Who is subject to the duty of disclosure in patent term extension proceedings?
The duty of disclosure in patent term extension proceedings applies to a wide range of individuals involved in the process. According to MPEP 2762: “A duty of candor and good faith toward the USPTO, the Secretary of Health and Human Services, and the Secretary of Agriculture rests on the patent owner or its agent, on…
Read MoreWho has the duty to disclose information material to patentability?
According to 37 CFR 1.56(c), the duty to disclose information material to patentability applies to: Each inventor named in the application Each attorney or agent who prepares or prosecutes the application Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant,…
Read MoreWhat information must an attorney or agent provide to act in a representative capacity?
To act in a representative capacity under 37 CFR 1.34 during an ex parte reexamination, an attorney or agent must provide specific information. According to MPEP 2213: “In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must set forth his or her registration number, his or her name,…
Read MoreWho can sign amendments and other papers in a patent reexamination proceeding?
According to MPEP 2622, amendments and other papers filed in a reexamination proceeding must be signed by specific individuals. The section states: “Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there…
Read MoreWho can file a terminal disclaimer?
A terminal disclaimer can be filed by the applicant, patentee, or an attorney or agent of record. For applications filed on or after September 16, 2012, the applicant refers to the inventor(s) or the person applying for the patent as provided in 37 CFR 1.43, 1.45, or 1.46. According to the MPEP: A terminal disclaimer…
Read MoreCan an assignee or attorney sign an affidavit or declaration under 37 CFR 1.131(a)?
Can an assignee or attorney sign an affidavit or declaration under 37 CFR 1.131(a)? No, an assignee or attorney cannot sign an affidavit or declaration under 37 CFR 1.131(a). The MPEP 715.04 clearly states: “The affidavit or declaration must be signed by all of the inventors except as provided for in 37 CFR 1.131(a)(1). An…
Read MoreCan an attorney in a patent application administer the oath as a notary?
The MPEP provides guidance on this matter. According to MPEP 602, “The language of 35 U.S.C. 115 and 37 CFR 1.66 is such that an attorney in the application is not barred from administering the oath as notary.” However, it’s important to note that this practice may be subject to local laws. The MPEP further…
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