What additional information might the USPTO require for patent term extension applications?
The USPTO may require additional information from applicants for patent term extension applications. According to MPEP 2755: “The Director or other appropriate officials may require from applicant further information or make such independent inquiries as desired before a final determination is made on whether a patent is eligible for extension.“ If further information is required,…
Read MoreCan litigation-related materials be used in a patent protest?
Yes, litigation-related materials can be submitted as part of a protest under 37 CFR 1.291. The MPEP provides examples of such materials: “Some representative examples of other forms of evidence are litigation-related materials such as complaints, answers, depositions, answers to interrogatories, exhibits, transcripts of hearings or trials, court orders and opinions, stipulations of the parties,…
Read MoreWhat happens to untimely submissions in ex parte reexamination?
Untimely submissions in ex parte reexamination are generally not considered and may be returned to the sender. MPEP 2252 states: “Untimely submissions will ordinarily not be considered. Untimely submissions, other than untimely papers filed by the patent owner after the period set for response, will not be placed of record in the reexamination file but…
Read MoreWhat happens if excess claims fees are not paid in an inter partes reexamination?
If excess claims fees are not paid when required in an inter partes reexamination, the USPTO will issue a notice of fee deficiency. According to MPEP 2666.04: “If the excess claims fees required by 37 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of the excess claims, a notice of fee deficiency will…
Read MoreHow does the USPTO handle undelivered orders in inter partes reexamination?
The USPTO has a specific policy for handling undelivered orders in inter partes reexamination to ensure the process continues without unnecessary delays. According to MPEP 2654: “Reexamination will proceed even if the order is returned undelivered. As pointed out in MPEP § 2630, the notice under 37 CFR 1.11(c) is constructive notice to the patent…
Read MoreWhat is unauthorized participation by a protestor in patent examination?
Unauthorized participation by a protestor refers to any ex parte communication between the protestor and Office personnel, including examiners, regarding substantive matters of a patent application. The Manual of Patent Examining Procedure (MPEP) Section 1907 explicitly states: “Office personnel must exercise care to ensure that substantive matters relating to the application are not discussed ex…
Read MoreWhat happens to unauthorized or improper papers filed in a supplemental examination proceeding?
According to MPEP 2813, unauthorized or improper papers filed in a supplemental examination proceeding are not entered into the official file or considered. If such papers are inadvertently entered, they will be expunged. Specifically, 37 CFR 1.620(c) states: “if an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not…
Read MoreWhat types of information can be considered in a supplemental examination?
Supplemental examination is not limited to patents and printed publications. The MPEP states: “The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112.” This means that patent owners can request consideration of a wide…
Read MoreWhat types of information can be submitted for supplemental examination?
In supplemental examination, patent owners can submit a wide range of information for consideration. The MPEP states: “The ‘information’ may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a…
Read MoreWhen should the deposit of biological material be made in relation to paying the issue fee?
It’s crucial to make the deposit of biological material well before paying the issue fee. The MPEP 2411.03 advises: “[A]pplicants need to make any necessary deposit of biological material well prior to payment of the issue fee such that the accession number is received with sufficient time remaining to amend the specification as required by…
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