What does “authority to take action in the application” mean in the context of 37 CFR 1.130 declarations?
The phrase “authority to take action in the application” is crucial in understanding who can file 37 CFR 1.130 declarations. According to MPEP 2155.05: “Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.” This means that while inventors may sign these declarations, they…
Read MoreCan an applicant prevent the examiner from reopening prosecution after an appeal brief is filed?
An applicant cannot directly prevent an examiner from reopening prosecution after an appeal brief is filed. However, there are certain limitations and potential actions an applicant can take: Limited circumstances: Examiners should only reopen prosecution in specific situations, as outlined in MPEP 1207.04. Petition option: If the applicant believes the reopening is improper, they can…
Read MoreWho has the right to file a demand for international preliminary examination under the PCT?
According to MPEP 1864.02, the right to file a demand for international preliminary examination is governed by PCT Article 31(2) and PCT Rule 54. The key requirements are: The applicant must be a resident or national of a Contracting State bound by Chapter II of the PCT. The international application must have been filed with…
Read MoreWhat happens if an applicant is not entitled to file a demand for international preliminary examination?
According to MPEP 1864.02, which cites PCT Rule 54.4, if an applicant does not have the right to file a demand for international preliminary examination, the following occurs: “If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the…
Read MoreCan applicants make observations on the translation of the international preliminary examination report?
Yes, applicants are allowed to make observations on the translation of the international preliminary examination report. This right is outlined in MPEP 1879.03, which cites PCT Rule 72.3: “The applicant may make written observations as to the correctness of the translation of the international preliminary examination report or of the written opinion established by the…
Read MoreHow can an applicant contest a holding of insufficiency of reply?
An applicant can contest a holding of insufficiency of reply by asserting that their reply was, in fact, complete and responsive. MPEP 711.03(a) states: Applicant may deny that the reply was incomplete. If an applicant believes their reply was sufficient, they can communicate this to the USPTO, typically by filing a petition or response explaining…
Read MoreCan applicants request paragraph numbering in office actions if it’s not provided?
While MPEP 707.07(k) recommends paragraph numbering as good practice, it does not explicitly address whether applicants can request it. The MPEP states: It is good practice to number the paragraphs of the Office action consecutively. If an office action is received without paragraph numbering, applicants may consider: Informally requesting the examiner to use paragraph numbering…
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