Patent Law FAQ

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent prosecution, visit: patent prosecution.

For more information on USPTO procedures, visit: USPTO procedures.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent prosecution, visit: patent prosecution.

For more information on USPTO procedures, visit: USPTO procedures.

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

For more information on assignee information, visit: assignee information.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on Patent correction, visit: Patent correction.

For more information on USPTO procedures, visit: USPTO procedures.

An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:

• Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
• 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.

As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.

For more information on USPTO procedures, visit: USPTO procedures.

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

For more information on assignee information, visit: assignee information.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on Patent correction, visit: Patent correction.

For more information on USPTO procedures, visit: USPTO procedures.

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

For more information on assignee information, visit: assignee information.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on Patent correction, visit: Patent correction.

For more information on USPTO procedures, visit: USPTO procedures.

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent prosecution, visit: patent prosecution.

For more information on USPTO procedures, visit: USPTO procedures.

An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:

• Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
• 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.

As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.

For more information on USPTO procedures, visit: USPTO procedures.

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

For more information on assignee information, visit: assignee information.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on Patent correction, visit: Patent correction.

For more information on USPTO procedures, visit: USPTO procedures.

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent prosecution, visit: patent prosecution.

For more information on USPTO procedures, visit: USPTO procedures.

An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:

• Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
• 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.

As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.

For more information on USPTO procedures, visit: USPTO procedures.