What is a “written assurance” in the context of patent deposits?
A “written assurance” in the context of patent deposits is a statement provided by the applicant indicating that an acceptable deposit will be made. The MPEP 2411.03 mentions: “[I]n the event that an application for patent is otherwise in condition for allowance except for a required deposit and the Office has received a written assurance…
Read MoreWhy are interferences not declared for applications under secrecy orders?
Interferences are not declared for applications under secrecy orders primarily due to confidentiality concerns. The MPEP 2306 explains: “Once an interference is declared, an opposing party is entitled to access to the application and benefit applications pursuant to 37 CFR 41.109. See MPEP § 2307.02. Consequently, an interference should not be suggested for an application…
Read MoreWhy were inter partes reexamination requests discontinued?
Inter partes reexamination requests were discontinued as part of the changes implemented by the America Invents Act (AIA). While MPEP Section 2619 doesn’t explicitly state the reason, it notes: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was made to streamline patent challenge procedures and replace…
Read MoreWhat is the purpose of requiring an applicant to add a claim under 37 CFR 41.202(c)?
The purpose of requiring an applicant to add a claim under 37 CFR 41.202(c) is to provoke an interference proceeding. According to MPEP 2304.04(b), this requirement may be made “to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will pursue claims to the interfering subject matter.” The MPEP…
Read MoreWho can file a petition for patent term adjustment?
While MPEP 2736 does not explicitly state who can file a petition for patent term adjustment, it clearly indicates who cannot file such petitions. The section states: “No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office.” By inference, this means…
Read MoreWho can file a protest against a patent application?
According to MPEP 1901.01, any member of the public can file a protest under 37 CFR 1.291. This includes: Private persons Corporate entities Government agencies The MPEP states: Any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291. This broad definition ensures that anyone…
Read MoreWhen did supplemental examination become available?
Supplemental examination became available on September 16, 2012. This new procedure was introduced as part of the Leahy-Smith America Invents Act (AIA). The MPEP states: “Supplemental examination became available on September 16, 2012, as a result of new section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on…
Read MoreWhen is a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) issued?
A Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in two main scenarios: When all claims are rejected or objected to in the prior Office action, the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. When at least one claim is free of…
Read MoreWhen is claim sorting not appropriate in patent applications?
Claim sorting may not be appropriate in all cases, particularly when it could lead to issues with claim support. The MPEP 2304.01(d) provides guidance on this matter: “Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35…
Read MoreWhat is supplemental examination?
Supplemental examination is a process provided by 35 U.S.C. 257 that allows a patent owner to request the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent.” As stated in the MPEP: “35 U.S.C. 257(a) provides that supplemental examination may be requested by the patent owner to consider, reconsider, or…
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