Can evidence of unexpected results be presented after filing a patent application?
Yes, evidence of unexpected results can be presented after filing a patent application. MPEP 716.02(f) clarifies that evidence and arguments directed to advantages not disclosed in the original specification should not be disregarded. The Federal Circuit in In re Chu explicitly stated: “We have found no cases supporting the position that a patent applicant’s evidence…
Read MoreWhat is the timeliness requirement for submitting evidence to traverse rejections?
Evidence traversing rejections must be timely filed to be considered. According to MPEP 716.01, evidence is considered timely if submitted: Prior to a final rejection Before appeal in an application not having a final rejection After final rejection, but before or on the same date of filing an appeal, with a showing of good and…
Read MoreHow does submitting documents as evidence differ from filing an information disclosure statement?
Submitting documents as evidence in a reply to an Office action is distinct from filing an information disclosure statement (IDS). The MPEP clarifies: “Compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.”…
Read MoreWhat happens if documents are submitted both as evidence and on an IDS form?
When documents are submitted both as evidence in a reply to an Office action and listed on an Information Disclosure Statement (IDS) form, the examiner’s treatment may differ. The MPEP provides an example: “For example, if applicant submits and relies on three patents as evidence in reply to the first Office action and also lists…
Read MoreWhat are the requirements for submitting documents as evidence in a reply to an Office action?
When submitting documents as evidence in a reply to an Office action, applicants do not need to comply with the information disclosure rules (37 CFR 1.97 and 37 CFR 1.98) for the examiner to consider the information. The MPEP states: “To the extent that a document is submitted as evidence directed to an issue of…
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