Patent Law FAQ

There are several ways to obtain a foreign filing license:

1. File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
2. File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
3. 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.

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:

• ex parte reexamination
• petition timeframe
• reexamination denial
• patent procedure

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:

• ex parte reexamination
• petition timeframe
• reexamination denial
• patent procedure

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:

• IDS
• NPL
• Non-Patent Literature
• citation format
• patent procedure

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:

• ex parte reexamination
• petition timeframe
• reexamination denial
• patent procedure

There are several ways to obtain a foreign filing license:

1. File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
2. File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
3. 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.

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:

• IDS
• NPL
• Non-Patent Literature
• citation format
• patent procedure

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:

• ex parte reexamination
• petition timeframe
• reexamination denial
• patent procedure

There are several ways to obtain a foreign filing license:

1. File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
2. File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
3. 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.