What can be cited to the USPTO for placement into patent files?
According to MPEP 2202, two types of information can be cited to the USPTO for placement into patent files: Prior art in the form of patents or printed publications Written statements made by the patent owner concerning the scope of the claims The MPEP states: “Prior art in the form of patents or printed publications…
Read MoreWhat are the requirements for requesting access to Office records related to a contested case?
According to MPEP 2307.02, any request for access to or copies of Office records directly related to a contested case must adhere to the following requirements: The request must be filed with the Board. It must precisely identify the records being requested. For copies, the appropriate fee set under 37 CFR 1.19(b) must be included.…
Read MoreWhat is the purpose of citing written claim scope statements in patent files?
The primary purpose of citing written claim scope statements in patent files is to maintain consistency in the patent owner’s positions regarding claim scope across different proceedings. As stated in MPEP 2202: “The basic purpose for citing written claim scope statements is to ensure that the patent owner takes consistent positions regarding the scope of…
Read MoreWhat is the purpose of citing prior art in patent files?
The main purpose of citing prior art in patent files is to inform relevant parties about the existence of patents or printed publications that may affect the validity of patent claims. According to MPEP 2202: “The basic purpose for citing prior art in patent files is to inform the patent owner and the public in…
Read MoreHow are inter partes reexamination files made accessible to the public?
Inter partes reexamination files are generally accessible to the public, with certain provisions for electronic access. The MPEP 2609 provides the following information: The reexamination file is scanned to provide an electronic copy of the file, which is the Official file of the proceeding. All public access to and copying of reexamination proceedings may be…
Read MoreAre ex parte reexamination files publicly accessible?
Yes, ex parte reexamination files are generally open to the public, but with some limitations. According to MPEP 2209: “(H) All reexamination and patent files are open to the public, but see paragraph (I) below;“ “(I) The reexamination file is scanned into IFW to provide an electronic format copy of the file. All public access…
Read MoreWhat types of records are typically authorized for access in contested cases?
According to MPEP 2307.02, access and copies are ordinarily authorized for the following records in contested cases: The application file for an involved patent An involved application An application for which a party has been accorded benefit under subpart E of 37 CFR 41 The MPEP specifically states: “Access and copies will ordinarily only be…
Read MoreWhat information is required to order a patented or abandoned file through the File Ordering System (FOS)?
To order a patented or abandoned file through the File Ordering System (FOS), examiners need to provide the following information: Delivery organization (i.e., art unit) Employee number Patent number(s) and/or application number(s) of the file(s) needed The MPEP states: To place such an order, the system requires the examiner’s delivery organization (i.e. art unit), employee…
Read MoreWhat is the significance of canceled matter in U.S. patent files?
Canceled matter in U.S. patent files has specific implications for prior art considerations: Canceled matter in the application file of a U.S. patent or U.S. application publication is not considered a proper reference as of the filing date under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). However, canceled matter can be used as prior…
Read MoreHow can canceled matter from U.S. patent files be used as prior art?
While canceled matter is not a proper reference as of the filing date, it can still be used as prior art under certain conditions: According to MPEP 901.01: “Matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication…
Read More