Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
'MPEP 306-Assignment of Division (1)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
and Continuation-in-Part in Relation to Parent Application' (1)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
MPEP 140-Foreign Filing Licenses (1)
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (1)
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
MPEP 2248 – Petition From Denial Of Request Filed Under 35 U.S.C. 302 (1)
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
MPEP 300 – Ownership and Assignment (1)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
MPEP 500 – Receipt and Handling of Mail and Papers (1)
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
MPEP 505 – Date of Receipt Stamp (1)
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
Patent Law (5)
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
What are the requirements for citing NPL documents in an IDS?
When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):
“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”
The MPEP further clarifies:
- For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “www.uspto.gov”).
- The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.
Additionally:
- For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
- If citing a document that is only available as a scanned copy, include “(scanned copy)” after the document’s title in the citation.
Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.
To learn more:
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Patent Procedure (5)
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
What are the requirements for citing NPL documents in an IDS?
When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):
“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”
The MPEP further clarifies:
- For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “www.uspto.gov”).
- The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.
Additionally:
- For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
- If citing a document that is only available as a scanned copy, include “(scanned copy)” after the document’s title in the citation.
Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.
To learn more:
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.