What is the primary purpose of a derivation proceeding?
The primary purpose of a derivation proceeding is to determine the true inventor of a claimed invention when there is a dispute between two patent applications. This is outlined in MPEP 2310.01, which cites 35 U.S.C. 135(b): “In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an…
Read MoreHow should prior art be presented in an inter partes reexamination request?
When presenting prior art in an inter partes reexamination request, the MPEP 2614 provides specific guidelines: Copy requirement: The request must include “a copy of every patent or printed publication relied upon or referred to in the request.” This ensures that the examiner has immediate access to all relevant prior art. Translation requirement: “An English…
Read MoreWhat is the preferred method for submitting a Sequence Listing to the USPTO?
The USPTO strongly recommends submitting the Sequence Listing as an ASCII plain text file via the USPTO patent electronic filing system. This method offers several advantages: It serves as both the Sequence Listing under 37 CFR 1.821(c) and the Computer Readable Form (CRF) under 37 CFR 1.821(e). It eliminates the need for a separate CRF…
Read MoreHow does pending litigation affect the USPTO’s determination in a supplemental examination proceeding?
According to MPEP 2816, pending litigation does not directly affect the USPTO’s determination in a supplemental examination proceeding. The MPEP states: “In view of the statutory mandate to make the determination on the request within three months, the determination on the request based on the record before the examiner will be made without awaiting a…
Read MoreHow can I pay maintenance fees for multiple patents at once?
You can submit maintenance fee payments for multiple patents in a single submission. MPEP 2522 provides guidance on this process: “Maintenance fees for a number of patents can be submitted together in one submission and one payment. 37 CFR 1.366(e) specifies that if maintenance fee payments for more than one patent are submitted together, they…
Read MoreHow are patents involved in litigation handled during reexamination proceedings?
When patents involved in litigation are undergoing reexamination proceedings, the USPTO has specific guidelines for handling these cases. According to MPEP 2207, there are different procedures depending on the type of reexamination: For ex parte reexamination: Refer to MPEP § 2240 and MPEP § 2242 For inter partes reexamination: Refer to MPEP § 2640 and…
Read MoreWhat is the filing date for a patent term extension application?
The filing date for a patent term extension application is determined according to 37 CFR 1.741(a). Specifically, “the filing date of an application for patent term extension is the date on which a complete application is received in the USPTO or filed pursuant to the certificate of mailing provisions of 37 CFR 1.8 or the…
Read MoreWho can represent a patent owner in a supplemental examination proceeding?
Only registered patent practitioners can represent a patent owner in a supplemental examination proceeding. The MPEP 2804 states: “A patent owner may not be represented during a supplemental examination proceeding or any resulting ex parte reexamination proceeding by an attorney or other person who is not registered to practice before the Office.” This means that…
Read MoreCan a patent owner be represented by a non-registered practitioner in reexamination?
No, a patent owner cannot be represented by a person who is not registered to practice before the United States Patent and Trademark Office (USPTO) during a reexamination proceeding. MPEP 2213 clearly states: “A patent owner may not be represented during a reexamination proceeding by any person who is not registered to practice before the…
Read MoreCan I pay patent maintenance fees with a credit card?
Yes, you can pay patent maintenance fees with a credit card. According to MPEP 2522: “The maintenance fee can be charged to a credit card as set forth in 37 CFR 1.23(b), but credit for the payment is subject to actual receipt of the fee by the Office.“ When using a credit card for payment,…
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