How does the duty of disclosure differ between ex parte reexamination under 35 U.S.C. 302 and 35 U.S.C. 257?
The duty of disclosure differs between ex parte reexamination proceedings under 35 U.S.C. 302 and 35 U.S.C. 257. MPEP 2280 explains: “The material to patentability standard set forth in 37 CFR 1.56(b), which is applicable to patent applications, and not the standard set forth in 37 CFR 1.555(b), applies in ex parte reexamination proceedings ordered…
Read MoreWhat is the duty of disclosure regarding prior art cited in copending applications?
What is the duty of disclosure regarding prior art cited in copending applications? The duty of disclosure extends to prior art cited in copending applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This implies that applicants have a duty to disclose…
Read MoreWhat is the duty of disclosure in patent term extension proceedings?
The duty of disclosure in patent term extension proceedings refers to the obligation of candor and good faith towards the USPTO, the Secretary of Health and Human Services, and the Secretary of Agriculture. This duty applies to the patent owner, their agent, attorneys, and anyone substantially involved in the patent term extension process. According to…
Read MoreWhat is the duty of disclosure in inter partes reexamination proceedings?
The duty of disclosure in inter partes reexamination proceedings is defined in 37 CFR 1.933. It requires that: “Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information…
Read MoreHow does the duty of disclosure apply to foreign patent attorneys?
The duty of disclosure applies equally to foreign patent attorneys representing applicants for U.S. patents. This is clearly stated in MPEP 2001.06(a), which cites the Gemveto Jewelry Co. v. Lambert Bros., Inc. case: “Foreign patent attorneys representing applicants for U.S. patents through local correspondent firms surely must be held to the same standards of conduct…
Read MoreHow does the duty of disclosure apply to information in foreign counterpart applications?
How does the duty of disclosure apply to information in foreign counterpart applications? The duty of disclosure extends to information in foreign counterpart applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This principle applies to foreign counterpart applications as well. Applicants…
Read MoreWhat are the duties of disclosure and reasonable inquiry in dealings with other government agencies?
Individuals with a duty to disclose or parties with a duty of reasonable inquiry must ensure consistency in statements made to the USPTO and other government agencies regarding claimed subject matter. The MPEP 2015 states: “Each individual with a duty to disclose, or party with a duty of reasonable inquiry, should ensure that the statements…
Read MoreWhat are the disclosure requirements for information related to regulatory review, such as FDA submissions?
Information submitted to regulatory review bodies, such as the U.S. Food & Drug Administration (FDA), may be material to pending patent applications or reexamination proceedings and should be disclosed to the USPTO. The MPEP states: “Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and…
Read MoreHow should ongoing litigation be disclosed during the patent examination process?
For ongoing litigation related to a pending patent application, the MPEP 2001.06(c) provides guidance on how to disclose this information: Promptly bring the litigation to the attention of the USPTO. Provide enough information to clearly inform the Office of the nature of the issues in the litigation. Submit relevant litigation materials that are “material to…
Read MoreHow should information from related litigation and trial proceedings be handled?
Information from related litigation and trial proceedings, including those conducted by the Patent Trial and Appeal Board (PTAB), must be disclosed if it is material to pending related patent applications. The MPEP states: “Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding,…
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