How does the USPTO handle submissions from foreign courts?
The United States Patent and Trademark Office (USPTO) has specific guidelines for handling submissions from foreign courts. According to MPEP 2207: “It is to be further noted that 35 U.S.C. 290 is directed to ‘courts of the United States.’ Accordingly, any submission of papers from a court outside the United States (a foreign jurisdiction) will…
Read MoreWhere does the USPTO send correspondence regarding supplemental examination?
The USPTO sends correspondence regarding supplemental examination to the official correspondence address of the patent. MPEP 2804 states: “Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address…
Read MoreWhat happens if a reexamination proceeding is terminated without a certificate?
If a reexamination proceeding is terminated without a certificate, the following actions occur: The reexamination file is stored in the storage area for terminated reexamination files. The patent file is returned to the storage area for patented cases. The MPEP 2278 states: “The reexamination file will then be forwarded to the Office of Patent Legal…
Read MoreHow are prior art submissions handled after an inter partes reexamination order is issued?
Prior art submissions made after an inter partes reexamination order is issued are handled differently than those submitted before the order. According to MPEP 2646: “Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination are stored until the reexamination is concluded. Note 37 CFR 1.902.…
Read MoreHow is prior art handled in ex parte reexamination after the order is issued?
The handling of prior art in ex parte reexamination after the order is issued is governed by specific rules. According to MPEP 2246: Prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded. After the reexamination proceeding is…
Read MoreWhat limitations are placed on submissions to patent files regarding court decisions?
The USPTO places several limitations on submissions to patent files regarding court decisions and related documents. According to MPEP 2207, these limitations include: Non-merit decisions (e.g., on motions for a new venue or discovery date) are not entered and may be expunged if mistakenly added. Papers providing a party’s arguments (e.g., a memorandum supporting summary…
Read MoreWhat happens to the patent file after a Certificate of Extension is issued?
After a Certificate of Extension is issued, several changes occur to the patent file: The certificate is added to the official patent file. Original papers from the extension application are transferred to the official patent file. A copy of the certificate is added to the patent electronic database. The patent is added to the list…
Read MoreWhat is the process for entering court decisions into a patent file?
The process for entering court decisions into a patent file involves several steps and parties within the U.S. Patent and Trademark Office (USPTO). According to MPEP 2207: The Solicitor’s Office processes notices required by 35 U.S.C. 290 received from clerks of various U.S. courts. These notices are entered into the patent file. The USPTO also…
Read MoreWhat types of court decisions can be entered into a patent file?
The U.S. Patent and Trademark Office (USPTO) accepts various types of court decisions for entry into patent files. According to MPEP 2207, these include: Final court decisions (even if still appealable) Decisions to vacate Decisions to remand Decisions on the merits of patent claims The MPEP states: The decisions from litigation or other proceedings include…
Read MoreCan parties submit copies of copending reexamination proceedings to a patent file?
No, parties are not permitted to submit copies of copending reexamination proceedings or applications to a patent file. The MPEP 2207 clearly states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a…
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