How should information from related foreign patent applications be handled?
Information from related foreign patent applications, particularly prior art cited or used in rejecting claims, must be brought to the attention of the U.S. Patent and Trademark Office. The MPEP states: “Applicants and other individuals, as set forth in 37 CFR 1.56, have a duty to bring to the attention of the Office any material…
Read MoreHow can foreign patent applications be considered “published” for prior art purposes?
Foreign patent applications can be considered “published” and used as prior art under certain conditions, even if they are not issued in printed form. The key factor is public accessibility. As explained in the MPEP: “When the specification is not issued in printed form but is announced in an official journal and anyone can inspect…
Read MoreHow are foreign patent applications treated as prior art under 35 U.S.C. 102(e)?
Foreign patent applications are not considered prior art under 35 U.S.C. 102(e). The MPEP states: “Note that a foreign patent application publication, including WIPO publications of international applications, may have an earlier prior art date under 35 U.S.C. 102(a) than under 35 U.S.C. 102(e).” This means that while foreign patent applications can be used as…
Read MoreCan canceled figures from a foreign patent application be used as prior art?
Yes, canceled figures from a foreign patent application can be used as prior art under certain circumstances. The MPEP provides an important case example: “Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application…
Read MoreCan examiners request information about foreign patent applications?
Can examiners request information about foreign patent applications? Yes, examiners can request information about foreign patent applications related to the invention. MPEP 704.11 specifically mentions: ‘Copies of any non-patent literature, published application, or patent (U.S. or foreign) which has been relied upon to draft the specification or any copy of the claims in the application.’…
Read MoreHow should foreign patents and foreign published applications be cited?
When citing foreign patents and foreign published applications, the following information must be provided: Patent number Kind code Citation date Name of the country Name of the patentee Relevant classification (if appropriate) The MPEP states: “In citing foreign patents, the patent number, kind code, citation date, name of the country, name of the patentee, and…
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