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…

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What 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,…

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What 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,…

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What 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…

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What 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…

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What 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,…

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How 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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