How can inventorship errors be corrected in patent applications?
For applications filed on or after September 16, 2012, inventorship errors can be corrected without disclosing the circumstances of the error. This is based on 35 U.S.C. 116(c), which states: “Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in…
Read MoreWhat is a corrected request in supplemental examination?
A corrected request in supplemental examination is the patent owner’s one opportunity to address defects in their original supplemental examination request. As stated in the MPEP, “The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)).” This corrected request must address…
Read MoreHow can inventorship be corrected in an international design application?
Inventorship in an international design application can be corrected according to the provisions outlined in 37 CFR 1.48(a). The MPEP 2920.01 states: “Inventorship may be corrected in accordance with the provisions of 37 CFR 1.48(a). See MPEP § 602.01(c) et seq. for a detailed discussion of correction of inventorship, correcting or updating the name of…
Read MoreCan parties submit copies of copending reexamination proceedings to a patent file?
No, parties are not permitted to submit copies of copending reexamination proceedings or applications to a patent file. The MPEP 2207 clearly states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a…
Read MoreWhat is the process for converting an international design application to a U.S. design application?
The process for converting an international design application to a U.S. design application under 35 U.S.C. Chapter 16 is outlined in 37 CFR 1.1052. The key steps are: File a petition for conversion with the USPTO Pay the fee set forth in 37 CFR 1.17(t) File the petition before the international registration is published Ensure…
Read MoreWhat information is included in a Statement of Grant of Protection?
A Statement of Grant of Protection for an international design application contains specific information as outlined in the Manual of Patent Examining Procedure (MPEP) 2940. According to Hague Rule 18bis(1)(b), the statement must include: The Office making the statement (in this case, the USPTO) The number of the international registration Which industrial designs are covered…
Read MoreWhat are the consequences of withholding material information from the USPTO?
Withholding material information from the USPTO while providing it to other government agencies can lead to serious consequences, including findings of inequitable conduct. The MPEP 2015 cites a relevant case: “In Bruno Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348, 1354, 73 USPQ2d 1593, 1598 (Fed. Cir. 2005), the U.S. Court…
Read MoreWhat are the consequences of violating the duty of disclosure?
Violating the duty of disclosure can have severe consequences. The MPEP states: “No patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.” Furthermore, the MPEP emphasizes that: “A finding of ‘fraud,’ ‘inequitable…
Read MoreWhat are the consequences of violating the duty of disclosure in patent term extension proceedings?
Violating the duty of disclosure in patent term extension proceedings can have serious consequences. The MPEP 2762 states: “A determination of eligibility for an extension or the issuance of a certificate will not be made if clear and convincing evidence of fraud or attempted fraud on the Office or a Secretary is determined to be…
Read MoreWhat happens if I don’t pay the full fee for an ex parte reexamination request?
What happens if I don’t pay the full fee for an ex parte reexamination request? Failure to pay the full fee for an ex parte reexamination request can result in the request being treated as not having been filed. According to MPEP 2215: “If the request for ex parte reexamination is filed by the patent…
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