How does the USPTO view the duty of disclosure?
The United States Patent and Trademark Office (USPTO) takes a very serious view of the duty of disclosure. According to the MPEP Section 2001.05: “The USPTO holds those individuals subject to this duty to the highest standards.” This statement underscores the importance the USPTO places on candor and good faith in dealing with the Office.…
Read MoreHow does the USPTO assess the materiality of information in supplemental examination?
The USPTO’s assessment of the materiality of information in supplemental examination is guided by the principles outlined in MPEP 2816.02. Key aspects of this assessment include: Materiality is evaluated in the context of patentability Information is material if it creates a substantial new question of patentability (SNQ) The standard is whether a reasonable examiner would…
Read MoreWhat is considered material information under 37 CFR 1.56(b)?
According to 37 CFR 1.56(b), information is material to patentability when: It is not cumulative to information already of record or being made of record in the application, and It either: Establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or Refutes, or is inconsistent with,…
Read MoreHow should prior art be evaluated and submitted?
When evaluating and submitting prior art: Carefully evaluate the materiality of prior art against the broadest reasonable interpretation of the claims Consider whether the prior art is the closest to the claimed invention Submit information promptly, even if discovered late in prosecution Avoid submitting long lists of documents; highlight the most significant ones Be cautious…
Read MoreWhat criteria are used to determine if information should be expunged?
The primary criterion for determining if information should be expunged is whether it is material to patentability. The MPEP defines materiality in this context: ‘Materiality’ is defined as any information which the examiner considers as being important to a determination of patentability of the claims. Additionally, the petition must establish one of the following: The…
Read MoreIs filing an Information Disclosure Statement considered an admission of prior art search?
No, filing an Information Disclosure Statement (IDS) is not considered an admission that a prior art search has been conducted. The MPEP clearly states: The filing of an information disclosure statement shall not be construed as a representation that a search has been made. 37 CFR 1.97(g). Furthermore, the MPEP emphasizes that There is no…
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