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,…

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Can 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,…

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What 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…

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What 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…

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What 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…

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When 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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