Who is responsible for disclosing information to the USPTO?
According to MPEP 2002.01, the responsibility for disclosing information to the United States Patent and Trademark Office (USPTO) can fall on several parties: Attorneys or agents of record Pro se inventors (inventors representing themselves) Other individuals who disclose information to the attorney, agent, or inventor The MPEP states: “37 CFR 1.56(d) makes clear that information…
Read MoreWho has a duty to disclose information material to patentability?
According to 37 CFR 1.56, individuals associated with the filing and prosecution of a patent application have a duty to disclose information material to patentability. This includes: The inventor(s) Each attorney or agent who prepares or prosecutes the application Every other person who is substantively involved in the preparation or prosecution of the application The…
Read MoreWhen should material information be disclosed in patent term extension proceedings?
Material information should be disclosed promptly in patent term extension proceedings. The MPEP 2762 provides clear guidance on the timing: “All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension…
Read MoreWhat is considered “material information” in patent disclosure?
While the MPEP 2002.01 section doesn’t provide a specific definition of “material information,” it does mention that not all information needs to be disclosed to the USPTO. The MPEP states: “Information that is not material need not be passed along to the Office.” Generally, material information is any information that a reasonable examiner would consider…
Read MoreWhat is considered “information material to patentability”?
Information material to patentability refers to any information that is relevant to the patentability of an invention. This includes prior art, conflicting applications, and any other information that could affect the novelty, non-obviousness, or utility of the claimed invention. According to 37 CFR 1.56, information is material to patentability when: It establishes, by itself or…
Read MoreWhat types of foreign information should be disclosed to the USPTO?
According to MPEP 2001.06(a), the types of information from foreign applications that should be disclosed to the USPTO include: Material prior art cited in related foreign applications Other information brought to the attention of the applicant in any related foreign application The MPEP specifically states: “The inference that such prior art or other information is…
Read MoreHow should material information be submitted in patent term extension proceedings?
Material information in patent term extension proceedings should be submitted promptly and directly to the appropriate authority. According to MPEP 2762: “Any such material information should be submitted to the Director of the United States Patent and Trademark Office, the Secretary of Health and Human Services, or the Secretary of Agriculture, as appropriate, accompanied by…
Read MoreWhat 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 can a patent owner satisfy the duty of disclosure in an inter partes reexamination?
According to 37 CFR 1.933(a), a patent owner can satisfy the duty of disclosure in an inter partes reexamination by: “The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in…
Read MoreWhat are the disclosure requirements for reissue applications involved in litigation?
For reissue applications where the original patent has been involved in litigation, the MPEP 2001.06(c) outlines specific disclosure requirements: The existence of such litigation must be brought to the examiner’s attention at the time of filing or shortly after. This information can be disclosed in the reissue oath/declaration or in a separate paper, preferably accompanying…
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