Q: When might the USPTO require an earlier submission of the certified copy?

According to 37 CFR 1.55(g)(2) , the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances: When the application is involved in an interference or derivation proceeding; When necessary to overcome the date of a reference relied upon by the examiner; or When deemed necessary by the examiner.

Question 1

What is a "Sequence Listing XML" and why must it be valid according to the DTD?

Accepted Answer

A "Sequence Listing XML" is a standardized format for presenting nucleotide and/or amino acid sequences in patent applications. It must be valid according to the Document Type Definition (DTD) as specified in MPEP § 2413.01(b) and 37 CFR 1.833(b)(1).

The MPEP states: "The 'Sequence Listing XML' presented in accordance with paragraph (a) of this section must further: (1) Be valid according to the Document Type Definition (DTD) as presented in WIPO Standard ST.26, Annex II."

This requirement ensures that the sequence listing conforms to a standardized structure, facilitating automated processing and examination of patent applications containing biological sequence information.

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Question 2

How do court decisions impact the determination of a substantial new question of patentability?

Accepted Answer

Court decisions can impact the determination of a substantial new question of patentability (SNQ) or reasonable likelihood that the requester will prevail (RLP), but their influence varies depending on the nature of the decision. The MPEP outlines several scenarios:

Final holding of validity: A final court decision that a patent claim is not invalid doesn't necessarily preclude an SNQ/RLP. The USPTO makes its determination independently due to different standards of proof and claim construction.
Non-final holding of invalidity: A non-final holding of claim invalidity or unenforceability is not controlling on the SNQ/RLP determination.
Final holding of invalidity: A final holding of claim invalidity or unenforceability, after all appeals, binds the USPTO. In such cases, an SNQ/RLP would not be present for claims finally held invalid or unenforceable.

The MPEP cites Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988) as a key reference for these policies.

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court decisions
substantial new question of patentability
SNQ
reasonable likelihood that the requester will prevail
RLP
patent reexamination

Question 3

What are the consequences of not maintaining a valid biological deposit?

Accepted Answer

Failing to maintain a valid biological deposit can have serious consequences for a patent application or issued patent. According to MPEP 2407.03:

"37 CFR 1.805(d) sets forth the Office position that the failure to make a replacement deposit in a case pending before the Office, for example a reissue or reexamination proceeding, where a deposit is considered to be necessary to satisfy the requirements of 35 U.S.C. 112, shall cause the application or patent involved to be treated in any Office proceeding as if no deposit were made."

The consequences of not maintaining a valid deposit may include:

The application being rejected or the patent being invalidated for failure to comply with 35 U.S.C. 112 requirements.
Inability to enforce the patent against potential infringers.
Challenges to the patent's validity in litigation or post-grant proceedings.
Potential loss of patent rights or inability to obtain patent protection.

It's crucial for patent applicants and owners to ensure that biological deposits remain valid and accessible throughout the life of the patent to avoid these serious consequences.

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Question 4

How does the concept of field of use relate to the step 2B analysis in the Alice/Mayo test?

Accepted Answer

The concept of field of use is particularly relevant to the Step 2B analysis in the Alice/Mayo test for patent eligibility. According to MPEP 2106.05(h):

"Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use."

In Step 2B, examiners evaluate whether the claim recites additional elements that amount to significantly more than the judicial exception. Limitations that merely indicate a field of use or technological environment in which to apply the judicial exception do not amount to significantly more.

For example, in Parker v. Flook, the Supreme Court found that limiting the use of a mathematical formula to the petrochemical and oil-refining fields was not sufficient to make the claim eligible. The Court reasoned that this limitation was merely an incidental addition to the claim that did not alter how the process steps were performed.

Therefore, when analyzing claims in Step 2B, examiners must carefully consider whether any additional elements genuinely add significantly more to the abstract idea or merely limit its application to a particular field or environment.

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Question 5

What information do I need to provide when ordering a certified copy of a reexamination file?

Accepted Answer

When ordering a certified copy of a reexamination file, it's crucial to provide the control number of the reexamination proceeding. The MPEP explicitly states: Orders for such copies must indicate the control number of the reexamination proceeding.

In addition to the control number, you should also include:

Your contact information
Preferred method of delivery
Payment information (credit card or deposit account details)

Providing accurate and complete information will help ensure your order is processed correctly and efficiently.

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Question 6

How can I satisfy the timeliness requirement for submitting certified copies of foreign applications?

Accepted Answer

The timeliness requirement for submitting certified copies of foreign applications can be satisfied through the Priority Document Exchange program. According to 37 CFR 1.55(i), the requirement will be considered satisfied if:

The foreign application was filed in a participating foreign intellectual property office
The claim for priority is presented in an application data sheet with the required information
The copy of the foreign application is received by the USPTO from the participating foreign office within the specified time period

The MPEP states, Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Therefore, it's crucial to verify that the USPTO has received the priority document.

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Question 7

What happens if the certified copy is filed after the issue fee is paid?

Accepted Answer

If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.

Question 8

When might the USPTO require an earlier submission of the certified copy?

Accepted Answer

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

When the application is involved in an interference or derivation proceeding;
When necessary to overcome the date of a reference relied upon by the examiner; or
When deemed necessary by the examiner.

Question 9

What are the requirements for using the Priority Document Exchange program?

Accepted Answer

To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):

The foreign application must be filed in a participating foreign intellectual property office.
The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.

The MPEP states:

37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (§1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).

Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.

For more information on certified copy, visit: certified copy.

For more information on foreign application, visit: foreign application.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on requirements, visit: requirements.

Question 10

How does the right of priority work for international applications under the PCT?

Accepted Answer

The right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.

According to MPEP 213.06: "In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT."

Key points about priority in PCT applications include:

The priority claim must be made in the PCT Request form or through a later correction.
The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
The International Bureau will make the priority document available to designated Offices.
For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.

The MPEP further notes: "If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55."

For more information on certified copy, visit: certified copy.

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What is a “Sequence Listing XML” and why must it be valid according to the DTD?

How do court decisions impact the determination of a substantial new question of patentability?

What are the consequences of not maintaining a valid biological deposit?

How does the concept of field of use relate to the step 2B analysis in the Alice/Mayo test?

What information do I need to provide when ordering a certified copy of a reexamination file?

How can I satisfy the timeliness requirement for submitting certified copies of foreign applications?

What happens if the certified copy is filed after the issue fee is paid?

When might the USPTO require an earlier submission of the certified copy?

What are the requirements for using the Priority Document Exchange program?

How does the right of priority work for international applications under the PCT?