Is there a difference in enablement requirements for U.S. and foreign prior art?
No, there is no difference in enablement requirements between U.S. and foreign prior art. The MPEP 2121 explicitly states: “There is no basis in the statute (35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality.” This principle ensures that all prior art is…
Read MoreWhat role does prior art play in assigning applications for examination?
The location of United States patents that constitute prior art plays a crucial role in assigning applications for examination. The MPEP states: “As stated in MPEP § 903.07, the location of the United States patents constituting the prior art is generally controlling over all else.” This means that the classification of existing patents related to…
Read MoreHow can I obtain copies of U.S. patents and patent application publications cited in an Office action?
The USPTO provides several options for obtaining copies of cited U.S. patents and patent application publications, as outlined in MPEP 707.05(a): Patent Center (for registered users or published applications) Patent Public Search tool (for all users) Patent and Trademark Resource Centers (PTRCs) Patent Full-Text Databases on the USPTO website E-Patent Reference (for registered users) Commercial…
Read MoreHow are copies of cited references provided to patent applicants?
According to MPEP 707.05(a), copies of cited foreign patent documents and non-patent literature are automatically furnished without charge to applicants with the Office action. However, copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants. The MPEP states: Copies of cited foreign patent documents and non-patent literature references (except…
Read MoreWhat information should be included when citing U.S. patent documents?
When citing U.S. patent documents, the following information should be included: For U.S. patent application publications: publication number, publication date, name of the applicant, class, and subclass. For U.S. patents: patent number, patent date, name of the patentee, and the relevant classification. Additionally, examiners are encouraged to cite the kind codes printed on U.S. patent…
Read MoreCan a 37 CFR 1.130(b) declaration be used for U.S. patents or patent application publications?
No, a declaration under 37 CFR 1.130(b) cannot be used for U.S. patents or U.S. patent application publications naming another inventor. MPEP 717.01(b) explicitly states: ‘A declaration or affidavit under 37 CFR 1.130(b) is not appropriate when the reference is either a U.S. patent or U.S. patent application publication of a patented or pending application…
Read MoreDo I need to submit copies of U.S. patents and patent application publications with an e-IDS?
No, you do not need to submit copies of U.S. patents and patent application publications when filing an e-IDS. The MPEP 609.07 states: Copies of U.S. patents and U.S. patent application publications cited in the IDS are not required to be submitted by the applicants with the e-IDS. However, it’s important to note that for…
Read MoreHow should U.S. patents and patent application publications be listed in an IDS?
U.S. patents and U.S. patent application publications must be listed separately from other documents in an Information Disclosure Statement (IDS). This requirement is specified in 37 CFR 1.98(a)(1). The MPEP states: ‘37 CFR 1.98(a)(1) specifically requires that U.S. patents and U.S. patent application publications be listed separately from the citations of other documents. The separation…
Read MoreWhat are the requirements for listing U.S. patents in an Information Disclosure Statement?
When listing U.S. patents in an Information Disclosure Statement (IDS), the following requirements must be met: List each patent by document number Include the name of the patentee Provide the issue date According to MPEP 609.04(a): Each U.S. patent listed in an information disclosure statement must be identified by patentee, patent number, and issue date.…
Read MoreAre copies of U.S. patents required when submitting an IDS?
Generally, copies of U.S. patents and U.S. patent application publications listed in an Information Disclosure Statement (IDS) are not required unless specifically requested by the Office. According to the MPEP: ‘There is no requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS unless required by the Office.‘…
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