What happens if an applicant refuses to add a required claim for interference?
If an applicant refuses to add a claim required under 37 CFR 41.202(c), there are significant consequences. According to MPEP 2304.04(b): “Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim.” This means that the applicant would be barred from claiming not only the…
Read MoreWhat happens if the formatting requirements for supplemental examination are not met?
If the formatting requirements for supplemental examination are not met, the request will be considered defective. According to MPEP 2807: “If the requirements of 37 CFR 1.615 are not satisfied, the request will be considered to be defective. See 37 CFR 1.610(d) and MPEP § 2812.01.” This means that failure to comply with the formatting…
Read MoreWhat happens if insufficient information is provided with a maintenance fee payment?
If insufficient information is provided with a maintenance fee payment, the USPTO may take certain actions. According to MPEP 2515: “If the payment includes identification of only the patent number (i.e., does not identify the application number of the United States application for the patent on which the maintenance fee is being paid), the Office…
Read MoreWhat happens if a patent owner submits an improper notification during supplemental examination?
If a patent owner submits an improper notification during supplemental examination, the USPTO will treat it as an unauthorized paper. According to MPEP 2820: “If the paper containing the notice is not so limited, the paper will be held to be improper, and will be processed as an unauthorized paper pursuant to 37 CFR 1.620(c).“…
Read MoreWhat happens if a party fails to serve documents in an inter partes reexamination?
Failure to serve documents in an inter partes reexamination can have serious consequences. According to MPEP 2666.06: “The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.” If the USPTO becomes aware that service was not made, they will typically issue a notice using…
Read MoreWhat are the consequences of failing to make a required deposit within the specified time?
Failing to make a required deposit within the specified time can have serious consequences for a patent application. According to MPEP 2411.03: “Failure to make the needed deposit in accordance with this requirement will be considered a failure to prosecute the application under 35 U.S.C. 133 and result in abandonment of the application.” This means…
Read MoreHow is a reexamination proceeding concluded with a Reexamination Certificate?
A reexamination proceeding can be concluded with the issuance of a Reexamination Certificate under 37 CFR 1.570(b). According to MPEP 2294, the process involves: Processing the reexamination as set forth in MPEP § 2287 Review by the CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS) The MPEP states: “The proceeding may…
Read MoreWhat is the difference between losing on a compound claim versus a method claim in patent interference?
The MPEP 2308.03(a) provides an example that illustrates the difference between losing on a compound claim versus a method claim in patent interference: “The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue…
Read MoreWhat does the completeness review in reexamination entail?
The completeness review is a crucial part of the reexamination process, ensuring that all aspects of the case have been thoroughly addressed. MPEP 2689 states that the CRU SPRS or TC QAS will: “(B) do a completeness review of the action to ensure that all issues and arguments raised by all parties are appropriately developed,…
Read MoreWhat types of communications are allowed in inter partes reexamination proceedings?
In inter partes reexamination proceedings, all communications between the Office and the parties (patent owner and third party requester) must be in writing and filed with the Office for entry into the record. The MPEP 2685 states: “All communications between the Office and the patent owner (and the third party requester) which are directed to…
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