How does the USPTO handle protests alleging fraud or violation of duty of disclosure?
The USPTO has specific procedures for handling protests that allege fraud or violation of the duty of disclosure. According to the MPEP: “Information indicating ‘fraud’ or ‘violation of the duty of disclosure’ under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291. Protests raising fraud or other inequitable conduct issues…
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 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 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…
Read MoreHow is the material to patentability standard applied in reexamination under 35 U.S.C. 257?
In reexamination ordered under 35 U.S.C. 257, the material to patentability standard is defined by 37 CFR 1.56, which is the same standard used in patent application examination. This differs from standard ex parte reexamination under 35 U.S.C. 302, which uses the standard in 37 CFR 1.555(b). As stated in MPEP 2818.01: “The material to…
Read MoreWhat should inventors know about the USPTO’s approach to duty of disclosure issues?
Inventors should be aware of the following key points regarding the USPTO’s approach to duty of disclosure issues: The USPTO does not investigate or reject applications based on duty of disclosure violations during examination. Examiners will not comment on duty of disclosure issues brought to their attention, except to note that such issues are not…
Read MoreWhat is the difference between the duty to disclose under 37 CFR 1.56 and the requirements for information under 37 CFR 1.105?
The main differences are: Under 37 CFR 1.56, individuals associated with a patent application have a duty to disclose information material to patentability on their own initiative. Under 37 CFR 1.105, examiners can require information reasonably necessary for examination from parties identified in 37 CFR 1.56. The materiality threshold for 37 CFR 1.56 is higher…
Read MoreWhat is the duty of disclosure regarding copending U.S. patent applications?
What is the duty of disclosure regarding copending U.S. patent applications? The duty of disclosure regarding copending U.S. patent applications is outlined in MPEP 2001.06(b). It states: “The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a…
Read MoreWhen did the current version of 37 CFR 1.56 become applicable?
The applicability of the current version of 37 CFR 1.56, particularly paragraph (c)(3), depends on the filing date of the patent application. According to the MPEP: “[Editor Note: Para. (c)(3) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.]” This means that for patent…
Read MoreWho can be required to submit information under 37 CFR 1.105?
According to the MPEP, information can be required from parties identified in 37 CFR 1.56. Specifically, the MPEP states: “Under 37 CFR 1.105, an examiner or other Office employee is authorized to require, from parties identified in 37 CFR 1.56, information reasonably necessary to examine or treat a matter in an application.” The parties identified…
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