How should prior art from one application be handled in a subsequent application?

Prior art references from one application must be made of record in another subsequent application if such prior art references are “material to patentability” of the subsequent application. MPEP 2001.06(b) cites the Dayco Products case: “Similarly, the prior art references from one application must be made of record in another subsequent application if such prior…

Read More

How is information deemed material to patentability in reexamination proceedings?

In reexamination proceedings, information is considered material to patentability when it is not cumulative to information already of record and meets certain criteria. According to MPEP 2280, which cites 37 CFR 1.555(b): “Information is material to patentability in a reexamination proceeding when it is not cumulative to information of record or being made of record…

Read More

How does the USPTO define “material to patentability” in the context of information disclosure?

How does the USPTO define “material to patentability” in the context of information disclosure? The USPTO defines “material to patentability” in the context of information disclosure through 37 CFR 1.56(b). The MPEP states: “Information is material to patentability when it is not cumulative to information already of record or being made of record in the…

Read More

What is the significance of the phrase “material to patentability” in relation to copending applications?

What is the significance of the phrase “material to patentability” in relation to copending applications? The phrase “material to patentability” is crucial when considering information from copending applications. According to MPEP 2001.06(b): “The information from the copending application may be material to patentability of the application in question.” This means that any information from a…

Read More

How does MPEP 2001.06(b) define “material to patentability” for copending applications?

How does MPEP 2001.06(b) define “material to patentability” for copending applications? According to MPEP 2001.06(b), information is considered “material to patentability” of a copending application if: It could be used in rejecting a claim in the copending application It meets the definition of materiality in 37 CFR 1.56(b) It contradicts or is inconsistent with a…

Read More

What is the duty of disclosure regarding copending United States patent applications?

Individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner information about other copending United States applications that are “material to patentability” of the application in question. This includes: Providing identification of pending or abandoned applications filed by at least one of the inventors Applications assigned to the…

Read More