When can I change the correspondence address during the patent application process?
The timing for changing the correspondence address depends on the stage of the patent application process: Before filing an oath or declaration: You can change the address as provided in pre-AIA 37 CFR 1.33(a)(1). After filing an oath or declaration: The address can be changed as per pre-AIA 37 CFR 1.33(a)(2). The MPEP states: “The…
Read MoreWhat are the requirements for the oath or declaration in international design applications designating the United States?
For international design applications designating the United States, there are specific requirements regarding the oath or declaration: 1. The application must contain an oath or declaration of the creator. 2. The application must include indications concerning the identity of the creator. As stated in the MPEP, “Additionally, pursuant to Rule 8(1), the United States declared…
Read MoreWhat happens if an application is in condition for allowance but lacks a proper oath or declaration?
For applications filed on or after September 16, 2012, if an application is in condition for allowance but lacks a proper oath or declaration, the USPTO has a specific procedure. According to MPEP 1303: “The Office will issue a ‘Notice of Allowance and Fee(s) Due’ (PTOL-85) together with a ‘Notice of Allowability’ (PTOL-37) including a…
Read MoreWhat additional requirements must be met to avoid abandonment after entering the national stage?
After timely meeting the requirements under 37 CFR 1.495(b), applicants must also satisfy additional requirements within a time period set by the USPTO to avoid abandonment. These requirements, as outlined in 37 CFR 1.495(c), include: English translation of the international application (if not in English) Oath or declaration Search fee Examination fee Application size fee…
Read MoreHow does the content of a provisional application differ from a nonprovisional application?
Provisional and nonprovisional applications have different content requirements. According to MPEP 601: Provisional applications do not require claims or an oath or declaration. Nonprovisional applications must include at least one claim and an oath or declaration. The MPEP states: ‘A provisional application must also include the cover sheet required by 37 CFR 1.51(c)(1), which may…
Read MoreCan a Pre-AIA 37 CFR 1.47 application be converted to a regular application?
Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states: ‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by…
Read MoreHow does the oath or declaration requirement differ for divisional applications?
How does the oath or declaration requirement differ for divisional applications? For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c): “The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior…
Read MoreCan an assignment contain statements required in an oath or declaration?
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states: ‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the…
Read MoreHow does the oath or declaration requirement differ for continuation applications filed before and after September 16, 2012?
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012: For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that…
Read MoreWhat is an ‘assignment-statement’ and how is it used in patent applications?
An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains: ‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’),…
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