What 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…

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What 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…

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What 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…

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How 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…

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What 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…

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