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 MoreWhat is considered “material information” in patent disclosure?
While the MPEP 2002.01 section doesn’t provide a specific definition of “material information,” it does mention that not all information needs to be disclosed to the USPTO. The MPEP states: “Information that is not material need not be passed along to the Office.” Generally, material information is any information that a reasonable examiner would consider…
Read MoreWhat is considered “information material to patentability”?
Information material to patentability refers to any information that is relevant to the patentability of an invention. This includes prior art, conflicting applications, and any other information that could affect the novelty, non-obviousness, or utility of the claimed invention. According to 37 CFR 1.56, information is material to patentability when: It establishes, by itself or…
Read MoreHow does the USPTO view the duty of disclosure?
The United States Patent and Trademark Office (USPTO) takes a very serious view of the duty of disclosure. According to the MPEP Section 2001.05: “The USPTO holds those individuals subject to this duty to the highest standards.” This statement underscores the importance the USPTO places on candor and good faith in dealing with the Office.…
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 MoreHow does the USPTO handle duty of disclosure and inequitable conduct issues?
The United States Patent and Trademark Office (USPTO) generally does not handle duty of disclosure or inequitable conduct issues during the examination process. According to MPEP 2010, “It is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where…
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 types of foreign information should be disclosed to the USPTO?
According to MPEP 2001.06(a), the types of information from foreign applications that should be disclosed to the USPTO include: Material prior art cited in related foreign applications Other information brought to the attention of the applicant in any related foreign application The MPEP specifically states: “The inference that such prior art or other information is…
Read MoreWhat types of copending applications require disclosure under MPEP 2001.06(b)?
What types of copending applications require disclosure under MPEP 2001.06(b)? MPEP 2001.06(b) requires disclosure of information from various types of copending United States patent applications. These include: Applications with a common inventor Applications owned by the same assignee Applications with overlapping subject matter Continuation applications Continuation-in-part applications Divisional applications Related applications in the same patent…
Read MoreWhat is the significance of the two-month time period in patent disclosures?
What is the significance of the two-month time period in patent disclosures? The two-month time period is significant in patent disclosures for the following reasons: Timely disclosure: It encourages prompt submission of information to the USPTO. Avoiding late fees: Submitting within two months can help avoid additional fees for late information disclosure statements. Demonstrating diligence:…
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