What action does the Board take when it receives a petition for derivation?
When the Patent Trial and Appeal Board (PTAB) receives an appropriate petition for derivation, it takes a specific action as outlined in MPEP 2311: “Where an appropriate petition for derivation has been received by the Board, the Board will enter a notice into the respondent’s application or patent file, if it has issued.” This notice…
Read MoreHow should examiners handle claims in a petitioner’s application during a derivation proceeding?
According to MPEP 2311, examiners should handle claims in a petitioner’s application during a derivation proceeding as follows: “The claims in petitioner’s application that are patentably indistinct from respondent’s application or patent should be subject to a rejection under 35 U.S.C. 102(a)(2) which should be maintained until jurisdiction is transferred to the Board to conduct…
Read MoreWhat should an examiner do when they find allowable subject matter in a derivation proceeding?
When an examiner finds allowable subject matter in an application involved in a derivation proceeding, they should follow specific guidelines as outlined in MPEP 2311: “When the examiner has determined that either the petitioner’s or the respondent’s application (where applicable) has allowable subject matter with respect to any claim, the examiner should refrain from taking…
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