What does “patents are relevant as prior art for all they contain” mean?
This principle means that patents can be used as prior art references beyond just the specific inventions they describe. As stated in MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of…
Read MoreWhen can later publications be used as references in patent examination?
Later publications can be used as references in patent examination under specific circumstances, primarily to show universal facts or scientific truisms. The MPEP 2124 provides several examples: To show that undue experimentation would have been required as of the filing date To demonstrate whether a parameter was critical or not To prove that a statement…
Read MoreHow are references from the original patent handled in a reissue application?
In a reissue application, the examiner should consider all references cited during the original patent prosecution. These references should be listed on a PTO-892 form if they are cited or applied again in the reissue application. However, some references may no longer be relevant due to changes in claim scope and may not need to…
Read MoreWhat is the purpose of the PTO-892 form in reissue applications?
The PTO-892 form, also known as the “Notice of References Cited,” serves an important purpose in reissue applications: It lists references cited or applied by the examiner during the reissue application examination. It includes relevant references from the original patent prosecution that are still applicable to the reissue claims. It helps maintain a clear record…
Read MoreWhat are the requirements for submitting an IDS in a reissue application?
When submitting an Information Disclosure Statement (IDS) in a reissue application, applicants must comply with 37 CFR 1.97 and 1.98. The requirements for document copies have been simplified: Copies of U.S. patents or U.S. patent application publications are not required unless specifically requested by the Office. For foreign patents, publications, and other information, copies are…
Read MoreWhat documents are used to list references in a patent application?
References in a patent application are typically listed on two main documents: Form PTO-892 (Notice of References Cited) Form PTO/SB/08 (Information Disclosure Statement) As stated in MPEP 1302.12: All references which have been cited by the examiner during the prosecution, including those appearing in Patent Trial and Appeal Board decisions or listed in the reissue…
Read MoreWhat is the correct way to cite an A.P.C. published application?
The MPEP provides a specific format for citing A.P.C. published applications. The correct citation format is as follows: A.P.C. Application of [Inventor Name], Ser. No. [Serial Number], Published [Publication Date] This format ensures that the document is properly identified as an A.P.C. published application rather than a patent, and includes all necessary information for reference.…
Read MoreWhat is the applicant’s responsibility regarding references in a reissue application?
In a reissue application, the applicant is not required to resubmit all references cited in the original patent. However, applicants have an ongoing duty to disclose material information to the USPTO. Specifically: MPEP § 1406 states: The Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the references cited…
Read MoreHow are copies of cited references provided to patent applicants?
According to MPEP 707.05(a), copies of cited foreign patent documents and non-patent literature are automatically furnished without charge to applicants with the Office action. However, copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants. The MPEP states: Copies of cited foreign patent documents and non-patent literature references (except…
Read MoreWhat should patent examiners include about references not used for rejection?
When dealing with references that are not used as a basis for rejection, patent examiners are advised to provide brief information about their relevance. MPEP 707.05(c) recommends: It is recommended that the pertinent features of references which are not used as a basis for rejection be pointed out briefly. This practice helps applicants understand the…
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