Who is responsible for adding the mailing date to USPTO Office actions?
While MPEP 707.11 does not explicitly state who is responsible for adding the mailing date, it provides guidance on the process: “The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the action after it has been signed by the authorized signatory…
Read MoreWhat happens if the required information is unknown or not readily available?
If the information required by the USPTO is unknown or not readily available to the party from which it was requested, the applicant may still provide a complete reply. According to MPEP 704.10: Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is…
Read MoreHow should an applicant respond to a requirement for information?
When responding to a requirement for information, applicants should: Provide the requested information completely and accurately Respond with candor and good faith as required by 37 CFR 1.56 If an item is unknown or cannot be readily obtained, state this in the response Provide copies of documents as requested, or if the document is large,…
Read MoreWhat happens if examiners disagree on a Patentability Report?
When examiners disagree on a Patentability Report, there are established procedures to resolve the conflict. According to MPEP 705.01(a): “If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot…
Read MoreWhat are the requirements for making a second or subsequent action final in patent examination?
According to MPEP 706.07, a second or any subsequent action on the merits can be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37…
Read MoreWhat are the requirements for a valid 37 CFR 1.130(b) declaration?
What are the requirements for a valid 37 CFR 1.130(b) declaration? A valid 37 CFR 1.130(b) declaration must meet several requirements to effectively establish prior public disclosure. According to MPEP 717.01(b), the declaration should: Be made by the inventor, a joint inventor, or another who obtained the subject matter from them Establish that the subject…
Read MoreIs a requirement for information under 37 CFR 1.105 considered an Office action for patent term adjustment purposes?
Yes, a requirement for information under 37 CFR 1.105 is considered an Office action for patent term adjustment purposes. MPEP ยง 704.13 explicitly states: A requirement for information under 37 CFR 1.105 is an Office action under 35 U.S.C. 132 for patent term adjustment purposes. This means that the issuance of a requirement for information…
Read MoreCan a requirement for information be made with a final rejection?
Generally, a requirement for information should not be made with or after a final rejection. The MPEP 704.11(b) states: “Ordinarily, a request for information should not be made with or after a final rejection.” This guideline exists because the reasonable necessity criteria for a requirement for information implies further action by the examiner. When a…
Read MoreHow does the Requirement for Information relate to the Duty of Disclosure?
The Requirement for Information under 37 CFR 1.105 is distinct from, but related to, the Duty of Disclosure under 37 CFR 1.56. As stated in MPEP 704.12(a): The requirement for information is an inquiry as to whether there is information relevant to examination. The duty of disclosure is broader and requires submission of material information,…
Read MoreCan an examiner make a requirement for information after the first Office action?
Yes, an examiner can make a requirement for information after the first Office action. According to MPEP 704.14(a): Quote: “A requirement for information may be made on Form PTOL-326 and should include why the requirement is being made and how the required information will be used.” The MPEP does not restrict the timing of such…
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