How does the duty of disclosure differ between ex parte reexamination under 35 U.S.C. 302 and 35 U.S.C. 257?
The duty of disclosure differs between ex parte reexamination proceedings under 35 U.S.C. 302 and 35 U.S.C. 257. MPEP 2280 explains: “The material to patentability standard set forth in 37 CFR 1.56(b), which is applicable to patent applications, and not the standard set forth in 37 CFR 1.555(b), applies in ex parte reexamination proceedings ordered…
Read MoreWhat is the duty of disclosure regarding prior art cited in copending applications?
What is the duty of disclosure regarding prior art cited in copending applications? The duty of disclosure extends to prior art cited in copending applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This implies that applicants have a duty to disclose…
Read MoreHow are materials submitted under MPEP § 724.02 treated in reissue applications open to the public?
Materials submitted under MPEP § 724.02 in reissue applications open to the public under 37 CFR 1.11(b) are treated as follows: The materials are kept separate from the reissue application file and are not publicly available until a determination is made regarding their materiality to patentability. They will only be released to the public if…
Read MoreWhat is considered ‘material to patentability’ according to the USPTO?
Information is considered ‘material to patentability’ when it meets specific criteria outlined in MPEP 724 and 37 CFR 1.56(b). The USPTO defines it as follows: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or…
Read MoreWhat types of materials can be submitted under MPEP § 724.02?
MPEP § 724.02 allows for the submission of trade secret, proprietary, and/or protective order materials that are considered ‘material to patentability’. Specifically, the MPEP states: The types of materials or information contemplated for submission under MPEP § 724.02 include information ‘material to patentability’ but does not include information favorable to patentability. This means that any…
Read MoreCan protected material be redacted if found material to patentability in a reissue application?
Yes, it is possible to redact protected material found to be material to patentability in a reissue application. The process involves: Identifying the protected material within the submission that is material to patentability. Creating a redacted version that removes the protected information while retaining the important material. Submitting the redacted version to the Office along…
Read MoreWhat is the process for handling submitted materials when a reissue application is being allowed?
When a reissue application containing materials submitted under MPEP § 724.02 is being allowed, the following process occurs: Before mailing a notice of allowability, the examiner reviews the reissue application file for any unacted-upon petitions to expunge. The examiner or appropriate Office official determines whether the submitted information is material to patentability. If found material,…
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