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…
Read MoreWhat 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…
Read MoreWhat 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…
Read MoreWhat happens if an Information Disclosure Statement (IDS) doesn’t comply with USPTO requirements?
If an Information Disclosure Statement (IDS) doesn’t comply with USPTO requirements, it will be placed in the file but not considered by the Office. According to MPEP 609.05(a): Pursuant to 37 CFR 1.97(i), submitted information, filed before the grant of a patent, which does not comply with 37 CFR 1.97 and 37 CFR 1.98 will…
Read MoreWhat information is printed on a patent regarding citations?
Citations considered by the examiner and listed on form PTO/SB/08 or an equivalent separate paper will be printed on the patent. The MPEP states: A citation listed on form PTO/SB/08 and considered by the examiner will be printed on the patent. However, for the separate paper to be printed, it must meet specific formatting requirements:…
Read MoreIs 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…
Read MoreWhat 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…
Read MoreWhat 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,…
Read MoreWhat are the requirements for an Information Disclosure Statement to be considered by the USPTO?
For an Information Disclosure Statement (IDS) to be considered by the USPTO during the pendency of a patent application, it must meet three key requirements: Comply with the content requirements of 37 CFR 1.98 Be filed in accordance with the procedural requirements of 37 CFR 1.97 Be signed in compliance with 37 CFR 1.33(b) The…
Read MoreDo 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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