What types of U.S. patent documents are considered prior art under AIA 35 U.S.C. 102(a)(2)?
Under AIA 35 U.S.C. 102(a)(2), three types of U.S. patent documents are considered prior art as of their effective filing date if they name another inventor: U.S. patents U.S. patent application publications World Intellectual Property Organization (WIPO) publications of international applications that designate the United States As stated in the MPEP: “AIA 35 U.S.C. 102(a)(2)…
Read MoreWhat types of items can be submitted for supplemental examination?
According to MPEP 2809, a wide range of items can be submitted for supplemental examination, including: Patents Published patent applications Non-patent literature Office actions or other documents from a foreign or domestic application Affidavits or declarations Sales receipts Copies of websites Office actions or official documents from the USPTO The MPEP states: “An “item of…
Read MoreWhat are the formatting requirements for papers filed in a supplemental examination proceeding?
According to MPEP 2807, all papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52. The MPEP states: “37 CFR 1.615(a) requires that all papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52.” This means that documents must follow specific guidelines for…
Read MoreAre protestors notified of Office actions or other documents related to their protest?
No, protestors are not notified of Office actions or other documents related to their protest. The MPEP 1901.07 clearly states: “The Office does not serve copies of Office actions or other documents mailed by the Office on protestors, and does not require applicants to serve copies of papers filed with the Office on protestors.” This…
Read MoreWhat is an “item of information” in supplemental examination?
An “item of information” is defined in MPEP 2809 as “a document submitted as part of a supplemental examination request that contains information believed to be relevant to the patent, that the patent owner is requesting the Office to consider, reconsider, or correct.” This definition is based on 37 CFR 1.605(b). Examples of items of…
Read MoreWhy is a complete history of the patent required for reexamination?
A complete history of the patent is required for reexamination to ensure that the USPTO has all relevant information to make an informed decision. The MPEP 2219 states: “A copy of any disclaimer, certificate of correction, or reexamination certificate issued for the patent must also be included, so that a complete history of the patent…
Read MoreWhat documents must be submitted with an ex parte reexamination request?
When filing an ex parte reexamination request, the following documents must be submitted: A copy of each patent or printed publication relied on or referred to in the request English language translations of any non-English documents, including all necessary and pertinent parts As stated in MPEP 2218: “It is required that a copy of each…
Read MoreWhat types of documents can be used for a pre-AIA 35 U.S.C. 102(d) rejection?
For a pre-AIA 35 U.S.C. 102(d) rejection, only specific types of documents can be used. The MPEP clearly states: “The document must be a patent or inventor’s certificate and not merely a published or laid open application.“ This means that only granted patents or inventor’s certificates can serve as the basis for a pre-AIA 35…
Read MoreWhat types of documents are processed during supplemental examination?
The MPEP 2812 provides information on the types of documents processed during supplemental examination: “All processing of requests for supplemental examination and of other papers filed in a supplemental examination proceeding and in any resulting ex parte reexamination proceeding will be performed by the staff of the Central Reexamination Unit.” Based on this statement, the…
Read MoreWhat should be included in a corrected request for supplemental examination?
A corrected request for supplemental examination must be comprehensive and include all necessary components. The MPEP states, “The corrected request must include all of the components that the patent owner intends to include as part of the request, such as, for example, the request itself, copies of each of the items of information, a copy…
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