ 2161 - 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112.

These requirements, found in 35 U.S.C. 112(a), mandate that the patent application must:

Written Description: Clearly describe the invention in sufficient detail that one skilled in the art can recognize that the inventor had possession of the claimed invention.
Enablement: Provide enough information for a person skilled in the art to make and use the invention without undue experimentation.

Test results play a crucial role in meeting these requirements, as they can demonstrate that the invention works as claimed and provide guidance on how to make and use it.

To learn more:

35 U.S.C. 112

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Where can I find additional information on submitting reproductions through EFS-Web for international design applications?

Contingency Fee Litigation Is Only a Last Resort

Where can I find the full text of WIPO Standard ST.26?

Where can I find the recommended presentation of foreign application numbers?

Where can I find the most up-to-date list of PCT Contracting States?

Investing In Patents Website Launched

How can I access the Cooperative Patent Classification (CPC) system?

What is the test for obviousness under pre-AIA 35 U.S.C. 103(a)?

Can an interim copy of the foreign priority application be filed to meet the certified copy requirement?

What are the written description and enablement requirements related to test results in patent applications?