What are the requirements for prioritized examination?
Prioritized examination, as outlined in 37 CFR 1.102(e) and MPEP 708.01, has specific requirements: Payment of prioritized examination fee, processing fee, and publication fee (if not already paid) Application must not contain or be amended to contain more than 4 independent claims, 30 total claims, or any multiple dependent claims For utility applications, must be…
Read MoreWhat are the requirements for requesting Track One prioritized examination?
To request Track One prioritized examination for a newly filed application, the following requirements must be met: The application must be a utility or plant nonprovisional application filed under 35 U.S.C. 111(a) Required fees must be paid, including prioritized examination fee, processing fee, and publication fee The application must contain no more than 4 independent…
Read MoreWhat are the requirements for a small entity to request prioritized examination?
For a small entity to request prioritized examination, the following requirements must be met: The application must be an original utility or plant nonprovisional application filed under 35 U.S.C. 111(a). The request must be filed with the application or with a Request for Continued Examination (RCE). The application must contain no more than 4 independent…
Read MoreWhat are the requirements for oaths or declarations in continuing applications filed on or after September 16, 2012?
For continuing applications filed on or after September 16, 2012, the following requirements apply: A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64. The oath or declaration must comply with 35 U.S.C. 115 and the…
Read MoreHow does the inventorship of a divisional application relate to the parent application?
The inventorship of a divisional application must include at least one inventor named in the parent application, but it doesn’t have to be identical. The MPEP states: The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed…
Read MoreCan the specification be omitted when filing a divisional or continuation application?
Can the specification be omitted when filing a divisional or continuation application? No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c): “A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a…
Read MoreWhat are the requirements for incorporating material from a prior-filed application under 37 CFR 1.57(b)?
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met: The inadvertently omitted portion must be completely contained in the prior-filed application. A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111). If the prior-filed application is in a non-English language, an…
Read MoreWhat are the filing date requirements for nonprovisional applications filed on or after December 18, 2013?
For nonprovisional applications filed on or after December 18, 2013, the filing date requirements have been simplified. The MPEP states: For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with…
Read MoreWhat is the ‘reasonable inquiry’ requirement for USPTO submissions?
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure. The MPEP clarifies: An ‘inquiry…
Read MoreAre patent applicants required to conduct prior art searches?
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states: An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38…
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