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 More

Can 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 More

Can 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 More

Can 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…

Read More