What should be considered when dealing with foreign applicants or applications?
When dealing with foreign applicants or applications: Ensure foreign clients understand the requirements of the duty of disclosure Review information disclosure statements from foreign applicants carefully Be cautious with translations and partial disclosures of foreign references Consider prior art cited in corresponding foreign applications MPEP 2004 states: “It is also important that an attorney or…
Read MoreWhat is the duty of disclosure regarding prior art cited in related foreign applications?
Applicants and other individuals involved in patent prosecution have a duty to bring to the attention of the USPTO any material prior art or other information cited or brought to their attention in any related foreign application. This duty is outlined in MPEP 2001.06(a) and 37 CFR 1.56. The MPEP states: “The inference that such…
Read MoreWhat is the duty of disclosure regarding copending U.S. patent applications?
What is the duty of disclosure regarding copending U.S. patent applications? The duty of disclosure regarding copending U.S. patent applications is outlined in MPEP 2001.06(b). It states: “The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a…
Read MoreWhat is the duty of disclosure regarding copending United States patent applications?
Individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner information about other copending United States applications that are “material to patentability” of the application in question. This includes: Providing identification of pending or abandoned applications filed by at least one of the inventors Applications assigned to the…
Read MoreDoes the duty of disclosure apply to continuation-in-part applications?
Yes, the duty of disclosure applies to continuation-in-part (CIP) applications. The MPEP specifically addresses this situation: “In a continuation-in-part application, individuals covered by 37 CFR 1.56 have a duty to disclose to the Office all information known to be material to patentability which became available between the filing date of the prior application and the…
Read MoreWhat does ‘duty of candor and good faith’ mean in patent law?
The ‘duty of candor and good faith’ in patent law refers to the obligation of individuals involved in the patent application process to be honest and forthcoming in their dealings with the United States Patent and Trademark Office (USPTO). MPEP 2001.03 cites 37 CFR 1.56(a), which states that the “duty of candor and good faith”…
Read MoreWhat is the duty of candor when correcting errors in patent applications?
While the “deceptive intent” language has been removed from the law for applications filed on or after September 16, 2012, applicants still have a duty to exercise candor and good faith in all dealings with the USPTO. The MPEP 2011 states: “Even though the ‘deceptive intent’ language has been removed from the law, applicants still…
Read MoreWhat is the duty of disclosure regarding prior art cited in copending applications?
What is the duty of disclosure regarding prior art cited in copending applications? The duty of disclosure extends to prior art cited in copending applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This implies that applicants have a duty to disclose…
Read MoreHow does the duty of disclosure apply to foreign patent attorneys?
The duty of disclosure applies equally to foreign patent attorneys representing applicants for U.S. patents. This is clearly stated in MPEP 2001.06(a), which cites the Gemveto Jewelry Co. v. Lambert Bros., Inc. case: “Foreign patent attorneys representing applicants for U.S. patents through local correspondent firms surely must be held to the same standards of conduct…
Read MoreHow does the duty of disclosure apply to information in foreign counterpart applications?
How does the duty of disclosure apply to information in foreign counterpart applications? The duty of disclosure extends to information in foreign counterpart applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This principle applies to foreign counterpart applications as well. Applicants…
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