How are corrections to factual information handled in Supplemental Examination?
When a supplemental examination request includes an item of information limited to the correction of factual information, it should also include one or more additional items of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. The MPEP provides an example: The request includes a…
Read MoreHow can inventorship be corrected in an international design application?
Inventorship in an international design application can be corrected according to the provisions outlined in 37 CFR 1.48(a). The MPEP 2920.01 states: “Inventorship may be corrected in accordance with the provisions of 37 CFR 1.48(a). See MPEP § 602.01(c) et seq. for a detailed discussion of correction of inventorship, correcting or updating the name of…
Read MoreWhat happens if new drawing sheets are not timely filed in response to a Quayle action during reexamination?
If new drawing sheets are not timely filed in response to a Quayle action during reexamination, the reexamination certificate will be issued without incorporating the proposed changes. The MPEP states: “If the new sheets of drawings are not timely filed in response to the Quayle action, the reexamination certificate will be issued with drawings that…
Read MoreWhat happens if a requester fails to remedy defects in an ex parte reexamination request?
If a requester fails to remedy defects in an ex parte reexamination request after receiving a notice of non-compliance, the request will not be granted a filing date. The MPEP 2227 states: “If after receiving a ‘Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,’ the requester does not remedy the defects…
Read MoreWhat precautions should be taken when claiming priority to a pre-AIA application?
When claiming priority to a pre-AIA application (filed before March 16, 2013) in a new application filed on or after March 16, 2013, special care must be taken. The MPEP 2159.03 advises: “For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the…
Read MoreCan an assignee revoke a previous power of attorney in a patent case?
Yes, an assignee can revoke a previous power of attorney in a patent case. According to MPEP 2560, “the assignee may revoke a previous power of attorney.” This means that when the ownership of a patent or patent application is transferred, the new owner (assignee) has the authority to revoke any existing power of attorney…
Read MoreHow are broken lines and coloring used in international design applications?
In international design applications, broken lines and coloring can be used to indicate matter shown in a reproduction for which protection is not sought. According to MPEP 2920.04(b): “In addition to the use of broken or dotted lines to indicate matter shown in a reproduction for which protection is not sought, Administrative Instruction 403 permits…
Read MoreCan I make a biological material deposit after receiving a Notice of Allowance?
Yes, you can make a biological material deposit after receiving a Notice of Allowance, but there are specific requirements and time constraints. According to MPEP 2406: “Where a deposit is needed to satisfy the requirements of 35 U.S.C. 112 and it is made during the pendency of the application, it must be made no later…
Read MoreAre the forms mentioned in MPEP 2595 mandatory for maintenance fee submissions?
While the forms mentioned in MPEP 2595 are recommended, they are not strictly mandatory. The MPEP uses the word “suggested” when referring to these forms: “The following forms are suggested when submitting a maintenance fee or establishing a fee address for maintenance fee purposes.” However, using these official forms is highly recommended as they ensure…
Read MoreHow can a depository apply for recognition by the USPTO?
A depository seeking recognition by the USPTO must follow the procedure outlined in 37 CFR 1.803(b). The depository must send a communication to the Commissioner that includes: The name and address of the depository Detailed information about its capacity to comply with the requirements A statement of intent to be available for deposits under the…
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