Who is subject to the Duty of Disclosure?
The Duty of Disclosure applies to several parties involved in the patent application process. According to MPEP 2001, the following individuals are subject to this duty: The inventor(s) The attorney or agent who prepares or prosecutes the application Every other person who is substantively involved in the preparation or prosecution of the application and who…
Read MoreWho has the duty to disclose information to the USPTO?
The duty to disclose information to the United States Patent and Trademark Office (USPTO) applies to various individuals involved in the patent application process. While the specific MPEP section provided doesn’t elaborate on this, it’s generally understood that this duty extends to: Inventors Patent attorneys or agents representing the applicant Anyone substantively involved in the…
Read MoreWhat is the role of attorneys or agents in disclosing information to the USPTO?
Attorneys and agents play a crucial role in disclosing information to the United States Patent and Trademark Office (USPTO) during the patent application process. According to MPEP 2002.01: “37 CFR 1.56(d) makes clear that information may be disclosed to the Office through an attorney or agent of record … and that other individuals may satisfy…
Read MoreWho is responsible for disclosing prior art from foreign applications?
According to MPEP 2001.06(a), the responsibility for disclosing prior art from foreign applications extends to “Applicants and other individuals, as set forth in 37 CFR 1.56.” This includes: Inventors Patent attorneys or agents Every person substantively involved in the preparation or prosecution of the application It’s important to note that this responsibility extends to foreign…
Read MoreHow should patent attorneys approach the use of exemplary language in claims?
Patent attorneys should approach the use of exemplary language in claims with caution. The MPEP 2173.05(d) guidance suggests that examples and preferences are better placed in the specification rather than the claims. When drafting claims: Avoid using phrases like “for example,” “such as,” or similar language that could create ambiguity about the claim scope. If…
Read MoreWho is subject to the duty of disclosure in international design applications?
According to MPEP 2920.05(f), the individuals subject to the duty of disclosure in international design applications designating the United States are defined in 37 CFR 1.56(c) as: Each inventor named in the application Each attorney or agent who prepares or prosecutes the application Every other person who is substantively involved in the preparation or prosecution…
Read MoreWho is permitted to represent others before the USPTO in patent matters?
The USPTO has specific rules about who can represent others in patent matters. According to MPEP 1702, which cites 37 CFR 11.10(a): “Only practitioners registered under § 11.6; individuals given limited recognition under § 11.9(a) or (b) or § 11.16; or individuals admitted pro hac vice as provided in § 41.5(a) or 42.10(c) of this…
Read MoreWhat advice does the USPTO give to pro se design patent applicants?
The USPTO provides specific advice to pro se design patent applicants to help them navigate the patent process. According to MPEP 1504: “With respect to pro se design applications, the examiner should notify applicant in the first Office action that it may be desirable for applicant to employ the services of a registered patent attorney…
Read MoreHow are patent attorneys or agents listed on the issued patent?
Patent attorneys or agents can be listed on the issued patent through the Fee(s) Transmittal form (PTOL-85B). According to MPEP 1309: “The Fee(s) Transmittal form (PTOL-85B) provides a space (item 2) for the person submitting the base issue fee to indicate, for printing, (1) the names of up to three registered patent attorneys or agents…
Read MoreWhat are the key considerations for patent attorneys when drafting apparatus and product claims?
When drafting apparatus and product claims, patent attorneys should consider the following key points to navigate potential restriction requirements: Clearly differentiate between apparatus and product claims Consider the relationship between the apparatus and the product it produces Draft claims that highlight the unique features of both the apparatus and the product Be prepared to argue…
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