What factors are considered for making a requirement for information prior to the first action on the merits?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. According to MPEP 704.11(b), several factors are considered when determining…

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Can an examiner require information about prior art cited in an information disclosure statement (IDS)?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, an examiner can require information about prior art cited…

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What happens if an applicant disqualifies a reference under AIA 35 U.S.C. 102(b)(2)(C) but the reference still qualifies as prior art under AIA 35 U.S.C. 102(a)(1)?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Even if an applicant successfully disqualifies a reference under AIA…

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What is derivation in the context of pre-AIA patent law?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. In the context of pre-AIA patent law, derivation refers to…

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