How do I update my address for patent correspondence with the USPTO?
How do I update my address for patent correspondence with the USPTO? To update your address for patent correspondence with the USPTO: Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012. Use Form PTO/SB/122 for applications filed before September 16, 2012. Submit the form to the USPTO’s…
Read MoreWhat types of persons typically file ex parte reexamination requests?
MPEP 2212 provides a non-exhaustive list of persons who are likely to use the ex parte reexamination process under 35 U.S.C. 302: Patentees Licensees Potential licensees Attorneys without identification of their real client in interest Infringers Potential exporters Patent litigants Interference applicants International Trade Commission respondents This diverse list reflects the various stakeholders in the…
Read MoreWhat types of foreign information should be disclosed to the USPTO?
According to MPEP 2001.06(a), the types of information from foreign applications that should be disclosed to the USPTO include: Material prior art cited in related foreign applications Other information brought to the attention of the applicant in any related foreign application The MPEP specifically states: “The inference that such prior art or other information is…
Read MoreHow is the transmittal fee for an international design application determined?
The transmittal fee for an international design application filed through the USPTO as an office of indirect filing is determined based on the entity status of the applicant. According to MPEP 2910: “The transmittal fee is discounted for small and micro entities. Payment, by any party, of the exact amount of the small entity transmittal…
Read MoreHow does timely disclosure of information affect patent validity?
Timely disclosure of information can significantly affect patent validity. The MPEP states: The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. This means that when relevant information is disclosed promptly and considered by the USPTO during examination, the resulting patent is…
Read MoreIs there a time limit for requesting reexamination of a patent?
While there is a specific time limit for the USPTO to decide on a reexamination request, the timeframe for filing such a request is much broader. According to MPEP 2241: “A determination to reexamine may be made at any time during the period of enforceability of a patent.” This means that a request for reexamination…
Read MoreWhat is the time limit for filing an appeal in an inter partes reexamination proceeding?
According to MPEP 2683, the time limit for filing an appeal in an inter partes reexamination proceeding is specified in 37 CFR 1.304(a)(1): “The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from…
Read MoreWhat is the ‘three-prong test’ for functional claim language?
The ‘three-prong test’ for functional claim language is a method used by the USPTO to determine whether a claim limitation expressed in functional language is sufficiently definite under 35 U.S.C. 112(b). According to MPEP 2173.05(g), the test involves the following three prongs: Is there a clear cut indication of the scope of the subject matter…
Read MoreWho can represent a third party requester in an inter partes reexamination?
A third party requester in an inter partes reexamination must be represented by a registered patent practitioner. The MPEP states: “A third party requester may not be represented during a reexamination proceeding by an attorney or other person who is not registered to practice before the Office.” This means that only attorneys or agents who…
Read MoreHow does supplemental examination differ from ex parte reexamination?
Supplemental examination differs from ex parte reexamination in several key aspects: Information scope: Supplemental examination allows consideration of any information relevant to the patent, while ex parte reexamination is limited to patents and printed publications. Grounds of patentability: Supplemental examination can involve any ground of patentability, including subject matter eligibility, novelty, obviousness, written description, enablement,…
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