How should U.S. patents and patent application publications be listed in an IDS?

U.S. patents and U.S. patent application publications must be listed separately from other documents in an Information Disclosure Statement (IDS). This requirement is specified in 37 CFR 1.98(a)(1). The MPEP states: ‘37 CFR 1.98(a)(1) specifically requires that U.S. patents and U.S. patent application publications be listed separately from the citations of other documents. The separation…

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What is required for non-English language information in an IDS?

When submitting non-English language information in an Information Disclosure Statement (IDS), a concise explanation of the relevance is required. The MPEP states: ‘Each information disclosure statement must further include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the…

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What are the requirements for submitting non-English language information in an IDS?

When submitting non-English language information in an Information Disclosure Statement (IDS), there are specific requirements that must be met. The MPEP 609.05(a) addresses this issue with form paragraph 6.49.09: The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it…

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Is the listing of references in the PCT international search report considered an IDS?

No, the listing of references in the PCT international search report is not considered an Information Disclosure Statement (IDS) complying with 37 CFR 1.98. As stated in MPEP 609.03: “The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98.” To…

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What are the key differences between provisional and nonprovisional patent applications?

Provisional and nonprovisional patent applications have several key differences: Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.” Oath or Declaration: Nonprovisional applications require an oath or declaration, while…

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What are the consequences of listing references in the specification instead of an IDS?

Listing references in the specification instead of submitting them in a proper Information Disclosure Statement (IDS) can have significant consequences. The MPEP 609.05(a) addresses this issue with form paragraph 6.49.06: The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications,…

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Do I need to resubmit prior art cited in a parent application when filing a continuing application?

Generally, it is not necessary to resubmit prior art cited by the examiner in a parent application when filing a continuing application that claims benefit under 35 U.S.C. 120. The MPEP states: “The examiner of the continuing application will consider information which has been considered by the Office in the parent application.” However, if you…

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