What is the process for submitting a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection?
To submit a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection, you must: File a corrected application data sheet (ADS) or amend the specification, depending on the application filing date: For applications filed on or after September 16, 2012: File a corrected ADS under 37 CFR 1.76 with a…
Read MoreHow can applicants claim benefit of earlier filing dates in international design applications?
Applicants can claim the benefit of earlier filing dates in international design applications designating the United States under certain conditions: Claims can be made under 35 U.S.C. 386(c) to prior nonprovisional applications, international applications (PCT) designating the US, or international design applications designating the US. The international design application must be entitled to a filing…
Read MoreHow do I claim foreign priority in an international design application?
To claim foreign priority in an international design application designating the United States, you have two options according to MPEP 2920.05(d): Claim priority in accordance with the Hague Agreement and Regulations. In a nonprovisional international design application, present the priority claim in an application data sheet (ADS). The MPEP states: “In an international design application…
Read MoreWhat are the key differences in filing benefit claims for applications before and after September 16, 2012?
The process for filing benefit claims differs for applications filed before and after September 16, 2012. Key differences include: For applications filed on or after September 16, 2012: File a corrected application data sheet (ADS) under 37 CFR 1.76 The ADS must contain a specific reference to a prior application Must satisfy enablement and written…
Read MoreCan an Application Data Sheet (ADS) be submitted in a supplemental examination proceeding?
No, an Application Data Sheet (ADS) cannot be submitted in a supplemental examination proceeding. MPEP 2813 explicitly states: “An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an ‘application.’“ This clarification is important because while ADSs are commonly used in…
Read MoreCan an Application Data Sheet (ADS) be submitted in a reexamination proceeding?
The submission of an Application Data Sheet (ADS) in reexamination proceedings is generally not allowed, with limited exceptions. The MPEP states: “Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding except as provided in MPEP § 2258.02.“ This restriction is in place because reexamination proceedings deal with already-issued patents, and most…
Read MoreHow should the Application Data Sheet (ADS) be prepared when correcting inventorship?
When preparing an Application Data Sheet (ADS) to correct inventorship in an international design application, it’s important to follow specific formatting requirements. The MPEP 2920.01 states: “The ADS submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed. See MPEP…
Read MoreHow can the order of inventors’ names be adjusted in an international design application?
The order of inventors’ names in an international design application can be adjusted according to specific procedures outlined in the MPEP 2920.01. The process is similar to correcting or updating an inventor’s name: “The name of an inventor may be corrected or updated and the order of the names of the joint inventors may be…
Read MoreHow does the USPTO handle benefit claims in patent application publications for applications filed before and after September 16, 2012?
The USPTO treats benefit claims in patent application publications differently depending on whether the application was filed before or after September 16, 2012. The MPEP states: “For applications filed on or after September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted…
Read MoreHow is the title of the invention determined for a U.S. national stage application?
The title of the invention for a U.S. national stage application is determined as follows: If there’s no application data sheet (ADS) or preliminary amendment changing the title, the USPTO will use: The title from the first page of the description in the published international application (if published in English under PCT Article 21), or…
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