How do interference and derivation proceedings affect patent term adjustment?
Interference and derivation proceedings can impact patent term adjustment (PTA) in two ways, as outlined in MPEP 2731: They can create a basis for PTA under 35 U.S.C. 154(b)(1)(C)(i) They can reduce the amount of B-delay awarded under 35 U.S.C. 154(b)(1)(B)(ii) Regarding the first point, MPEP 2731 states: “37 CFR 1.703(c) pertains to the provisions…
Read MoreWhat is an Information Disclosure Statement (IDS) in patent prosecution?
An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right…
Read MoreHow is the A-delay calculated for patent term adjustment?
The A-delay is calculated based on the USPTO’s failure to meet certain deadlines during patent prosecution. According to MPEP 2731, there are several components to the A-delay: Failure to issue a first Office action within 14 months of filing Failure to respond to a reply within 4 months Failure to act on an application within…
Read MoreWhat are the general practices for handling potential interferences in patent applications?
The MPEP outlines several general practices for handling potential interferences in patent applications subject to pre-AIA 35 U.S.C. 102(g). These include: Practice 1: Consult an Interference Practice Specialist (IPS) when a potential interference is identified. Practice 2: When one application is in condition for allowance and another is not, generally allow the first application. Practice…
Read MoreWhat is the time period for responding to a final rejection in a reexamination?
The statutory period for responding to a final rejection in a reexamination proceeding is typically two months. However, the MPEP provides for an automatic extension in certain cases: In any ex parte reexamination proceeding, including third party requested reexaminations, patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, the…
Read MoreWhat happens after a final rejection in a reexamination proceeding?
After a final rejection in a reexamination proceeding, the patent owner’s rights to unrestricted further prosecution are limited. The MPEP states: Once a final rejection that is not premature has been entered in a reexamination proceeding, the patent owner no longer has any right to unrestricted further prosecution. Amendments submitted after final rejection are subject…
Read MoreWhat happens to examiner actions when the Board assumes jurisdiction?
When the Board assumes jurisdiction over a patent application or proceeding involving an issued patent, it significantly impacts the examiner’s ability to take action. The MPEP 2312 clearly states: “Where the Board has assumed jurisdiction of an application or proceeding involving an issued patent no action by the examiner may be taken until jurisdiction has…
Read MoreHow does the duty of disclosure apply to foreign patent attorneys?
The duty of disclosure applies equally to foreign patent attorneys representing applicants for U.S. patents. This is clearly stated in MPEP 2001.06(a), which cites the Gemveto Jewelry Co. v. Lambert Bros., Inc. case: “Foreign patent attorneys representing applicants for U.S. patents through local correspondent firms surely must be held to the same standards of conduct…
Read MoreWhat are the potential consequences of including “use” claims in a U.S. patent application?
Including “use” claims in a U.S. patent application can have several potential consequences: Rejection under 35 U.S.C. 112(b): “Use” claims are often considered indefinite and may be rejected. Delays in prosecution: Addressing rejections can prolong the patent examination process. Increased costs: Revising claims and responding to office actions can lead to additional attorney fees. Narrower…
Read MoreWhat are the consequences of late disclosure of information to the USPTO?
Late disclosure of information to the USPTO can have several consequences: Reduced patent strength: The MPEP notes, The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. This suggests that late disclosure may weaken the patent’s presumption of validity. Potential patent term…
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