What fees are associated with correcting inventorship in an international design application?
When correcting inventorship in an international design application, certain fees are required. According to MPEP 2920.01, the following fees apply: Processing fee: “A request to correct or change the inventorship under 37 CFR 1.48(a) … must be accompanied by the processing fee set forth in 37 CFR 1.17(i).” Additional fee for late correction: “A request…
Read MoreWhat is the impact of federal court decisions on reexamination proceedings?
Federal court decisions can significantly impact reexamination proceedings. According to MPEP § 2259: Claims held invalid: “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.” Claims held not invalid: “Claims finally held as ‘not invalid’ by a federal court, after all…
Read MoreCan failure to disclose material information affect patent validity?
Yes, failure to disclose material information can significantly affect patent validity. If it is discovered that an applicant or their representative knowingly withheld material information during the patent application process, it could lead to charges of inequitable conduct and potentially render the patent unenforceable. While MPEP 2001.03 does not explicitly discuss the consequences of failing…
Read MoreCan I use facsimile transmission to file a request for supplemental examination?
No, requests for supplemental examination cannot be facsimile-transmitted. This prohibition also applies to corrected requests filed in response to a Notice of Noncompliant Supplemental Examination Request. The MPEP clearly states: “Requests for supplemental examination may not be facsimile-transmitted. This is also true for a corrected request that is filed in response to a Notice ofNoncompliant…
Read MoreWhat is the extent of the duty of disclosure?
The duty of disclosure extends to all dealings with the United States Patent and Trademark Office (USPTO), not just interactions with patent examiners. This comprehensive obligation includes proceedings before various departments within the USPTO. As stated in MPEP 2001.03: “This duty ‘in dealing with’ and ‘to’ the Office extends, of course, to all dealings which…
Read MoreAre extensions of time available for responding to an Examiner’s Answer in patent reexamination?
Extensions of time for responding to an Examiner’s Answer in patent reexamination proceedings are available, but they are subject to specific rules. According to MPEP § 2275: “Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of…
Read MoreAre there any exceptions to the duty of disclosure to the USPTO?
While the duty of disclosure to the United States Patent and Trademark Office (USPTO) is a crucial aspect of the patent application process, there are some limitations to what needs to be disclosed. The MPEP 2002.01 provides an important clarification: “Information that is not material need not be passed along to the Office.” This statement…
Read MoreWhat is an Examiner’s Answer in patent reexamination proceedings?
An Examiner’s Answer is a written response provided by the primary examiner to an appeal brief in a patent reexamination proceeding. According to MPEP § 2275, “The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.” The Examiner’s Answer addresses the arguments presented…
Read MoreWhen should an examiner typically begin reviewing a supplemental examination request?
The MPEP 2815 provides guidance on when an examiner should typically start reviewing a supplemental examination request: “The examiner should take up a request about 6 weeks after the request’s filing date.” This timing allows for initial processing of the request while still providing sufficient time for the examiner to complete the review within the…
Read MoreIs the identity of the person filing an ex parte reexamination request confidential?
No, the identity of the person filing an ex parte reexamination request is not kept confidential. MPEP 2212 explicitly states: “The name of the person who files the request will not be maintained in confidence.“ This means that when someone files a request for ex parte reexamination, their identity becomes part of the public record.…
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