What is claim sorting in patent interference proceedings?
Claim sorting in patent interference proceedings refers to the process of organizing and consolidating claims from multiple related applications to streamline the examination process and manage potential interferences. The Manual of Patent Examining Procedure (MPEP) Section 2304.01(d) states: “If an applicant has several related applications with interfering claims intermixed with claims that do not interfere,…
Read MoreHow can an interference involving a patent under reexamination be suspended?
An interference involving a patent under reexamination can be suspended through a motion decided by Administrative Patent Judges. According to MPEP 1002.02(g): “5. Motion to suspend an interference involving a patent under ex parte or inter partes reexamination. 37 CFR 1.565(e) and 1.993.” This process is governed by 37 CFR 1.565(e) for ex parte reexamination…
Read MoreWhat were Defensive Publications in the patent system?
Defensive Publications were a type of USPTO publication for provisionally abandoned patent applications. According to MPEP 901.06(d): “Defensive Publications (the O.G. defensive publication and search copy) are U.S. Patent and Trademark Office publications of provisionally abandoned applications wherein the applicant retains their rights to an interference for a limited time period of 5 years from…
Read MoreCan I request a Certificate of Correction if my patent is involved in an interference or trial?
If your patent is involved in an interference or a trial before the Patent Trial and Appeal Board (PTAB), there are specific requirements for requesting a Certificate of Correction. The MPEP states: “If the patent is involved in an interference or a trial before the Patent Trial and Appeal Board, a certificate of correction under…
Read MoreHow does the USPTO view opinion testimony in patent interference cases?
The USPTO’s view on opinion testimony in patent interference cases has evolved over time. The MPEP 716.09 references a significant case that reexamined this issue: Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which reexamines the rationale on which In re Oppenauer was based in light of the Federal Rules of Evidence. The…
Read MoreWhat are ‘special cases’ in patent examination?
‘Special cases’ in patent examination refer to applications that are advanced out of turn for examination. According to MPEP 708.01, these include: Applications deemed of peculiar importance to a branch of public service Applications made special through petitions or prioritized examination requests Reissue applications, especially those involved in stayed litigation Applications remanded by appellate tribunals…
Read MoreWhat happens if a nonsigning inventor believes they are the sole inventor?
If a nonsigning inventor believes they are the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application where they are named as a joint inventor, they have a specific course of action available to them. According to MPEP 409.03(i): “If a nonsigning inventor feels that he or she is the sole…
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