What are the requirements for a submission of patents and publications to be included in the reexamination certificate?
For a submission of patents and publications to be included in the reexamination certificate, it must meet specific requirements. MPEP 2257 outlines these requirements: “A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:” By…
Read MoreCan a reissue application be used to submit previously withheld information?
Can a reissue application be used to submit previously withheld information? While a reissue application can be used to submit previously withheld information, it cannot cure or remedy the original withholding if it constituted inequitable conduct. The MPEP 2012 states: “In cases where an applicant seeks to use a reissue application to submit previously withheld…
Read MoreWhat is the purpose of limiting prior art submissions during reexamination?
The limitation on prior art submissions during reexamination proceedings serves a specific purpose. As stated in MPEP 2204: “The purpose of this rule is to prevent harassment of the patent owner due to frequent submissions of prior art citations during reexamination proceedings.” This rule helps maintain the integrity of the reexamination process by preventing potential…
Read MoreCan prior art be submitted during a reexamination proceeding?
While prior art can generally be submitted during the enforceability period of a patent, there are specific rules for submissions during reexamination proceedings. According to MPEP 2204: “While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order…
Read MoreWhat are the requirements for submitting prior art after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
Submitting prior art after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) requires meeting specific conditions due to the statutory mandate for “special dispatch” in reexamination proceedings. The MPEP states: “[T]he submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have…
Read MoreCan patent examiners submit prior art under 35 U.S.C. 301?
No, patent examiners are not permitted to submit prior art under 35 U.S.C. 301 on their own initiative. MPEP 2203 clearly states: Patent examiners should not, at their own initiative, create a submission under 35 U.S.C. 301 and place it in a patent file or forward it for placement in the patent file. The MPEP…
Read MoreHow does the period of enforceability affect prior art submissions in patent reexamination?
The period of enforceability plays a crucial role in determining when prior art can be submitted for patent reexamination. According to MPEP 2204: “The period of enforceability is determined by adding 6 years to the date on which the patent expires.” This means that prior art can be submitted even after the patent has expired,…
Read MoreWhat happens if a submission of prior art or Section 301 written statements lacks proper proof of service?
If a person other than the patent owner submits prior art or Section 301 written statements without proper proof of service, the submission will not be entered into the patent file. The MPEP clearly states: “A submission by a person other than the patent owner that fails to include proper proof of service as required…
Read MoreCan affidavits or declarations accompany a 37 CFR 1.501 submission?
Yes, affidavits or declarations can accompany a 37 CFR 1.501 submission. According to MPEP 2205: “Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail.“ Examples of acceptable accompanying documents include: A commercial success affidavit tied…
Read MoreIs there a fee required for submissions under 37 CFR 1.501?
No, there is no fee required for submissions under 37 CFR 1.501. According to MPEP 2205: “No fee is required for the submission under 37 CFR 1.501.“ This means that anyone wishing to submit prior art or patent owner written statements under this rule can do so without incurring any official fees. This policy encourages…
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