Who is responsible for disclosing prior art from foreign applications?

According to MPEP 2001.06(a), the responsibility for disclosing prior art from foreign applications extends to “Applicants and other individuals, as set forth in 37 CFR 1.56.” This includes: Inventors Patent attorneys or agents Every person substantively involved in the preparation or prosecution of the application It’s important to note that this responsibility extends to foreign…

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What are the requirements for a submission of patents and publications to be included in the reexamination certificate?

For a submission of patents and publications to be included in the reexamination certificate, it must meet specific requirements. MPEP 2257 outlines these requirements: “A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:” By…

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What are the recommended practices for maintaining records during patent prosecution?

What are the recommended practices for maintaining records during patent prosecution? The MPEP provides several recommendations for maintaining records during patent prosecution: Separate files: Keep separate files for each item of information known to be material to patentability. Document explanations: Record explanations of relevance for each item. Track submissions: Note which items have been submitted…

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What are the responsibilities of patent practitioners regarding information from other government agencies?

Patent practitioners have a responsibility to review and potentially disclose information received from other government agencies that may be material to patentability. The MPEP 2015 advises: “Similarly, each individual with a duty to disclose, or party with a duty of reasonable inquiry, should review documents it receives from other Government agencies to determine whether the…

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How does the paragraph IV certification process relate to USPTO disclosures?

The paragraph IV certification process, typically associated with generic drug applications to the FDA, can generate information material to patentability that should be disclosed to the USPTO. According to MPEP 2015: “Consequently, to assist USPTO staff in evaluating patentability effectively and efficiently, the party receiving a paragraph IV certification should review such documents to determine…

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When is there no duty to disclose information to the USPTO?

According to the MPEP Section 2001.05, there is generally no duty to disclose information to the United States Patent and Trademark Office (USPTO) when: The information is clearly cumulative to information already of record or being made of record in the application, or The information is clearly not material. The MPEP states: “Generally, when information…

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