How does the USPTO handle inadvertent omissions in a patent owner’s response during inter partes reexamination?
The USPTO recognizes that sometimes a patent owner’s response may inadvertently omit certain matters or requirements while still being a bona fide attempt to respond and advance prosecution. In such cases, the USPTO may provide an opportunity for the patent owner to address the omission. According to MPEP 2666.10: “When action by the patent owner…
Read MoreCan an inadvertent omission in a reply lead to abandonment of a patent application?
Not necessarily. Under 37 CFR 1.135(c), if a reply to a non-final Office action is a bona fide attempt to advance the application and is substantially complete but for an inadvertent omission, the examiner may give the applicant a new time period to supply the omission. The MPEP states: “When a bona fide attempt to…
Read MoreWhat is incorporation by reference under 37 CFR 1.57(b)?
Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically: The application must contain a priority or benefit claim to a prior-filed application The omitted material must be completely contained in that prior-filed application The omission must…
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