Can dictionary definitions be added to a patent application without being considered new matter?
Generally, adding dictionary or art-recognized definitions known at the time of filing an application may not be considered new matter. However, there are important considerations. The MPEP Section 2163.07 states: “The mere inclusion of dictionary or art recognized definitions known at the time of filing an application may not be considered new matter. If there…
Read MoreHow do I declare that a sequence listing amendment contains no new matter?
When submitting an amendment that adds a sequence listing to a patent application, it’s crucial to declare that the amendment contains no new matter. The MPEP provides a sample statement for this purpose: “I hereby state that the amendment adding a ‘Sequence Listing’, made in accordance with 37 CFR 1.825(a) is supported in the application,…
Read MoreCan corrections be made to sequence listings after filing?
Corrections to sequence listings are subject to strict rules regarding the introduction of new matter. According to MPEP 2422.07: “The correction of errors in sequencing or any other errors that are made in describing an invention are subject to the statutory prohibition (35 U.S.C. 132 and 35 U.S.C. 251) against the introduction of new matter.”…
Read MoreHow can patent drawings be corrected during ex parte reexamination?
Patent drawings can be corrected during ex parte reexamination by following specific procedures outlined in 37 CFR 1.530(d)(3). The process involves: Submitting a sketch on a separate paper showing proposed changes in red for examiner approval. Upon approval, filing new sheets of drawings including the changes and complying with 37 CFR 1.84. Identifying amended figures…
Read MoreWhat are common defects in inter partes reexamination submissions?
Common defects in inter partes reexamination submissions include: Lack of proof of service Unsigned paper Paper signed by a person not of record Amendment not complying with 37 CFR 1.530(d)-(j) Amendment not complying with 37 CFR 1.20(c)(3) and/or (c)(4) The MPEP 2666.50 states: “Defects in the submission can be, for example: (A) The paper filed…
Read MoreCan claim scope be enlarged during ex parte reexamination?
No, the scope of a claim cannot be enlarged during ex parte reexamination. This is one of the basic characteristics of ex parte reexamination as stated in MPEP 2209: “(G) The scope of a claim cannot be enlarged by amendment;“ This limitation ensures that patent owners cannot use the reexamination process to broaden their patent…
Read MoreHow are amendments handled in merged reissue-reexamination proceedings?
Amendments in merged reissue-reexamination proceedings are handled differently from standard reexaminations. The MPEP 2270 directs examiners to specific sections for guidance: “For entry of amendments in a merged reissue-reexamination proceeding, see MPEP § 2283 and § 2285.” This means that examiners must refer to MPEP 2283 and MPEP 2285 for specific procedures on handling amendments…
Read MoreWhen can amendments be filed in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, amendments cannot be filed immediately. According to MPEP 2818.01: “No amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits.“ This restriction ensures that the initial examination is based…
Read MoreWhen are amendments entered in a reexamination proceeding?
Amendments in a reexamination proceeding are generally entered if they comply with certain conditions. According to MPEP 2270: “Amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and which comply with 37 CFR 1.530(d) – (j), will generally be entered…
Read MoreCan provisional applications be amended to correct a non-compliant Sequence Listing XML?
No, provisional applications cannot be amended to correct a non-compliant Sequence Listing XML. The MPEP clearly states: Provisional applications cannot be amended, so if a provisional application contains a non-compliant “Sequence Listing XML” no notice relating to the requirements will be mailed in a provisional application. This means that if you submit a non-compliant Sequence…
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