What is the requirement for notifying the USPTO about other post-patent proceedings during supplemental examination?
According to MPEP 2820, patent owners must notify the USPTO as soon as possible about any other prior or concurrent post-patent Office proceedings involving the patent under supplemental examination. This requirement is outlined in 37 CFR 1.620(d), which states: “The patent owner must, as soon as possible upon the discovery of any other prior or…
Read MoreWhat types of post-patent proceedings should be reported during supplemental examination?
According to MPEP 2820, patent owners should report various types of post-patent proceedings during supplemental examination. These include: Ex parte reexamination Inter partes reexamination Reissue Supplemental examination Post-grant review Inter partes review Covered business method patent review The MPEP states: “The notice is limited to an identification of the post-patent Office proceeding, including the type…
Read MoreWhat are the obligations of a patent owner during ex parte reexamination when there is concurrent litigation?
During ex parte reexamination, a patent owner has specific obligations regarding concurrent litigation. According to MPEP 2286: “The patent owner is required by 37 CFR 1.565(a) to call the attention of the Office to any prior or concurrent proceeding in which the patent is involved or was involved. Thus, the patent owner has an obligation…
Read MoreWhat is a patent owner’s obligation regarding biological deposits after a patent has issued?
A patent owner has a specific obligation regarding biological deposits after a patent has issued. According to MPEP 2407.02, “A patent owner is required to notify the Office when it obtains information that a depository possessing a deposit referenced in a patent cannot furnish samples of the deposit.” This means that patent owners must actively…
Read MoreWhat happens if a patent application doesn’t meet the sequence listing requirements?
If a patent application filed on or after July 1, 2022, does not meet the sequence listing requirements, the USPTO will notify the applicant and provide a period of time to comply. This process is outlined in 37 CFR 1.835(d)(1): “If any of the requirements of §§ 1.831 through 1.834 are not satisfied in an…
Read MoreWhy is notifying the USPTO about other post-patent proceedings important during supplemental examination?
Notifying the USPTO about other post-patent proceedings during supplemental examination is crucial for several reasons, as outlined in MPEP 2820: Quality Determination: The MPEP states, “Knowledge of other proceedings is important to ensure a quality determination.” This information helps examiners make informed decisions during the supplemental examination process. Statutory Time Constraint: The USPTO must conclude…
Read MoreWhat happens if FDA approval is received during an interim extension?
What happens if FDA approval is received during an interim extension? If FDA approval is received during an interim extension period, the patent holder must notify the USPTO promptly. According to MPEP 2755.01: “The patent owner must immediately notify the Office of any determination by the regulatory agency regarding the application for regulatory approval. After…
Read MoreWhat happens if a required Sequence Listing XML is not submitted or is defective?
If a required Sequence Listing XML is not submitted or is defective on the filing date of an application, the USPTO will take action. According to MPEP 2414: “When no ‘Sequence Listing XML’ or a defective ‘Sequence Listing XML’ is submitted on the filing date in an application where a compliance ‘Sequence Listing XML’ is…
Read MoreWhat is the duty of a reissue applicant regarding prior or concurrent proceedings?
According to 37 CFR 1.178(b), a reissue applicant has a duty to inform the USPTO about any prior or concurrent proceedings involving the patent for which reissue is requested. This includes: Interferences or trials before the Patent Trial and Appeal Board Reissues Reexaminations Litigations The MPEP states: “Where the patent for which reissue is being…
Read MoreWhat types of proceedings should be reported to the USPTO in a reissue application?
When filing a reissue application, applicants should report various types of proceedings involving the original patent. The MPEP specifies the following proceedings: Interferences Trials before the Patent Trial and Appeal Board (PTAB), including: Derivation proceedings Post-grant review Inter partes review Covered business method proceedings Reissues Reexaminations Litigations The MPEP states: “Additional proceedings that should be…
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