What are the consequences of failing to disclose material information from copending applications?
What are the consequences of failing to disclose material information from copending applications? Failing to disclose material information from copending applications can have serious consequences. According to MPEP 2001.06(b): “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This means that if material information from a…
Read MoreHow should information from AIA trial proceedings be disclosed to patent examiners?
Information from AIA trial proceedings, such as inter partes reviews, post-grant reviews, and covered business method reviews, should be disclosed to patent examiners through an Information Disclosure Statement (IDS). The MPEP 2001.06(c) states: “In particular, material information that is raised in trial proceedings that is relevant to related applications undergoing examination should be submitted on…
Read MoreDo I need to resubmit all ‘References Cited’ from the original patent in a reissue application?
No, you are not required to resubmit all ‘References Cited’ from the original patent in a reissue application. The MPEP clearly states: “Note that the Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the ‘References Cited’ in the patent for which reissue is sought.” However, it’s important to…
Read MoreWhat is the duty to disclose information in reexamination or supplemental examination proceedings?
In reexamination or supplemental examination proceedings, there is a duty to disclose information material to patentability. According to MPEP 1418: “The duty to disclose information material to patentability in reexamination proceedings … is based on 37 CFR 1.555(a) and (b). In addition, for supplemental examination proceedings, 37 CFR 1.620(c) imposes a duty on the patent…
Read MoreWhat is the duty of disclosure in a reissue application?
The duty of disclosure in a reissue application is the same as for any other nonprovisional application. Applicants have a continuing obligation under 37 CFR 1.56 to disclose all information known to be material to patentability. The MPEP states: “A reissue application is subject to the same duty of disclosure requirements as is any other…
Read MoreHow does the duty to disclose apply to information from foreign patent offices?
The duty to disclose extends to information from foreign patent offices. MPEP 1418 states: “Any information required to be disclosed pursuant to this section … based on the results of any foreign search or examination report, may be submitted as part of a reply to an Office action and need not be submitted as a…
Read MoreWhat is the applicant’s responsibility regarding references in a reissue application?
In a reissue application, the applicant is not required to resubmit all references cited in the original patent. However, applicants have an ongoing duty to disclose material information to the USPTO. Specifically: MPEP § 1406 states: The Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the references cited…
Read MoreWhat happens if submitted information is found to be material to patentability in a reexamination?
If submitted information is found to be material to patentability in a reexamination, it becomes part of the public record. MPEP § 724.04(c) states: “If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent…
Read MoreWhat is considered ‘material’ information in a patent file wrapper?
‘Material’ information in a patent file wrapper refers to data that is significant to the patentability of an invention. While MPEP 724.01 does not provide a specific definition, it emphasizes the importance of such information by stating that It is the intent of the Office that the patent file wrapper be as complete as possible…
Read MoreWhat options are available if only a portion of submitted information is found to be material to patentability?
When only a portion of submitted information is found to be material to patentability in a reexamination, there are options available to protect non-material information. According to MPEP § 724.04(c): “If a portion of the submitted information is found not to be material to patentability, and a portion is found to be material to patentability,…
Read More