What sources of information are covered by the duty of disclosure under 37 CFR 1.56?
The duty of disclosure under 37 CFR 1.56 covers all material information that individuals are aware of, regardless of the source. This includes information from: Co-workers Trade shows Communications with competitors or potential infringers Related foreign applications Prior or copending U.S. patent applications Related litigation and post-grant proceedings Preliminary examination searches Information related to regulatory…
Read MoreHow are patents involved in litigation handled during reexamination proceedings?
When patents involved in litigation are undergoing reexamination proceedings, the USPTO has specific guidelines for handling these cases. According to MPEP 2207, there are different procedures depending on the type of reexamination: For ex parte reexamination: Refer to MPEP § 2240 and MPEP § 2242 For inter partes reexamination: Refer to MPEP § 2640 and…
Read MoreShould patent term extension or potential litigation be considered when determining the term of deposit?
No, potential patent term extension or extended litigation should not be factored into the determination of the deposit term. The MPEP explicitly states: The mere possibility of patent term extension or extended litigation involving the patent should not be considered in this analysis. This guidance ensures that the term of deposit is based on the…
Read MoreWhat happens if a patent owner files a court action to enjoin the inter partes reexamination?
If a patent owner files a court action to enjoin the inter partes reexamination, the action does not automatically stay the reexamination proceedings. According to MPEP 2686.04: “35 U.S.C. 318 provides that, once an order for inter partes reexamination has been issued, the patent owner may obtain a stay of any pending litigation which involves…
Read MoreCan a protest include information about ongoing litigation related to the patent application?
Yes, a protest can include information about ongoing litigation related to the patent application. MPEP 1901.02 explicitly mentions this: “Information which can be relied on in a protest… includes information about other related litigation and governmental proceedings.” This means that if there are any ongoing court cases, administrative proceedings, or other governmental actions that are…
Read MoreWhat types of information from litigation are considered material to patent examination?
According to MPEP 2001.06(c), several types of information from litigation are considered material to patent examination: Evidence of possible prior public use or sales Questions of inventorship Prior art references Allegations of fraud, inequitable conduct, or violation of duty of disclosure Assertions made during litigation that contradict statements made to the examiner Defenses raised against…
Read MoreWhat information from related litigation or trial proceedings must be disclosed to the USPTO?
According to MPEP 2001.06(c), any material information arising from litigation or trial proceedings related to the subject matter for which a patent is being sought must be disclosed to the USPTO. This includes: Evidence of possible prior public use or sales Questions of inventorship Prior art Allegations of fraud, inequitable conduct, or violation of duty…
Read MoreHow does concurrent litigation affect inter partes reexamination proceedings?
Concurrent litigation can significantly impact inter partes reexamination proceedings. The key points to consider are: The USPTO is not bound by court decisions on patent validity and will generally continue reexamination proceedings unless statutorily required to terminate them. A final court decision of invalidity will typically result in termination of the reexamination for those claims…
Read MoreWhat happens if litigation is pending when the inter partes reexamination certificate is to be issued?
What happens if litigation is pending when the inter partes reexamination certificate is to be issued? If litigation is pending when the inter partes reexamination certificate is to be issued, the USPTO takes specific steps to ensure proper handling. According to MPEP 2688: “If the reexamination proceeding is ready for issuance of a certificate, but…
Read MoreWhat is the estoppel effect of litigation on inter partes reexamination under 35 U.S.C. 317(b)?
The estoppel effect under 35 U.S.C. 317(b) can prevent the maintenance of an inter partes reexamination under certain conditions: It applies when there’s a final court decision upholding patent validity. The requester must have been a party to the litigation. It only affects claims that were at issue in the litigation. It prevents reexamination based…
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