Can foreign priority or domestic benefit be claimed during inter partes reexamination?
Yes, foreign priority or domestic benefit can be claimed during inter partes reexamination under certain circumstances. The MPEP states: “Amendments may be made to the specification to correct, for example, an inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to…
Read MoreCan claims be broadened during inter partes reexamination?
No, claims cannot be broadened during inter partes reexamination. The MPEP clearly states: “Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims. 35 U.S.C.…
Read MoreCan I amend my patent application to include inherent functions or properties?
Yes, you can amend your patent application to include inherent functions, theories, or advantages of your invention without introducing prohibited new matter. This is supported by MPEP 2163.07(a), which states: “The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter.” This means that if your original application…
Read MoreCan the incorporation by reference of the Sequence Listing XML be added after the filing date?
Can the incorporation by reference of the Sequence Listing XML be added after the filing date? Yes, the incorporation by reference of the Sequence Listing XML can be added after the filing date, but there are specific conditions and potential consequences to be aware of. According to MPEP 2413.04: “An incorporation by reference statement added…
Read MoreHow can an applicant withdraw appealed claims?
An applicant can withdraw appealed claims by submitting an amendment that cancels those claims. The MPEP 1215.02 provides guidance on this: “An amendment canceling the appealed claims is equivalent to a withdrawal of the appeal.” This means that if you want to withdraw your appeal for specific claims, you can simply file an amendment canceling…
Read MoreWhen is a C* classification challenge typically initiated?
A C* classification challenge is typically initiated upon the receipt of an amendment to a patent application. The Manual of Patent Examining Procedure (MPEP) 909.01(c) states: “Upon the receipt of an amendment which makes a C* classification challenge necessary, steps should be taken promptly in accordance with the C* classification challenge outlined in MPEP §…
Read MoreWhat happens if I file a Notice of Appeal with an amendment?
If you file an amendment, a Notice of Appeal, and an appeal brief on the same date after receiving a final action, the rules under 37 CFR 1.116 apply. The MPEP states: “If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final…
Read MoreWhat are the eight ways to correct or amend a patent?
According to MPEP 1400.01, there are eight ways to correct or amend a patent: Reissue Issuance of a certificate of correction Disclaimer Reexamination Supplemental examination Inter partes review Post grant review Covered business method review The MPEP states: “A patent may be corrected or amended in eight ways, namely by: (1) reissue, (2) the issuance…
Read MoreWhat is a C* classification challenge in patent examination?
A C* classification challenge is a process that may become necessary upon receipt of an amendment during patent examination. According to MPEP 909.01(c), “Upon the receipt of an amendment which makes a C* classification challenge necessary, steps should be taken promptly in accordance with the C* classification challenge outlined in MPEP § 909.01(d).” This suggests…
Read MoreWhat happens if an amendment is filed after a notice of appeal but before the appeal brief?
Filing an amendment after a notice of appeal but before the appeal brief does not negate the requirement to file the appeal brief. The MPEP 1205.01 states: “A brief must be filed to preserve appellant’s right to the appealed claims, notwithstanding circumstances such as: … (B) the filing of an amendment, even if it is…
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