What are the requirements for identifying patent owners in a supplemental examination request?
When submitting a request for supplemental examination, it is crucial to properly identify the patent owner(s). According to MPEP 2811: “The request must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with 37 CFR…
Read MoreCan an examiner require the submission of a Sequence Listing XML?
Yes, an examiner can require the submission of a Sequence Listing XML under certain circumstances. MPEP 2414 states: “Additionally, the examiner can require the filing of an added initial ‘Sequence Listing XML’ if the ‘Sequence Listing XML’ or a replacement ‘Sequence Listing XML’ if an application fails to comply with 37 CFR 1.831 – 1.834.”…
Read MoreHow can an applicant overcome a rejection based on a deposit not being made or identified?
To overcome a rejection based on a deposit not being made or identified, an applicant has several options as outlined in MPEP 2411.02: Make the deposit: If a deposit has not been made, the applicant can make the deposit and provide the required information. Identify an existing deposit: If the deposit has already been made,…
Read MoreIs there a minimum time requirement for attorney withdrawal before a response deadline in patent proceedings?
No, there is no longer a minimum time requirement for attorney withdrawal before a response deadline in patent proceedings. The MPEP 2623 states: “For a practitioner to withdraw from a patent and/or reexamination proceeding, the Office no longer requires that there be at least 30 days remaining in any running period for response between the…
Read MoreWhat are the requirements for an inventor’s oath or declaration in an international design application designating the United States?
An international design application designating the United States must include the inventor’s oath or declaration. According to 37 CFR 1.1021(d)(3), the oath or declaration must comply with the requirements set forth in 37 CFR 1.63 and 1.64. The MPEP states: International design applications designating the United States are required to contain the inventor’s oath or…
Read MoreAre international patent applications required to incorporate “Sequence Listings” by reference?
No, international patent applications during the international stage are exempt from the requirement to incorporate “Sequence Listings” by reference. This exemption is specifically stated in 37 CFR 1.823(b)(2): “37 CFR 1.823(b)(2) specifically exempts international applications during the international stage from the incorporation by reference requirement in 37 CFR 1.823(b)(1).“ This means that while domestic U.S.…
Read MoreWhy is a complete history of the patent required for reexamination?
A complete history of the patent is required for reexamination to ensure that the USPTO has all relevant information to make an informed decision. The MPEP 2219 states: “A copy of any disclaimer, certificate of correction, or reexamination certificate issued for the patent must also be included, so that a complete history of the patent…
Read MoreWhat happens if a copy of prior art submitted for reexamination is not legible?
If a copy of prior art submitted for reexamination is not legible, it is considered not to have been provided. The USPTO addresses this issue as stated in MPEP 2218: “If the copy provided is not legible, or is such that its image scanned into the Image File Wrapper system (IFW) will not be legible,…
Read MoreHow do I add a “Sequence Listing XML” to my patent application?
To add a “Sequence Listing XML” to your patent application, you must follow the requirements specified in 37 CFR 1.835(a). The MPEP provides guidance on this process: “Adding a “Sequence Listing XML” where one was not previously filed must conform with the requirements of 37 CFR 1.835(a). See MPEP § 2414.02 for details.” It’s important…
Read MoreWhat happens if a foreign priority document is not available through the International Bureau’s Digital Access Service (DAS)?
If a foreign priority document is not available through the International Bureau’s Digital Access Service (DAS), the following steps may be necessary: The applicant may need to submit the priority document directly to the USPTO. The USPTO may issue a requirement for the applicant to provide the priority document. The applicant should be prepared to…
Read More