What is a protest in patent law?
A protest in patent law is a submission by the public against pending patent applications, as permitted by 37 CFR 1.291. The MPEP states that “37 CFR 1.291 permits protests by the public against pending applications.” These protests are not limited to prior art documents but can include any information that, in the protestor’s opinion,…
Read MoreHow does the USPTO handle protests involving fraud or inequitable conduct?
The USPTO has a specific approach to handling protests involving fraud or inequitable conduct. According to the MPEP, “This includes, of course, information indicating the presence of ‘fraud’ or ‘inequitable conduct’ or ‘violation of the duty of disclosure,’ which will be entered in the application file, generally without comment on the inequitable conduct issues raised…
Read MoreWhat types of information can be included in a patent protest?
A patent protest can include a wide range of information. According to the MPEP, “Submissions under 37 CFR 1.291 are not limited to prior art documents such as patents and publications, but are intended to include any information, which in the protestor’s opinion, would make or have made the grant of the patent improper.” This…
Read MoreWhat are the requirements for filing a patent protest?
Filing a patent protest has specific requirements as outlined in the MPEP. The document states that “Protests should be in conformance with 37 CFR 1.291(a) and (b), and include a statement of the alleged facts involved, the point or points to be reviewed, and the action requested.” Additionally, the MPEP advises that “Any briefs or…
Read MoreCan a patent be reissued if fraud was committed in the original application?
No, a patent cannot be reissued if fraud was committed in the original application. The MPEP is clear on this point: It is clear that “fraud” cannot be purged through the reissue process. This statement is supported by case law, as the MPEP cites: Where such a condition [fraudulent or deceptive intention] is shown to…
Read MoreCan a reissue application be used to submit previously withheld information?
Can a reissue application be used to submit previously withheld information? While a reissue application can be used to submit previously withheld information, it cannot cure or remedy the original withholding if it constituted inequitable conduct. The MPEP 2012 states: “In cases where an applicant seeks to use a reissue application to submit previously withheld…
Read MoreCan a reissue application be used to correct inequitable conduct?
Can a reissue application be used to correct inequitable conduct? No, a reissue application cannot be used to correct inequitable conduct. The Manual of Patent Examining Procedure (MPEP) 2012 clearly states: “A reissue application cannot be employed to ‘repair’ the effect of inequitable conduct or other fraud perpetrated on the Office, despite claims to the…
Read MoreWhat is the requirement for ‘lack of deceptive intention’ in reissue applications?
For reissue applications filed before September 16, 2012, there was a specific requirement regarding ‘lack of deceptive intention’. The MPEP states: For reissue applications filed prior to September 16, 2012, both pre-AIA 35 U.S.C. 251 and pre-AIA 37 CFR 1.175 require that the reissue oath or declaration must state that the error arose “without any…
Read MoreHow does inequitable conduct in one patent affect related patents or applications?
Inequitable conduct in one patent can have far-reaching consequences for related patents or applications. The MPEP provides insight into this issue: Clearly, where several patents or applications stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars allowance or enforcement of any of the claims of any of…
Read MoreCan some claims in a patent remain valid if inequitable conduct is found?
No, according to MPEP 2016, if inequitable conduct is found, it affects all claims in the patent. The MPEP cites the case J. P. Stevens & Co. v. Lex Tex Ltd., which states: “Once a court concludes that inequitable conduct occurred, all the claims — not just the particular claims in which the inequitable conduct…
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