Can patent attorneys or applicants propose content for reserved MPEP sections like 319?
While patent attorneys or applicants cannot directly propose content for reserved MPEP sections like 319, they can provide feedback or suggestions to the USPTO regarding patent examination procedures or policies. The USPTO occasionally seeks public input on proposed changes to patent examination practices, which could potentially influence the content added to reserved sections in the…
Read MoreIs including government support information on a provisional application cover sheet sufficient?
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states: Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the…
Read MoreWhat are the priority date rules for patents filed by former USPTO employees?
Former USPTO employees face restrictions on priority dates for patents they file after leaving the office. According to 35 U.S.C. 4: ‘In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’ This means that for any patent application filed by a…
Read MoreHow should an assignment document be prepared for recording with the USPTO?
When preparing an assignment document for recording with the USPTO, follow these guidelines based on 37 CFR 3.24 and MPEP 302.01: For electronic submissions: Submit either a copy of the original document or an extract of it Ensure the document is in Tagged Image File Format (TIFF) or another prescribed format When printed, the document…
Read MoreWho can request a title report from the USPTO?
Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states: Title reports may not be ordered by applicants or attorneys. These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.
Read MoreWho can file a patent application under 35 U.S.C. 118?
According to 35 U.S.C. 118, the following parties can file a patent application: A person to whom the inventor has assigned the invention A person to whom the inventor is under an obligation to assign the invention A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor The…
Read MoreWhen should documentary evidence of ownership be recorded for assignee applicants?
For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows: As provided for in part 3 of Chapter 37 CFR No later than the date the issue fee is paid in the application According to 37 CFR 1.46(b)(1): If…
Read MoreWhen do patent examiners need title reports?
Patent examiners typically do not require title reports for routine examination. The MPEP states: Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. When ownership information is necessary, examiners…
Read MoreWhen must ownership be established for an assignee to take action in a patent matter?
Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee: Signs a request for status of an application Gives a power to inspect an application Appoints its own registered attorney or agent to prosecute an application Signs a disclaimer under 37 CFR 1.321 Consents to the filing of a reissue application Consents to…
Read MoreHow do I correct an error in a recorded assignment document?
To correct an error in a recorded assignment document, you need to submit a ‘corrective document’ to the Assignment Division. This document should include: A copy of the original assignment document with corrections made, initialed, and dated by the party conveying the interest. A new Recordation Form Cover Sheet (form PTO-1595) identifying the submission as…
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