How can an applicant challenge an examiner’s use of official notice?
How can an applicant challenge an examiner’s use of official notice? An applicant can challenge an examiner’s use of official notice by following these steps: Traverse the rejection: In the response to the Office action, explicitly traverse the examiner’s use of official notice. Request evidence: Demand that the examiner provide documentary evidence to support the…
Read MoreWhat should an examiner do if an applicant adequately traverses an official notice?
If an applicant adequately traverses an examiner’s assertion of official notice, the examiner must take specific actions in the next Office action. According to MPEP 2144.03: “If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained.” Additionally,…
Read MoreHow is the consent requirement verified in a reissue application?
The consent requirement in a reissue application is verified through the following steps: The examiner inspects the submission under 37 CFR 1.172 for documentary evidence of chain of title. The consent and documentary evidence of ownership are compared to ensure the assignee signing the consent matches the assignee indicated by the evidence. The examiner verifies…
Read MoreWhat types of evidence are acceptable for antedating a reference in patent applications?
According to MPEP 715.07, acceptable evidence for antedating a reference can include: Affidavits or declarations from inventors or others with knowledge of the facts Documentary evidence such as drawings, photographs, or other physical exhibits Laboratory notebooks or other contemporaneous records Testimony from witnesses who can corroborate the inventor’s activities The MPEP states: ‘Facts, not conclusions,…
Read MoreWhat types of documentary evidence are acceptable for Rule 131 affidavits?
What types of documentary evidence are acceptable for Rule 131 affidavits? Various types of documentary evidence can be used to support Rule 131 affidavits. The MPEP 715.07 provides guidance on acceptable forms of evidence: Laboratory notebooks Progress reports Invention disclosure documents Sketches or drawings Photographs Models Correspondence discussing the invention The MPEP states, “Documentary evidence…
Read MoreHow can an assignee become the applicant for a patent application?
An assignee can become the applicant for a patent application by following these steps: File the application under 37 CFR 1.46 Include an application data sheet (ADS) under 37 CFR 1.76 specifying the assignee as the applicant in the applicant information section Record documentary evidence of ownership (e.g., assignment) as provided in 37 CFR part…
Read MoreWhat is the deadline for recording documentary evidence of ownership for assignee applicants?
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1): If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to…
Read MoreWhat documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1): If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee,…
Read MoreWhen should documentary evidence of ownership be recorded for a patent application?
According to 37 CFR 1.46(b)(1), documentary evidence of ownership should be recorded as follows: “If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under…
Read MoreHow does an assignee establish the right to take action in a patent application filed before September 16, 2012?
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements: The assignee must be of the entire right, title, and interest in the application. A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.…
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