Are reserved MPEP sections common?
Reserved sections are relatively common in the MPEP, especially for section numbers that are being held for future use or that previously contained content that was moved. A quick scan of the MPEP Chapter 200 shows several reserved sections, such as: Section 203.07 [Reserved] Sections 204-209 [Reserved] Section 212 [Reserved]
Read MoreWhat is required to establish ownership for an assignee to take action in a patent application filed before September 16, 2012?
To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required: The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records. A…
Read MoreHow is ownership established in continuing patent applications filed before September 16, 2012?
For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways: The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be…
Read MoreWho can take action as an assignee in a patent application filed on or after September 16, 2012?
According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are: A single assignee who is the assignee of the entire right, title and interest in the application or patent, or All partial assignees, or all partial assignees and inventors who have not assigned their rights, who…
Read MoreWhen must ownership be established for an assignee to take action in a patent matter?
Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee: Signs a request for status of an application Gives a power to inspect an application Appoints its own registered attorney or agent to prosecute an application Signs a disclaimer under 37 CFR 1.321 Consents to the filing of a reissue application Consents to…
Read MoreWhy is determining who should direct prosecution important in patent applications?
MPEP 303 highlights the importance of determining who should direct prosecution: “When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303) Determining who should direct prosecution is crucial because:…
Read MoreCan examiners initiate interview requests with patent practitioners?
Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution: The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the…
Read MoreWhat is a ‘file wrapper’?
A ‘file wrapper’ refers to the official record of proceedings in the United States Patent and Trademark Office (USPTO) for a particular patent application or granted patent. It contains all the documents and correspondence related to the prosecution of the application or maintenance of the patent. This includes the original application, Office actions, applicant responses,…
Read MoreHow can a patent application become formally abandoned?
A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant…
Read MoreWhat happens if an applicant fails to take appropriate action during patent prosecution?
If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of…
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