How does the USPTO treat replacement deposits?

The United States Patent and Trademark Office (USPTO) applies a rebuttable presumption of identity between the replacement deposit and the original deposit. This treatment is outlined in MPEP 2407.04, which states: “37 CFR 1.805(e) indicates that the Office will apply a rebuttable presumption of identity between the replacement deposit and an original deposit where a…

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How does the USPTO treat admissions under the AIA?

The United States Patent and Trademark Office (USPTO) continues to treat admissions by applicants as prior art under the America Invents Act (AIA). This approach is consistent with pre-AIA practice. According to MPEP 2152.03: “The Office will continue to treat admissions by the applicant as prior art under the AIA.” This means that any statement…

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What is the Office policy regarding reexamination when there has been a federal court decision on the merits of a patent?

The Office policy regarding reexamination when there has been a federal court decision on the merits of a patent is outlined in MPEP § 2642 and MPEP § 2686.04. These sections provide guidance on how to handle requests for reexamination and the subsequent examination phase in such cases. According to MPEP § 2659, “Claims finally…

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What activities are included in USPTO reexamination time reporting?

The MPEP 2238 provides guidance on the range of activities that should be included in time reporting for reexaminations: “Even activities such as supervision, copying, typing, and docketing should be included.” This means that USPTO personnel should report time spent on both direct examination tasks and supporting activities related to reexamination proceedings. To learn more:…

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How does the USPTO recommend rejecting an omnibus claim?

The United States Patent and Trademark Office (USPTO) provides specific guidance for rejecting omnibus claims. According to MPEP 2173.05(r): “Such a claim can be rejected using form paragraph 7.35. See MPEP § 2175.” Form paragraph 7.35 is a standardized template that patent examiners can use to reject omnibus claims. It typically cites the relevant statute…

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How does the USPTO determine if a document is publicly accessible for patent purposes?

The USPTO determines public accessibility of a document for patent purposes based on several factors outlined in MPEP 2128.01. Key considerations include: The extent of dissemination The ease with which the document can be located The intended audience’s ability to find the document The MPEP provides guidance: “Whether a document is ‘publicly accessible’ is determined…

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How does the USPTO communicate defective papers in ex parte reexamination?

The USPTO uses specific forms to communicate defective papers in ex parte reexamination, depending on who requested the reexamination. According to MPEP 2296, there are two forms for this purpose: PTOL-475: Notice of Defective Paper In Ex Parte Reexamination – Third Party Requested PTO-2311: Notice of Defective Paper in Ex Parte Reexamination – Patent Owner…

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