What is the requirement for explaining the relevance of items of information in a supplemental examination request?

According to MPEP 2811, a supplemental examination request must include a detailed explanation of the relevance and manner of applying each item of information to each claim for which supplemental examination is requested. This requirement is specified in 37 CFR 1.610(b)(5). The MPEP states: “The request must include a separate, detailed explanation of the relevance…

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Are English translations required for non-English prior art in reexamination requests?

Yes, English translations are required for non-English prior art submitted with reexamination requests. According to MPEP 2218: “If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required. See MPEP § 609.04(a), subsection III. An English language summary or abstract of a…

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How are drawing corrections handled in international design applications designating the US?

How are drawing corrections handled in international design applications designating the US? Drawing corrections in international design applications designating the United States are handled according to specific procedures outlined in the MPEP 2920: “Where an international design application designating the United States contains a voluntary correction to the drawings, the voluntary correction will generally be…

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How should ongoing litigation be disclosed during the patent examination process?

For ongoing litigation related to a pending patent application, the MPEP 2001.06(c) provides guidance on how to disclose this information: Promptly bring the litigation to the attention of the USPTO. Provide enough information to clearly inform the Office of the nature of the issues in the litigation. Submit relevant litigation materials that are “material to…

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How should information about copending reexamination proceedings be provided in a reexamination request?

When providing information about copending reexamination proceedings in a reexamination request, it’s important to follow the guidelines set by the USPTO. According to MPEP 2218: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may…

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What are the restrictions on the content of the notification for other post-patent proceedings?

The MPEP 2820 outlines specific restrictions on the content of notifications for other post-patent proceedings during supplemental examination: The notice must be limited to identification of the post-patent Office proceeding. It must not include any discussion of the issues in the current supplemental examination or the identified post-patent Office proceeding(s). The notice must not include…

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