What types of foreign information should be disclosed to the USPTO?
According to MPEP 2001.06(a), the types of information from foreign applications that should be disclosed to the USPTO include: Material prior art cited in related foreign applications Other information brought to the attention of the applicant in any related foreign application The MPEP specifically states: “The inference that such prior art or other information is…
Read MoreWhat sources of information are covered by the duty of disclosure under 37 CFR 1.56?
The duty of disclosure under 37 CFR 1.56 covers all material information that individuals are aware of, regardless of the source. This includes information from: Co-workers Trade shows Communications with competitors or potential infringers Related foreign applications Prior or copending U.S. patent applications Related litigation and post-grant proceedings Preliminary examination searches Information related to regulatory…
Read MoreWho 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…
Read MoreWhat is the duty of disclosure regarding prior art cited in related foreign applications?
Applicants and other individuals involved in patent prosecution have a duty to bring to the attention of the USPTO any material prior art or other information cited or brought to their attention in any related foreign application. This duty is outlined in MPEP 2001.06(a) and 37 CFR 1.56. The MPEP states: “The inference that such…
Read MoreWhat are the consequences of failing to disclose foreign prior art?
Failing to disclose material prior art from foreign applications can have serious consequences for a U.S. patent. The MPEP 2001.06(a) cites the case of Gemveto Jewelry Co. v. Lambert Bros., Inc. to illustrate this point: “A patent was held invalid or unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or…
Read MoreCan a patent examiner request information about related foreign applications?
Can a patent examiner request information about related foreign applications? Yes, a patent examiner can request information about related foreign applications. The Manual of Patent Examining Procedure (MPEP) 704.11 states: ‘Copies of any non-patent literature, published application, or patent (U.S. or foreign) which has been relied upon to draft the claims or cited in the…
Read MoreCan an examiner request information about related foreign applications under MPEP 704.10?
Yes, under MPEP 704.10, an examiner can request information about related foreign applications. This is particularly relevant for ensuring a comprehensive examination and understanding the global patent landscape for the invention. The MPEP states: ‘The examiner may require the submission… of such information as may be reasonably necessary to properly examine or treat the matter.’…
Read MoreCan an examiner require information about foreign applications under MPEP 704.10?
Can an examiner require information about foreign applications under MPEP 704.10? Yes, an examiner can require information about foreign applications under MPEP 704.10. This authority extends to requesting details about related foreign patent applications and their prosecution history. The MPEP specifically states: “Information which may be required includes … copies of, or information about, foreign…
Read MoreWhen does the USPTO attempt to retrieve foreign applications under PDX?
The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01: In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt…
Read MoreWhat is Electronic Priority Document Exchange (PDX)?
Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01: Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. This system streamlines the process…
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