Who can file a request for supplemental examination?
According to MPEP 2811, a request for supplemental examination must be filed by the owner(s) of the entire right, title, and interest in the patent. This requirement is specified in 37 CFR 1.601(a). The MPEP explains: “This is because the scope of a patent may be changed (e.g., by cancellation or amendment of the claims)…
Read MoreWhen did the USPTO start requiring Sequence Listing XML for patent applications?
The USPTO began requiring Sequence Listing XML for certain patent applications on July 1, 2022. As stated in MPEP 2419: “[Editor Note: This section is applicable to all applications filed on or after July 1, 2022, having disclosures of nucleotide and/or amino acid sequences as defined in 37 CFR 1.831(b).]” This requirement applies to patent…
Read MoreWhen did the USPTO implement the Sequence Listing XML requirement?
The USPTO implemented the Sequence Listing XML requirement for patent applications filed on or after July 1, 2022. This is clearly stated in the editor’s note of MPEP 2419.01: “[Editor Note: This section is applicable to all applications filed on or after July 1, 2022, having disclosures of nucleotide and/or amino acid sequences as defined…
Read MoreHow does the USPTO handle prior art submissions in languages other than English for reexamination?
When submitting prior art in languages other than English for reexamination, the USPTO has specific requirements. According to MPEP 2244: “If the prior art patents and printed publications are in a language other than English, any necessary translation should be included.“ This means that: Translations must be provided for non-English prior art The translation should…
Read MoreAre copies of U.S. patents and patent application publications required in reexamination requests?
Generally, copies of U.S. patents and U.S. patent application publications are not required to be submitted with reexamination requests. The MPEP 2218 states: “The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent…
Read MoreWhy is a terminal disclaimer required for petitions to excuse unintentional delay in international design applications?
A terminal disclaimer is required for petitions to excuse unintentional delay in international design applications to prevent the applicant from unfairly extending the patent term due to the delay. This requirement is specified in 37 CFR 1.1051(d). The MPEP explains: “Pursuant to 37 CFR 1.1051(d), any petition under 37 CFR 1.1051(a) must be accompanied by…
Read MoreWhat additional information must accompany claim amendments in reexamination?
When submitting claim amendments in a patent reexamination, additional information must be provided to support the changes. According to 37 CFR 1.530(e): “Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending…
Read MoreWhat are the requirements for a “streamlined” ex parte reexamination request?
A “streamlined” ex parte reexamination request under 37 CFR 1.20(c)(1) must meet the following requirements: Have forty (40) or fewer pages Use double-spaced or one-and-a-half spaced lines Use a non-script type font such as Arial, Times New Roman, or Courier Use a font size no smaller than 12 point Have margins that conform to the…
Read MoreWhat is the role of “specific and substantial utility” in patent applications?
“Specific and substantial utility” is a crucial concept in patent law that determines the patentability of an invention. The MPEP 2107.01 states: “Courts have used the labels “practical utility,” “substantial utility,” or “specific utility” to refer to this aspect of the “useful invention” requirement of 35 U.S.C. 101. The Court of Customs and Patent Appeals…
Read MoreWhat is a “Sequence Listing XML” and when is it required?
A “Sequence Listing XML” is a file containing nucleotide and/or amino acid sequence information in XML format. It is required for applications filed on or after July 1, 2022, that contain disclosures of nucleotide and/or amino acid sequences as defined in 37 CFR 1.831(b). As stated in MPEP 2414: “When an application filed on or…
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