What are the requirements for submitting foreign patents and publications in reexamination?

When submitting foreign patents and publications in a reexamination proceeding, there are specific requirements that must be met. According to MPEP 2656: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications…

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What is Pre-AIA 35 U.S.C. 102(d) and when does it apply?

Pre-AIA 35 U.S.C. 102(d) is a provision of patent law that establishes statutory bars against granting a patent in the United States under certain conditions related to foreign patents or inventor’s certificates. It’s important to note that this provision is not applicable to applications subject to examination under the first inventor to file (FITF) provisions…

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What constitutes a “patent” for rejection purposes under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) and (b)?

The designation of a document as a “patent” by a foreign country does not automatically qualify it as a patent for rejection purposes under U.S. patent law. As stated in MPEP 2126: “It is the substance of the rights conferred and the way information within the ‘patent’ is controlled that is determinative.” This means that…

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How does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?

An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states: “If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory…

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