How should a Sequence Listing be formatted?
A Sequence Listing must be formatted according to specific standards set by the USPTO. As stated in MPEP 2421.01: 37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part, a disclosure of the nucleotide and/or amino acid…
Read MoreWhat are the restrictions on submitting copending reexamination proceedings and applications?
The USPTO has specific restrictions regarding the submission of copending reexamination proceedings and applications during inter partes reexamination. MPEP 2686 states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying…
Read MoreWhat information must be included in a protest under 37 CFR 1.291?
A protest under 37 CFR 1.291 must include specific information to be considered by the USPTO. According to MPEP 1901, the protest must include: A listing of the patents, publications, or other information relied upon; A concise explanation of the relevance of each listed item; A copy of each listed patent, publication, or other item…
Read MoreWhat does “reasonable notice” mean in the context of attorney withdrawal from patent proceedings?
In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623: “‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.” This means that…
Read MoreHow should patent examiners review responses to utility rejections?
When reviewing responses to utility rejections, patent examiners are instructed to conduct a comprehensive evaluation. The MPEP provides specific guidance: “If the applicant responds to the prima facie rejection, the Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments, and any new reasoning or…
Read MoreHow do patent examiners assess the credibility of utility statements?
Patent examiners are required to treat statements of utility made by applicants as true unless there is countervailing evidence. The MPEP states: “Office personnel are reminded that they must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided that shows that…
Read MoreCan patent examiners communicate with protestors?
No, patent examiners are strictly prohibited from communicating with protestors regarding a patent application. The MPEP Section 1907 clearly states: “The examiner must not communicate in any manner with protestor.” This prohibition is designed to maintain the objectivity and fairness of the patent examination process. The rule is further supported by 37 CFR 1.291(d), which…
Read MoreCan non-self-replicating materials be acceptable as biological deposits for patents?
While the USPTO generally expects deposited biological materials to be capable of self-replication, either directly or indirectly, the MPEP 2403 does not entirely preclude the possibility of accepting non-self-replicating materials under certain circumstances. The MPEP states: “Thus, while the Office does not currently contemplate that there would be any situations where a material that is…
Read MoreWhat are the guidelines for addressing new matter in ex parte reexamination?
In ex parte reexamination, addressing new matter is subject to specific guidelines as outlined in MPEP 2262: New matter is not permitted in reexamination proceedings. If new matter is introduced in an amendment, it must be objected to and not entered. The examiner must provide a detailed explanation of why the proposed amendment introduces new…
Read MoreWhere can I find guidance on processing a reexamination of a reexamination?
Guidance for processing a reexamination of a reexamination can be found in the Manual of Patent Examining Procedure (MPEP). Specifically, MPEP § 2695 states: “See MPEP § 2295 for guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate…
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