Can a request for suspension of action be filed after a non-final Office action?
Can a request for suspension of action be filed after a non-final Office action? Yes, a request for suspension of action can be filed after a non-final Office action, but there are specific requirements. According to MPEP 709: “A request for suspension of action, if filed after the date of issue or allowance of an…
Read MoreWhat happens if a suspension of action expires during a national emergency?
What happens if a suspension of action expires during a national emergency? During a national emergency, such as the COVID-19 pandemic, the USPTO may provide additional flexibility regarding suspensions of action. According to MPEP 709, ‘In extraordinary situations, such as when the Director declares an emergency or a disaster, the Director or designee may permit…
Read MoreWhen can a supplemental reply be entered in a patent application?
A supplemental reply may be entered under specific circumstances, as outlined in 37 CFR 1.111(a)(2). The USPTO may enter a supplemental reply if it is clearly limited to: Cancellation of a claim(s) Adoption of examiner suggestion(s) Placement of the application in condition for allowance Reply to an Office requirement made after the first reply was…
Read MoreWhat is the relationship between sufficiency of disclosure and enablement in patent applications?
What is the relationship between sufficiency of disclosure and enablement in patent applications? The sufficiency of disclosure in a patent application is closely related to the enablement requirement. According to MPEP 716.09, “The issue of ‘sufficiency of disclosure’ with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is related to the…
Read MoreCan protective order materials be submitted under MPEP § 724.02?
Can protective order materials be submitted under MPEP § 724.02? Yes, protective order materials can be submitted under MPEP § 724.02. The MPEP specifically addresses this type of material: ‘Protective order material is defined as trade secret or other confidential information protected by a court entered protective order.’ This provision allows for the submission of…
Read MoreHow are statutory periods calculated for Office actions in patent applications?
How are statutory periods calculated for Office actions in patent applications? Statutory periods for Office actions in patent applications are calculated as follows: The day after the date of the Office action is counted as the first day. Saturdays, Sundays, and federal holidays within the District of Columbia are included in the computation. The last…
Read MoreWhat is the statutory authority for patent examination?
The statutory authority for patent examination is outlined in 35 U.S.C. 131, which states: The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent…
Read MoreWhat statement is required to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C)?
To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), the applicant or patent owner must provide a specific statement regarding common ownership. The MPEP provides guidance on this statement: The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement…
Read MoreWhat is the standard period for replying to a patent office action?
According to 35 U.S.C. 133, the standard period for replying to a patent office action is six months. The statute states: ‘Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant… the application shall be regarded as abandoned…
Read MoreWhat is the ‘Slothfulness Rule’ in patent diligence?
The ‘Slothfulness Rule’ is a principle in patent law related to diligence in reducing an invention to practice. According to MPEP 715.07(a), this rule sets a standard for what is considered a lack of diligence. The MPEP cites the following: ‘The law does not look with favor upon an inventor who slumbers upon his rights;…
Read More