How should prior art be evaluated and submitted?
When evaluating and submitting prior art: Carefully evaluate the materiality of prior art against the broadest reasonable interpretation of the claims Consider whether the prior art is the closest to the claimed invention Submit information promptly, even if discovered late in prosecution Avoid submitting long lists of documents; highlight the most significant ones Be cautious…
Read MoreWhat is the duty of disclosure regarding prior art cited in copending applications?
What is the duty of disclosure regarding prior art cited in copending applications? The duty of disclosure extends to prior art cited in copending applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This implies that applicants have a duty to disclose…
Read MoreHow should information from related litigation and trial proceedings be handled?
Information from related litigation and trial proceedings, including those conducted by the Patent Trial and Appeal Board (PTAB), must be disclosed if it is material to pending related patent applications. The MPEP states: “Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding,…
Read MoreHow should information from copending applications be cited to the examiner?
How should information from copending applications be cited to the examiner? According to MPEP 2001.06(b), information from copending applications should be cited to the examiner in a specific manner: “The examiner should be informed of any material information from the other application. The manner in which such information is brought to the attention of the…
Read MoreHow should information from AIA trial proceedings be disclosed to patent examiners?
Information from AIA trial proceedings, such as inter partes reviews, post-grant reviews, and covered business method reviews, should be disclosed to patent examiners through an Information Disclosure Statement (IDS). The MPEP 2001.06(c) states: “In particular, material information that is raised in trial proceedings that is relevant to related applications undergoing examination should be submitted on…
Read MoreHow are references from the original patent handled in a reissue application?
In a reissue application, the examiner should consider all references cited during the original patent prosecution. These references should be listed on a PTO-892 form if they are cited or applied again in the reissue application. However, some references may no longer be relevant due to changes in claim scope and may not need to…
Read MoreHow does the PTAB handle information disclosure statements filed during an appeal?
The Patent Trial and Appeal Board (PTAB) has a specific procedure for handling information disclosure statements (IDS) filed during an appeal. According to MPEP 1212: “Consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board’s jurisdiction ends.“ This means that if an appellant…
Read MoreHow are Information Disclosure Statements (IDS) handled in national stage applications?
Information Disclosure Statements (IDS) in national stage applications are handled similarly to domestic national applications, with some specific considerations for PCT documents. The MPEP states, “The examiner will consider the documents cited in the international search report and any supplementary international search report under PCT Rule 45bis, without any further action by applicant under 37…
Read MoreWhat are the requirements for submitting an IDS in a reissue application?
When submitting an Information Disclosure Statement (IDS) in a reissue application, applicants must comply with 37 CFR 1.97 and 1.98. The requirements for document copies have been simplified: Copies of U.S. patents or U.S. patent application publications are not required unless specifically requested by the Office. For foreign patents, publications, and other information, copies are…
Read MoreWhat happens to Information Disclosure Statements (IDS) submitted after a notice of appeal?
Information Disclosure Statements (IDS) submitted after a notice of appeal are handled differently from other types of submissions. According to MPEP 1206: “Information Disclosure Statements submitted after the date of a notice of appeal are normally held in abeyance pending a decision on the appeal. Consideration of Information Disclosure Statements is based on MPEP §…
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