Can a patent examiner request information about inventorship?
Can a patent examiner request information about inventorship? Yes, a patent examiner can request information about inventorship during the examination process. The MPEP 704.11 explicitly states that examiners may request: “Names of persons to whom the invention was disclosed.” This information may be requested to: Clarify the correct inventorship of the application Determine if there…
Read MoreWhat is the relationship between a divisional application and its parent application?
What is the relationship between a divisional application and its parent application? A divisional application is closely related to its parent application, as it stems from the same invention disclosure. According to MPEP 201.06, “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing…
Read MoreWhat is the purpose of a secrecy order in patent applications?
A secrecy order is issued to prevent the disclosure of sensitive information in patent applications that could be detrimental to national security. According to MPEP 120, “The purpose of this Act is to prevent disclosure of inventions by the publication of applications or by the granting of patents that might be detrimental to the national…
Read MoreWhat statement must be included in patent applications for inventions made with government support?
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read: “This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has…
Read MoreWhat is the significance of the term ‘carved out’ in relation to divisional applications?
What is the significance of the term ‘carved out’ in relation to divisional applications? The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in…
Read MoreWhat is the scope of a Secrecy Order?
A Secrecy Order applies to the subject matter of the invention, not just the patent application itself. It restricts disclosure or publication of the invention in any form. Other related patent applications which contain any significant part of the subject matter also fall under the scope of the order and must be brought to the…
Read MoreWhat are the requirements for statements under the Atomic Energy Act and NASA Act?
Statements under the Atomic Energy Act and NASA Act must set forth “the full facts” surrounding the conception and making of the invention. According to MPEP 151, these facts should be unique to that invention. The MPEP states: “The use of form paragraphs or printed forms which set forth only broad generalized statements of fact…
Read MoreWhat are the requirements for patent applications related to aeronautical and space activities?
For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135: No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of…
Read MoreWhat is the purpose of reporting patent applications to the Department of Energy (DOE)?
Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review. As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or…
Read MoreWhat information must be included in a statement to the Department of Energy for atomic energy-related inventions?
For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include: Full facts surrounding the making or conception of the invention Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE) Whether the contract…
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