What are the key procedures for conducting inter partes reexamination proceedings?
Inter partes reexamination proceedings are conducted according to specific procedures established by law and regulation. According to MPEP 2654: Reexamination follows procedures similar to initial examination, as stated in 35 U.S.C. 314(a): “Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of…
Read MoreWhat happens if a juristic entity is incorrectly listed as an inventor in an international design application?
If a juristic entity is incorrectly listed as an inventor in an international design application designating the United States, it will result in a rejection of the application. The MPEP 2920.01 provides specific guidance on this issue: “Where a nonprovisional international design application identifies a juristic entity as an inventor, Form Paragraph 29.04 should be…
Read MoreHow many items of information can be included in a supplemental examination request?
According to MPEP 2809, each request for supplemental examination is limited to no more than twelve items of information. This limit is specified in 37 CFR 1.605(a). However, the MPEP clarifies that this limit does not prevent patent owners from obtaining review of additional items: “37 CFR 1.605(a) also permits the filing of more than…
Read MoreWhat is an “item of information” in supplemental examination?
An “item of information” is defined in MPEP 2809 as “a document submitted as part of a supplemental examination request that contains information believed to be relevant to the patent, that the patent owner is requesting the Office to consider, reconsider, or correct.” This definition is based on 37 CFR 1.605(b). Examples of items of…
Read MoreWhat should I consider regarding inventorship when responding to a restriction requirement in an international design application?
When responding to a restriction requirement in an international design application, it’s important to consider the potential need to correct inventorship. This is particularly relevant if you’re cancelling non-elected designs, as it may affect who qualifies as an inventor for the remaining design(s). According to MPEP 2920.05(b): “Applicants should consider the need to correct inventorship…
Read MoreWhat are the requirements for the inventor’s oath or declaration in an international design application?
International design applications designating the United States are required to contain the inventor’s oath or declaration. According to MPEP 2920.04(c): “International design applications designating the United States are required to contain the inventor’s oath or declaration (37 CFR 1.63 and 1.64).” Key points: The International Bureau reviews applications to ensure the required inventor’s oath or…
Read MoreHow does the inventor’s oath or declaration relate to the duty of disclosure in international design applications?
The inventor’s oath or declaration in international design applications designating the United States is directly related to the duty of disclosure. According to MPEP 2920.05(f): “The requirement under 37 CFR 1.63(c) and 1.64(c) that a person may not execute the inventor’s oath or declaration for an application unless that person is aware of the duty…
Read MoreWhat are the requirements for the title in an international design application?
The title in an international design application must designate the particular article in which the design is embodied. According to MPEP 2920.04(a), “The title of the design identifies the article in which the design is embodied by the name generally known and used by the public.” The title must correspond with the claim, but may…
Read MoreWhat are the requirements for reproductions (drawings) in an international design application?
Reproductions in international design applications must comply with the requirements of Rule 9 and Part Four of the Administrative Instructions, as stated in 37 CFR 1.1026. Key points include: Every application must include a reproduction of the claimed design. Reproductions can be drawings (black and white or color) or photographs. The drawing or photograph must…
Read MoreWhat information is required when appointing a representative for an international design application?
When appointing a representative for an international design application, the following information is typically required: Name and address of the representative: The MPEP states that The communication to appoint a representative shall contain the name and address, given in accordance with the Administrative Instructions, and email address of the representative. Email address of the representative:…
Read More