How does the USPTO handle confidentiality of sequence data in pending applications?
The USPTO maintains strict confidentiality of sequence data in pending applications, in compliance with 35 U.S.C. 122. The MPEP clarifies: It should be noted that the Office’s database complies with the confidentiality requirement imposed by 35 U.S.C. 122. Unpublished pending application sequences are maintained in the database separately from published or patented sequences. That is,…
Read MoreHow does a renunciation of an international registration affect a pending U.S. application?
A renunciation of an international registration with respect to the United States has significant consequences for a pending nonprovisional international design application. According to MPEP 2930: “A renunciation of the international registration with respect to the designation of the United States pursuant to Article 16(1)(iv) will result in termination of a pending nonprovisional international design…
Read MoreHow are pending U.S. patent applications treated in terms of confidentiality and prior art?
Pending U.S. patent applications are generally kept confidential, but there are important exceptions and considerations: Most pending applications are preserved in confidence as per 37 CFR 1.14(a). Exceptions include published applications, reissue applications, and applications where public inspection has been granted. Applications with common assignees or inventors may be used for certain rejections, even if…
Read MoreCan patent examiners be expected to remember details of every pending file?
No, patent examiners cannot be expected to remember details of every pending file. This is emphasized in the case of Armour & Co. v. Swift & Co., as quoted in MPEP 2001.06(b): “[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that…
Read MoreWhen should an application with interfering claims be issued if examination is completed?
According to MPEP 2303.01, an application with interfering claims should be issued promptly if its examination is completed and all claims are allowable, even if there is another pending application with potentially interfering claims that has not completed examination. The MPEP provides this example: “Two applications, C and D, which are both subject to pre-AIA…
Read MoreHow are interfering claims between a patent and a pending application handled?
When a claim of an issued patent and a claim of a pending application interfere, the pending application’s claim should not be allowed to issue. Instead, an interference should be suggested. This is because an interference cannot be declared between two patents. MPEP 2303.01 provides an example: “A claim of patent A and a claim…
Read MoreWhat should inventors do if they have different pending applications with similar subject matter?
If an inventor has different applications pending which disclose similar subject matter but claim patentably indistinct inventions, they must disclose the existence of these other applications to the examiner of each involved application. MPEP 2001.06(b) states: “For example, if a particular inventor has different applications pending which disclose similar subject matter but claim patentably indistinct…
Read MoreHow are corrections handled in pending nonprovisional international design applications?
The USPTO handles corrections in pending nonprovisional international design applications on a case-by-case basis. According to MPEP 2930: “The effects of any correction in the International Register by the International Bureau pursuant to Rule 22 in a pending nonprovisional international design application shall be decided by the Office in accordance with the merits of each…
Read MoreCan the USPTO independently re-open prosecution of a pending application?
Yes, the USPTO retains the authority to independently re-open prosecution of a pending application, despite the limitations on third-party submissions. This authority is not affected by the provisions of 35 U.S.C. 122(c) and (e). The MPEP clarifies: “The provisions of 35 U.S.C. 122(c) and (e) limit a third party’s ability to protest, oppose the grant…
Read MoreWhat are the implications of the 2007 USPTO policy change for pending applications with multiple nucleotide sequences?
The 2007 USPTO policy change, which rescinded the 1996 waiver allowing multiple nucleotide sequences in a single application, has specific implications for pending applications. MPEP 803.04 states: “All pending applications are subject to the 2007 OG notice. Note, however, that supplemental restriction requirements will not be advanced in applications that have already received an action…
Read More