How can a patent owner satisfy the duty of disclosure in an inter partes reexamination?
According to 37 CFR 1.933(a), a patent owner can satisfy the duty of disclosure in an inter partes reexamination by: “The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in…
Read MoreWhat is the “safe harbor” provision for patent term adjustment reductions?
The “safe harbor” provision for patent term adjustment (PTA) reductions is an important exception described in MPEP 2732. This provision is outlined in 37 CFR 1.704(d) and states: “A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to…
Read MoreHow can applicants meet the duty of disclosure requirement?
Applicants can meet the duty of disclosure requirement by submitting information to the USPTO in the manner prescribed by 37 CFR 1.97 and 1.98. The MPEP states: “37 CFR 1.56 provides that the duty of disclosure can be met by submitting information to the Office in the manner prescribed by 37 CFR 1.97 and 1.98.”…
Read MoreWhat are the requirements for filing an Information Disclosure Statement in reexamination proceedings?
Filing an Information Disclosure Statement (IDS) in reexamination proceedings has specific requirements. MPEP 2280 states: “Individuals are strongly encouraged to file information disclosure statements in accordance with 37 CFR 1.98, within two months of the date of the order to reexamine, or as soon thereafter as possible, in order to bring the patents or printed…
Read MoreHow does the submission of an Information Disclosure Statement (IDS) affect patent term adjustment?
The submission of an Information Disclosure Statement (IDS) can affect patent term adjustment as specified in 37 CFR 1.704(d). Key points include: An IDS submission may not be considered a failure to engage in reasonable efforts to conclude prosecution if certain conditions are met The IDS must be accompanied by a statement that each item…
Read MoreWhat is an Information Disclosure Statement (IDS) in patent prosecution?
An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right…
Read MoreWhat are the Information Disclosure Statement (IDS) requirements for international design applications?
Information Disclosure Statement (IDS) requirements for international design applications designating the United States are similar to those for domestic national applications: The duty to disclose information material to patentability applies to individuals associated with the filing and prosecution of the application. An IDS must adhere to the requirements set forth in 37 CFR 1.97, 1.98,…
Read MoreDoes listing a reference in an Information Disclosure Statement (IDS) constitute an admission of prior art?
No, merely listing a reference in an Information Disclosure Statement (IDS) is not considered an admission that the reference is prior art against the claims. According to MPEP 2129: “Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.” This…
Read MoreHow does filing an Information Disclosure Statement (IDS) affect patent term adjustment?
Filing an Information Disclosure Statement (IDS) can potentially reduce patent term adjustment under certain circumstances. However, the reduction can be avoided if the IDS is accompanied by a statement under 37 CFR 1.704(d). The MPEP states: “37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97…
Read MoreHow is the duty to disclose fulfilled in a patent application?
The duty to disclose is typically fulfilled by submitting an Information Disclosure Statement (IDS) to the USPTO. This document lists all known prior art and other information material to patentability. The process involves: Identifying relevant information Preparing the IDS form Submitting the IDS along with copies of non-U.S. patent documents Paying any required fees The…
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