What are ex parte communications in patent interference proceedings?
Ex parte communications in patent interference proceedings refer to private communications about the case with a Board member or Board employee assigned to the proceeding, without the presence or knowledge of the other party. These communications are strictly prohibited in inter partes proceedings, including interferences. As stated in MPEP 2307.01: “An ex parte communication about…
Read MoreHow does estoppel on the merits work in patent interference cases?
Estoppel on the merits in patent interference cases prevents a losing party from seeking claims that are anticipated or obvious based on the subject matter of the lost count. According to MPEP 2308.03: “A losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the…
Read MoreWhat is the process for entering court decisions into a patent file?
The process for entering court decisions into a patent file involves several steps and parties within the U.S. Patent and Trademark Office (USPTO). According to MPEP 2207: The Solicitor’s Office processes notices required by 35 U.S.C. 290 received from clerks of various U.S. courts. These notices are entered into the patent file. The USPTO also…
Read MoreCan a supplemental examination request be submitted electronically?
Yes, a supplemental examination request can be submitted electronically. The MPEP 2812 states: “A request for supplemental examination may be submitted via the USPTO’s electronic filing system (EFS-Web).” Electronic submission offers several advantages: Faster processing Immediate confirmation of receipt Reduced risk of physical document loss However, it’s important to note that all requirements for the…
Read MoreCan I file papers for a supplemental examination proceeding electronically?
Yes, patent owners can submit papers in a supplemental examination proceeding electronically via the USPTO’s Web-based electronic filing system (EFS-Web). The MPEP encourages electronic submission of requests for supplemental examination and subsequent correspondence. To file electronically: For a new supplemental examination request, select “New application/proceeding” in EFS-Web, then choose “Supplemental Examination.” For papers in an…
Read MoreHow can I electronically file an ex parte reexamination request?
As of July 9, 2007, the USPTO began accepting ex parte reexamination requests and subsequent correspondence through its Web-based electronic filing system (EFS-Web). The MPEP states: “The Office has updated the Legal Framework for Patent Electronic System to set forth that requests for reexamination, and proper reexamination ‘follow-on’ papers (see MPEP § 2267) are permitted…
Read MoreWhat is the effect of conversion on the international design application?
The effect of conversion on an international design application depends on the timing of the conversion decision: If the conversion is granted before transmittal to the International Bureau: The application is fully converted to a U.S. design application It will not be processed as an international application If the conversion is granted after transmittal to…
Read MoreWhen does the duty to disclose information end?
The duty to disclose information does not end when an application becomes allowed but extends until a patent is granted. According to 37 CFR 1.56(a): “The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned.” The MPEP further clarifies…
Read MoreHow does the duty of disclosure differ in supplemental examination?
The duty of disclosure in supplemental examination is similar to reexamination proceedings, but with some key differences. According to MPEP 2014: “In supplemental examination, the duty of disclosure applies to the patent owner and individuals associated with the patent owner as defined in 37 CFR 1.555. However, as provided by 37 CFR 1.625(d)(4), information material…
Read MoreDoes the duty of disclosure apply to proceedings before the Patent Trial and Appeal Board?
Yes, the duty of disclosure applies to proceedings before the Patent Trial and Appeal Board (PTAB). The obligation to disclose material information extends beyond interactions with patent examiners and includes all dealings with the United States Patent and Trademark Office (USPTO). MPEP 2001.03 explicitly states: “For example, the duty would extend to proceedings before the…
Read More