What types of evidence can be used in a 37 CFR 1.130(a) declaration?
Various types of evidence can be used in a 37 CFR 1.130(a) declaration to establish that a disclosure was made by the inventor or obtained from them. While the MPEP 717.01(a)(1) doesn’t provide an exhaustive list, common types of evidence may include: Emails or correspondence between the inventor and third parties Laboratory notebooks or research…
Read MoreHow are materials submitted under MPEP § 724.02 treated in applications covered by 35 U.S.C. 122?
Materials submitted under MPEP § 724.02 in applications covered by 35 U.S.C. 122 are treated as follows: The materials are kept in a sealed envelope marked “Not Open To The Public”. They are not publicly available until a determination is made regarding their materiality to patentability. After publication under 35 U.S.C. 122(b)(1), the materials are…
Read MoreHow does the Transitional After-Final Practice affect the treatment of Information Disclosure Statements (IDS)?
The Transitional After-Final Practice affects how Information Disclosure Statements (IDS) are treated. According to MPEP 706.07(g): In view of the fee set forth in 37 CFR 1.17(r), any (IDS) previously refused consideration in the application because of applicant’s failure to comply with 37 CFR 1.97(c) or (d) will be treated as though it has been…
Read MoreWhat happens to the finality of rejection after a submission under the Transitional After-Final Practice?
When a submission is made under the Transitional After-Final Practice and the appropriate fee is paid, the finality of the previous rejection is withdrawn. According to MPEP 706.07(g): The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r).…
Read MoreWhat is the Transitional After-Final Practice?
The Transitional After-Final Practice, as described in MPEP 706.07(g), is a procedure that allows applicants with certain pending applications to have submissions considered after a final rejection. This practice was introduced to ease the transition between 17-year and 20-year patent terms. Specifically, the MPEP states: In order to facilitate the completion of prosecution of applications…
Read MoreHow should trade secret or proprietary materials be submitted to the USPTO?
Trade secret or proprietary materials must be clearly labeled and submitted in a sealed, clearly labeled envelope or container. The MPEP states: Information which is considered by the party submitting the same to be either trade secret material or proprietary material, and any material subject to a protective order, must be clearly labeled as such…
Read MoreWhat are the timing requirements for common ownership under 35 U.S.C. 102(b)(2)(C)?
The timing of common ownership is crucial for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C). The MPEP clarifies: The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed…
Read MoreWhat are the time periods for submitting an amendment to disclose parties to a joint research agreement?
According to 37 CFR 1.71(g)(2), an amendment to disclose the names of the parties to a joint research agreement must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if not filed within one of the following time periods: Within three months of the filing date of a national application; Within three…
Read MoreWhat is the time period for reply to a first action final rejection?
When a first action final rejection is issued, the applicant is given a specific time period to reply. According to the form paragraphs provided in MPEP 706.07(b), the standard time period is as follows: “A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of…
Read MoreHow does the time period for replying to a Notice to File Missing Parts differ from other statutory periods?
The time period for replying to a Notice to File Missing Parts of an Application is treated differently from other statutory periods. The MPEP states: The 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C.…
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