What is the difference between the duty to disclose under 37 CFR 1.56 and the requirements for information under 37 CFR 1.105?

The main differences are: Under 37 CFR 1.56, individuals associated with a patent application have a duty to disclose information material to patentability on their own initiative. Under 37 CFR 1.105, examiners can require information reasonably necessary for examination from parties identified in 37 CFR 1.56. The materiality threshold for 37 CFR 1.56 is higher…

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What is the duty of disclosure regarding copending United States patent applications?

Individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner information about other copending United States applications that are “material to patentability” of the application in question. This includes: Providing identification of pending or abandoned applications filed by at least one of the inventors Applications assigned to the…

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How are documents submitted by parties considered in reexamination?

In reexamination proceedings, the consideration given to documents submitted by parties (patent owner or requester) is typically limited by how well the submitting party has explained the content and relevance of those documents. According to MPEP 2656: “Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance…

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How does the doctrine of equivalents relate to making a prima facie case of equivalence?

How does the doctrine of equivalents relate to making a prima facie case of equivalence? The doctrine of equivalents and making a prima facie case of equivalence are related concepts in patent law, but they apply in different contexts. The MPEP clarifies this relationship: “The determination of equivalence for purposes of the nonstatutory (obviousness-type) double…

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How does the doctrine of equivalents affect patent examination?

While the doctrine of equivalents is primarily relevant to infringement actions, it can have implications for patent examination. MPEP 2186 provides guidance on this matter: “Accordingly, decisions involving the doctrine of equivalents should be considered, but should not unduly influence a determination under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, during ex…

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