What should be included in a petition to the USPTO Director?
A well-prepared petition to the USPTO Director should include several key elements: A clear statement of the relief requested The facts and circumstances supporting the petition The legal basis for the requested relief Any evidence supporting the petition The appropriate petition fee, if required It’s important to note that 37 CFR 1.4(c) requires a separate…
Read MoreHow should applicants update the USPTO about ongoing litigation during the reissue process?
Applicants have an ongoing duty to keep the USPTO informed about litigation involving the patent under reissue. The MPEP provides guidance on this matter: “The status of the litigation should be updated in the reissue application as soon as significant events happen in the litigation.” This means that applicants should: Promptly inform the USPTO of…
Read MoreHow does unity of invention practice differ between national applications under 35 U.S.C. 111(a) and national stage applications under 35 U.S.C. 371?
The unity of invention practice differs as follows: For national applications under 35 U.S.C. 111(a): These are subject to U.S. restriction practice under 37 CFR 1.141-1.146. For national stage applications under 35 U.S.C. 371: These are subject to unity of invention practice under 37 CFR 1.475 and 1.499. MPEP 1896 states: “U.S. national applications filed…
Read MoreWhat types of petitions can be filed with the Director of the USPTO?
The USPTO allows for several types of petitions to be filed with the Director: Petitions under 37 CFR 1.181: General petitions to the Director Petitions under 37 CFR 1.182: For questions not specifically provided for in the regulations Petitions under 37 CFR 1.183: For suspension of rules in extraordinary situations It’s important to note that…
Read MoreWhat is the time limit for requesting rectification of an obvious mistake in a PCT application?
The time limit for requesting rectification of an obvious mistake in a PCT application is 26 months from the priority date. This is clearly stated in MPEP 1836, which cites PCT Rule 91.2: “A request for rectification under Rule 91.1 shall be submitted to the competent authority within 26 months from the priority date.” It’s…
Read MoreHow does litigation or a PTAB trial affect the time extensions for reissue applications?
For reissue applications being examined during litigation or PTAB trials, or after such proceedings have been stayed or dismissed: Applicants are normally given 2 months to reply to Office actions This 2-month period can only be extended upon showing clear justification under 37 CFR 1.136(b) The provisions of 37 CFR 1.136(a) for automatic extensions are…
Read MoreCan a reissue application be used to provoke an interference?
Yes, a reissue application can be used to provoke an interference under certain circumstances. According to the MPEP, In appropriate circumstances, a reissue application subject to pre-AIA 35 U.S.C. 102(g) (first to invent) may be placed into interference with a patent or pending application. However, there are specific conditions that must be met: The reissue…
Read MoreWhat is the process for rectifying obvious mistakes in a PCT application?
The process for rectifying obvious mistakes in a PCT application is outlined in PCT Rule 91. An applicant can request rectification of an obvious mistake in the international application or another document submitted by the applicant. The request must be submitted to the competent authority within 26 months from the priority date. As stated in…
Read MoreWhat are the priority claim requirements for a national application under 35 U.S.C. 111(a) versus a national stage application under 35 U.S.C. 371?
The priority claim requirements differ as follows: For a national application under 35 U.S.C. 111(a): The claim for priority must be filed within the later of four months from the actual filing date or sixteen months from the prior foreign application filing date, as per 37 CFR 1.55(d). For a national stage application under 35…
Read MoreWhat are the requirements for filing a Pre-Appeal Brief Review Request?
To file a Pre-Appeal Brief Review Request, applicants must meet several requirements: File a notice of appeal in compliance with 37 CFR 41.31 Submit the request with the notice of appeal and before filing an appeal brief Use Form PTO/AIA/33, “Pre-Appeal Brief Request for Review” (optional) Include arguments in a separate paper titled “Pre-Appeal Brief…
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