Who has the duty of disclosure in reexamination proceedings?
According to MPEP 2014, the individuals who have a duty of disclosure in reexamination proceedings are: The patent owner Each attorney or agent representing the patent owner Every other individual who is substantively involved on behalf of the patent owner in the reexamination proceeding As stated in 37 CFR 1.555(a): “The individuals who have a…
Read MoreIs a power of attorney required to file an inter partes reexamination request?
While a power of attorney is desirable, it is not strictly required to file an inter partes reexamination request. The MPEP 2613 states: “While the filing of the power of attorney is desirable, processing of the reexamination request will not be delayed due to its absence.” However, it’s important to note that an attorney or…
Read MoreCan a patent attorney update the correspondence address for a patent owner?
Can a patent attorney update the correspondence address for a patent owner? Yes, a patent attorney can update the correspondence address for a patent owner, but there are specific requirements to follow. According to MPEP 2805: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration…
Read MoreHow does the duty to disclose apply in reexamination proceedings?
The duty to disclose in reexamination proceedings is similar to that in patent applications, but applies to a slightly different group of individuals. According to the MPEP, for reexamination proceedings, the duty applies to: “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on…
Read MoreHow can a patent owner change the attorney or agent for correspondence in a supplemental examination?
To change the attorney or agent for correspondence in a supplemental examination, a new power of attorney must be filed in two places: The file of the patent for which supplemental examination is requested The file of the supplemental examination proceeding, or if reexamination is ordered, in the resulting ex parte reexamination proceeding The MPEP…
Read MoreHow can an attorney or agent act on behalf of a patent owner in supplemental examination?
An attorney or agent can act on behalf of a patent owner in supplemental examination in two ways: Under a power of attorney: According to MPEP 2804, “In order to act under a power of attorney from a patent owner, an attorney or agent must be provided with a power of attorney by the patent…
Read MoreWho is responsible for preparing a patent application for allowance?
The preparation of a patent application for allowance is primarily the responsibility of the USPTO patent examiner who has been assigned to the application. However, it’s a collaborative process that may involve: The patent examiner USPTO support staff The applicant or their patent attorney/agent (for responding to any final requirements) The examiner ensures that all…
Read MoreWho can pay the issue fee for a patent application?
The issue fee for a patent application can be paid by several parties associated with the application. According to MPEP 1306: “The fee(s) due will be accepted from the applicant, assignee, or a registered attorney or agent, either of record or under 37 CFR 1.34.” This means that the following parties can pay the issue…
Read MoreCan an attorney or agent formally abandon my patent application?
Yes, an attorney or agent of record can formally abandon your patent application. MPEP 203.05 states that an application can be abandoned: “through formal abandonment by the applicant or by the attorney or agent of record” This means that your authorized representative has the power to formally abandon your application. However, they should only do…
Read MoreHow does the USPTO define ‘suspended or excluded practitioner’?
The USPTO refers to ‘suspended or excluded practitioners’ in MPEP 105 as “an attorney or agent who has been suspended or excluded from practice by the USPTO.” This typically refers to patent attorneys or agents who have faced disciplinary action and are temporarily or permanently barred from practicing before the USPTO. These individuals are subject…
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