What types of documents are processed during supplemental examination?
The MPEP 2812 provides information on the types of documents processed during supplemental examination: “All processing of requests for supplemental examination and of other papers filed in a supplemental examination proceeding and in any resulting ex parte reexamination proceeding will be performed by the staff of the Central Reexamination Unit.” Based on this statement, the…
Read MoreWhat documents are required to correct inventorship in an international design application?
To correct inventorship in an international design application, the following documents are typically required: A request to correct inventorship under 37 CFR 1.48(a) A signed Application Data Sheet (ADS) with the correct inventor information Payment of the required processing fee The MPEP 2920.01 specifies: “A request to correct or change the inventorship under 37 CFR…
Read MoreIs an appeal to a U.S. District Court available in inter partes reexamination proceedings?
No, an appeal to a U.S. District Court is not available in inter partes reexamination proceedings. The MPEP 2683 clearly states: “The remedy by civil action under 35 U.S.C. 145 is not available to the patent owner and the third party requester in an inter partes reexamination proceeding. Patent owners and third party requesters dissatisfied…
Read MoreHow should applicants disclose information that refutes or is inconsistent with their patent application?
Applicants have a duty to disclose information that refutes or is inconsistent with positions taken in their patent application. According to MPEP 2011: “Applicants should disclose to the USPTO any information that refutes, or is inconsistent with, a position the applicant takes in: (i) opposing an argument of unpatentability relied on by the Office, or…
Read MoreCan I use a different correspondence address for USPTO communications than the one on my DM/1 form?
Yes, you can specify a different correspondence address for USPTO communications than the one on your DM/1 form for an international design application. The MPEP 2912 states: “Applicants may specify a different address than specified on the DM/1 form for the purpose of correspondence sent by the USPTO as an office of indirect filing.“ This…
Read MoreWhat is the difference between reexaminations ordered under 35 U.S.C. 304 and 35 U.S.C. 257?
The MPEP distinguishes between reexaminations ordered under different statutory provisions: 1. Reexaminations ordered under 35 U.S.C. 304: These are standard ex parte reexaminations The certificate states “Reexamination Request” before the filing date and number They continue an established ordinal numbering sequence 2. Reexaminations ordered under 35 U.S.C. 257: These result from a supplemental examination proceeding…
Read MoreWhat is the difference between official notice and judicial notice in patent law?
What is the difference between official notice and judicial notice in patent law? While both official notice and judicial notice involve recognizing certain facts without formal evidence, they are used in different contexts and have distinct characteristics: Official Notice: Used by patent examiners during the examination process Governed by USPTO guidelines and the MPEP Can…
Read MoreDo design or plant patents require maintenance fees?
No, design and plant patents do not require maintenance fees. The MPEP 2501 clearly states: “No fee may be established for maintaining a design or plant patent in force.” This means that once a design or plant patent is granted, it remains in force for its full term without the need for periodic maintenance fee…
Read MoreWhat must be included in a derivation proceeding petition?
A petition for a derivation proceeding must contain specific information to be considered by the USPTO. According to MPEP 2310.01, which cites 35 U.S.C. 135(a)(1): “The petition shall set forth with particularity the basis for finding that an individual named in an earlier application as the inventor or a joint inventor derived such invention from…
Read MoreCan I use a deposit account to pay patent maintenance fees?
Yes, you can use a deposit account to pay patent maintenance fees. MPEP 2522 states: “37 CFR 1.366(b) provides that maintenance fees and any necessary surcharge may be paid by authorization to charge a deposit account established pursuant to 37 CFR 1.25.“ However, there are important conditions to consider: The authorization must be submitted within…
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