How does the best mode requirement apply in reexamination proceedings?
How does the best mode requirement apply in reexamination proceedings? The application of the best mode requirement in reexamination proceedings is an important consideration. MPEP 2280 provides guidance on this matter: “The best mode requirement is not applicable to reexamination proceedings filed on applications with an effective filing date on or after September 16, 2012,…
Read MoreWhat is the significance of the “Date of Completion of all 35 U.S.C. 371 Requirements”?
The “Date of Completion of all 35 U.S.C. 371 Requirements” is significant for patent term adjustment in pre-AIA national stage applications. The MPEP explains: “The “Date of Completion of all 35 U.S.C. 371 Requirements” included on the NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) in pre-AIA national…
Read MoreIs a daytime telephone number required for patent applications filed before September 16, 2012?
While not strictly required, the USPTO recommends providing a daytime telephone number for patent applications filed before September 16, 2012. According to MPEP 403.01(b): Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written…
Read MoreHow is the correspondence address specified in a patent application filed before September 16, 2012?
For applications filed before September 16, 2012, the correspondence address must be specified in one of two ways: In an application data sheet (37 CFR 1.76) In a clearly identifiable manner in any paper submitted with the application filing As stated in MPEP 403.01(b): Pre-AIA 37 CFR 1.33(a) provides for an applicant to supply an…
Read MoreWho can change the correspondence address in a pre-AIA patent application?
The ability to change the correspondence address in a pre-AIA patent application depends on whether a 37 CFR 1.63 oath or declaration has been filed: If no oath or declaration has been filed, the correspondence address can be changed by: The party who filed the application Any patent practitioner named in the transmittal papers A…
Read MoreWhat happens if multiple correspondence addresses are specified in a pre-AIA patent application?
When multiple correspondence addresses are specified in a pre-AIA patent application, the USPTO follows a specific order to select which address to use. According to MPEP 403.01(b): Where more than one correspondence address is specified, the Office will select one of the correspondence addresses for use as the correspondence address. This is intended to cover,…
Read MoreHow does filing a 37 CFR 1.63 oath or declaration affect the correspondence address in pre-AIA applications?
The filing of a 37 CFR 1.63 oath or declaration in pre-AIA applications has significant implications for the correspondence address. According to MPEP 403.01(b): Where a correspondence address was set forth or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of a pre-AIA 37 CFR 1.63 oath or declaration), that correspondence address…
Read MoreHow does the USPTO handle applications filed before September 16, 2012?
How does the USPTO handle applications filed before September 16, 2012? Applications filed before September 16, 2012, are subject to different correspondence rules. As stated in MPEP 403.01(a): For applications filed before September 16, 2012, pre-AIA 37 CFR 1.33(a) applies. This means that for these older applications, the correspondence rules and procedures outlined in pre-AIA…
Read MoreHow can an associate power of attorney be given in applications filed before September 16, 2012?
How can an associate power of attorney be given in applications filed before September 16, 2012? For applications filed before September 16, 2012, an associate power of attorney can be given by a principal attorney or agent to one or more associate attorneys or agents. According to MPEP 402.02(b): “For applications filed before September 16,…
Read MoreHow does the best mode requirement affect benefit claims for applications filed before the AIA?
For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05: ‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject…
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