How does an Application Data Sheet affect priority claims in pre-AIA applications?
For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims: 1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement…
Read MoreWhat is irreparable damage in the context of patent applications?
Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g): Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date…
Read MoreWhat is the requirement for stating the last known address in a pre-AIA 37 CFR 1.47 application?
In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states: ‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’ This requirement ensures that the USPTO can attempt to contact the…
Read MoreWhat should be done if a legal representative of a deceased inventor refuses to make application?
If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed: For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states: pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or…
Read MoreHow does legal incapacitation of an inventor affect the patent application process?
When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA): “In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may…
Read MoreHow does the MPEP 409.03(f) guidance apply to continuation-in-part applications?
The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f): “An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).” This…
Read MoreHow does filing a new power of attorney affect existing powers of attorney in pre-2012 applications?
In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios: New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files…
Read MoreCan a nonsigning inventor revoke a power of attorney in a pre-AIA 37 CFR 1.47 application?
In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b): A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the…
Read MoreWhat happens to nonsigning inventors in a pre-AIA 37 CFR 1.47 application?
In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the…
Read MoreCan I use a copy of an oath or declaration in a continuation-in-part (CIP) application?
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application: For CIP applications filed on or after September 16, 2012: A copy of an oath or declaration from the prior application may be used. However, the oath or declaration must comply…
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