How are documents submitted as part of an applicant’s reply to an Office action handled?
Documents submitted as part of an applicant’s reply to an Office action are handled differently from regular Information Disclosure Statements: They do not need to comply with 37 CFR 1.97 and 37 CFR 1.98 to be considered The examiner will consider the portion of the document relied upon as rebuttal evidence The entire document may…
Read MoreHow does submitting documents as evidence differ from filing an information disclosure statement?
Submitting documents as evidence in a reply to an Office action is distinct from filing an information disclosure statement (IDS). The MPEP clarifies: “Compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.”…
Read MoreHow does an examiner process documents submitted as evidence in a reply to an Office action?
When an applicant submits documents as evidence in a reply to an Office action, the examiner is not required to process these documents as items of information cited in an information disclosure statement. The MPEP clarifies: “The record should reflect whether the evidence was considered, but listing on a form (e.g., PTO-892 or PTO/SB/08) and…
Read MoreWhat types of documents can be submitted as evidence in a patent application reply?
Applicants can submit various types of documents as evidence when replying to an Office action. The MPEP provides examples: “Documents may be in any form but are typically in the form of an affidavit, declaration, patent, or printed publication.” These documents can be used to support arguments related to patentability issues raised in the Office…
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