What are the disclosure requirements for reissue applications involved in litigation?
For reissue applications where the original patent has been involved in litigation, the MPEP 2001.06(c) outlines specific disclosure requirements: The existence of such litigation must be brought to the examiner’s attention at the time of filing or shortly after. This information can be disclosed in the reissue oath/declaration or in a separate paper, preferably accompanying…
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 purpose of requiring information under 37 CFR 1.105?
The purpose of requiring information under 37 CFR 1.105 is to obtain a complete record for determining patentability. The MPEP explains: “Information required by the examiner pursuant to 37 CFR 1.105 would not necessarily be considered material to patentability in itself, but would be necessary to obtain a complete record from which a determination of…
Read MoreHow should prior art from one application be handled in a subsequent application?
Prior art references from one application must be made of record in another subsequent application if such prior art references are “material to patentability” of the subsequent application. MPEP 2001.06(b) cites the Dayco Products case: “Similarly, the prior art references from one application must be made of record in another subsequent application if such prior…
Read MoreHow should experimental data and examples be presented in a patent application?
When presenting experimental data and examples in a patent application: Ensure accuracy of all statements and evidence Clearly distinguish between actual results and predicted results Use proper tense: past tense for actual experiments, present or future tense for prophetic examples Label examples as prophetic or working examples to avoid ambiguities MPEP 2004 advises: “Care should…
Read MoreWhat is the difference between pre-AIA and current 37 CFR 1.56?
The main difference between the pre-AIA (America Invents Act) and current versions of 37 CFR 1.56 lies in the applicability of paragraph (c)(3). The MPEP notes: “[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]” This means that for patent…
Read MoreWhat are the recommended practices for maintaining records during patent prosecution?
What are the recommended practices for maintaining records during patent prosecution? The MPEP provides several recommendations for maintaining records during patent prosecution: Separate files: Keep separate files for each item of information known to be material to patentability. Document explanations: Record explanations of relevance for each item. Track submissions: Note which items have been submitted…
Read MoreWhat are the responsibilities of patent practitioners regarding information from other government agencies?
Patent practitioners have a responsibility to review and potentially disclose information received from other government agencies that may be material to patentability. The MPEP 2015 advises: “Similarly, each individual with a duty to disclose, or party with a duty of reasonable inquiry, should review documents it receives from other Government agencies to determine whether the…
Read MoreCan patent examiners be expected to remember details of every pending file?
No, patent examiners cannot be expected to remember details of every pending file. This is emphasized in the case of Armour & Co. v. Swift & Co., as quoted in MPEP 2001.06(b): “[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that…
Read MoreCan patent examiners reject applications based on duty of disclosure violations?
No, patent examiners do not reject applications based on duty of disclosure violations. According to MPEP 2010: “Accordingly, the examiner does not investigate and reject original or reissue applications under 37 CFR 1.56.” This means that even if an examiner suspects a violation of the duty of disclosure, they are not authorized to reject the…
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