Is a prior art search required before filing a patent application?
No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states: ‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’ This is supported by several court cases cited in the MPEP, including: Nordberg, Inc.…
Read MoreCan a power of attorney be signed by less than all applicants or owners of a patent application?
Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions: For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause. For appointment:…
Read MoreWhat happens to a power of attorney in a continuing patent application?
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if: A copy of the power of attorney from the prior application is filed in the continuing application The power of attorney was not granted…
Read MoreCan I represent myself in a patent application?
Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations: Juristic entities (e.g., companies) must be represented by a patent practitioner…
Read MoreWhat certifications do pro se applicants make when filing patent applications?
Pro se applicants make important certifications when filing patent applications. According to MPEP 401: “In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR…
Read MoreWhat is the confidentiality requirement for unpublished patent applications?
Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a). MPEP 405 addresses this in the context of interviews: However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the interview request form will…
Read MoreCan a third party conduct an interview using 37 CFR 1.34?
No, a third party or its representative cannot use the provisions of 37 CFR 1.34 to conduct an interview or take other actions not specifically permitted by the rules of practice. MPEP 405 states: The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or…
Read MoreWho can sign papers in a patent application when the attorney is suspended?
When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date: For applications filed before September 16, 2012: All named applicants Assignee of record of an undivided part interest, along with named applicants retaining an interest Assignee of the entire interest A registered patent attorney or agent…
Read MoreWhat happens to a power of attorney given to a suspended or disbarred patent practitioner?
A power of attorney given to a suspended or disbarred patent practitioner becomes ineffective. The MPEP states: ‘Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent applicants or patentees in patent…
Read MoreAre there restrictions on communicating with unregistered, suspended, or excluded attorneys regarding patent applications?
Yes, there are strict restrictions on communicating with unregistered, suspended, or excluded attorneys regarding patent applications. The MPEP clearly states: Office employees are forbidden from holding either oral or written communication with an unregistered, suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the…
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