What is the examiner’s duty regarding classification when an application is passed to issue?
When an application is passed to issue, the primary examiner has specific duties regarding classification: Personally review the classification picture of the application in the issuing classification boxes on the Issue Classification form. Provide their full name in the “Primary Examiner” space to show that the review has been completed. For examiners with full signatory…
Read MoreHow can I ensure the correct assignee is listed on a patent?
To ensure the correct assignee is listed on a patent, you should: Complete item 3 of the Fee(s) Transmittal Form (PTOL-85B) with the correct assignment data. If the assignee is not the applicant of record, file an appropriate request under 37 CFR 1.46(c) before or with the payment of the issue fee. As stated in…
Read MoreCan patent issuance be deferred after a patent number and issue date are assigned?
No, once a patent number and issue date are assigned, deferring issuance is no longer possible through the standard deferment process. The MPEP clearly states: “Issuance of a patent cannot be deferred after an allowed application receives a patent number and issue date unless the application is withdrawn from issue under 37 CFR 1.313(b) or…
Read MoreWhat happens if an erroneous citation is found in a patent application ready for issue?
When an erroneous citation is discovered in a patent application that is otherwise ready for issue, the examiner is required to take specific action. According to MPEP 1302.12: In any application, otherwise ready for issue, in which an erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct…
Read MoreWhat happens if I don’t provide assignee information on the PTOL-85B form?
If you don’t provide assignee information on the Fee(s) Transmittal Form (PTOL-85B), the patent will be issued to the applicant of record. As stated in MPEP 1481.01: “Unless an assignee’s name and address are identified in the appropriate space for specifying the assignee, (i.e., item 3 of the Fee(s) Transmittal Form PTOL-85B), the patent will…
Read MoreCan a recorded terminal disclaimer be withdrawn?
A recorded terminal disclaimer may be withdrawn before the application issues as a patent or before a reexamination certificate issues. However, after a patent or reexamination certificate issues, a recorded terminal disclaimer will not be nullified. The MPEP states: If timely requested, a recorded terminal disclaimer may be withdrawn before the application in which it…
Read MoreWhat is the procedure when claims stand allowed after a Board decision?
When claims stand allowed after a Board decision, the following procedure applies: The appellant is not required to file a reply. The examiner issues the application or ex parte reexamination certificate on the claims which stand allowed. The examiner may cancel rejected claims by examiner’s amendment. The MPEP states: The appellant is not required to…
Read MoreWhat is the significance of MPEP § 1302.12 in relation to reference citations?
MPEP 707.05(c) refers to MPEP § 1302.12 in the context of citing references: See MPEP § 1302.12. MPEP § 1302.12 provides guidance on listing references on the patent. This section is particularly relevant when preparing an application for issuance as a patent. It ensures that all pertinent references are properly documented and available for future…
Read MoreWhat is the process for correcting citation errors in applications ready for issue?
For patent applications that are otherwise ready for issue but contain citation errors, the USPTO has a specific process for correction. As stated in MPEP 707.05(g): In any application otherwise ready for issue, in which the erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation…
Read MoreWhen do materials submitted under MPEP § 724.02 become publicly available?
Materials submitted under MPEP § 724.02 may become publicly available under different circumstances: After publication of the application under 35 U.S.C. 122(b)(1), if no petition to expunge was filed or if such a petition was denied. Upon abandonment of the application, if no petition to expunge was filed. Upon issuance of the application as a…
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