Does incorporation by reference under 37 CFR 1.57(b) apply to international patent applications?
Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications: It is only effective for the United States It does not affect the international filing date It cannot be used to accord an international filing date Requests to add omitted material will not be acted upon before national stage entry The…
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…
Read MoreHow do I claim foreign priority in a U.S. patent application?
To claim foreign priority in a U.S. patent application, you must: 1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.2. Submit a claim for priority identifying the foreign application.3. File a certified copy of the foreign application. For applications filed on or after September 16, 2012,…
Read MoreCan a copy of the foreign patent satisfy the certified copy requirement?
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the…
Read MoreHow should the interim copy be filed via the USPTO patent electronic filing system?
When filing an interim copy via the USPTO patent electronic filing system: The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file. Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing. For plain text…
Read MoreWhat are the conditions for using incorporation by reference under 37 CFR 1.57(b)?
There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b): The application must have been filed on or after September 21, 2004 Material must have been inadvertently omitted from the application A priority or benefit claim to a prior-filed application must have been present on the filing…
Read MoreHow does an assignee establish ownership to take action in a patent application?
To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must: File a request to change the applicant under 37 CFR 1.46(c)(2) File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant Submit a statement…
Read MoreWhere should the government license rights statement be placed in a patent application?
The placement of the government license rights statement in a patent application depends on whether there are references to related applications: If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification. If there are…
Read MoreWhat is the government license rights statement required for contractor-owned inventions?
The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is: ‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’ This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at…
Read MoreWhat are the contractor’s obligations regarding government license rights in patent applications?
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations: Include the government license rights statement at the beginning of the patent application and any issued patents. Specify the contract under which the invention was made. Identify the Federal agency that awarded the contract. Acknowledge that the government…
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