Does the duty of disclosure apply to proceedings before the Patent Trial and Appeal Board?
Yes, the duty of disclosure applies to proceedings before the Patent Trial and Appeal Board (PTAB). The obligation to disclose material information extends beyond interactions with patent examiners and includes all dealings with the United States Patent and Trademark Office (USPTO). MPEP 2001.03 explicitly states: “For example, the duty would extend to proceedings before the…
Read MoreHow should information from related litigation and trial proceedings be handled?
Information from related litigation and trial proceedings, including those conducted by the Patent Trial and Appeal Board (PTAB), must be disclosed if it is material to pending related patent applications. The MPEP states: “Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding,…
Read MoreWhat is a derivation proceeding and how does it relate to improper naming of inventors?
A derivation proceeding is a legal process used to determine the true inventor(s) of a claimed invention when there is a dispute about inventorship. MPEP 2157 mentions derivation proceedings in the context of improper naming of inventors: “A situation in which an application names a person who is not the actual inventor as the inventor…
Read MoreWhat is a count in a patent interference proceeding?
In patent interference proceedings, a count is a crucial concept. The MPEP 2301.02 defines a count as follows: “Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.” In simpler terms,…
Read MoreWhat actions take place at the Board during a derivation proceeding?
Actions at the Board during a derivation proceeding are beyond the scope of MPEP Chapter 2300. The MPEP 2314 states: “Action at the Board during a derivation proceeding is beyond the scope of this Chapter.” For detailed information on Board actions during derivation proceedings, refer to the following resources: 37 CFR part 42, subpart E…
Read MoreWho is responsible for determining compliance of appeal briefs in inter partes reexamination?
As of August 17, 2010, the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) has sole responsibility for determining whether appeal briefs in inter partes reexamination comply with the relevant regulations. The MPEP 2674 states: “Effective August 17, 2010, the Board was delegated the sole responsibility for determining whether appeal…
Read MoreHow does the America Invents Act (AIA) relate to derivation proceedings?
The America Invents Act (AIA) plays a crucial role in the context of derivation proceedings. According to MPEP 2310: “Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA).” This means that: Derivation proceedings are a direct result of…
Read MoreWhat is the Patent Trial and Appeal Board (PTAB)?
The Patent Trial and Appeal Board (PTAB) is the current name for the judicial body within the USPTO that handles patent appeals. According to MPEP 1201: “Throughout this chapter, ‘Board’ is used to refer the Patent Trial and Appeal Board and its predecessor organizations, the Board of Patent Appeals and Interferences and the separate Board…
Read MoreWhat is a Notice of Appeal in patent applications?
A Notice of Appeal is a formal document filed by an applicant who is dissatisfied with the primary examiner’s decision in the second or subsequent rejection of their claims. It allows the applicant to appeal to the Patent Trial and Appeal Board (PTAB) for review of the examiner’s rejection. According to MPEP 1204, “Under 37…
Read MoreWhat is an Appeal Brief in patent examination?
An Appeal Brief is a critical document in the patent appeal process. It is submitted by the applicant to the Patent Trial and Appeal Board (PTAB) when challenging a patent examiner’s decision to reject one or more claims in a patent application. The Appeal Brief outlines the applicant’s arguments for why the examiner’s rejection should…
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