What are the consequences of failing to timely provide a required “Sequence Listing XML”?
If an applicant fails to timely provide a required “Sequence Listing XML” in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), there are significant consequences for the search and examination of the application. MPEP 2414.05 states: “If the applicant fails to timely provide the required…
Read MoreWhat are the consequences of late disclosure of information to the USPTO?
Late disclosure of information to the USPTO can have several consequences: Reduced patent strength: The MPEP notes, The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. This suggests that late disclosure may weaken the patent’s presumption of validity. Potential patent term…
Read MoreWhat happens if the statement applying prior art is insufficient in an inter partes reexamination request?
If the statement applying prior art in an inter partes reexamination request is insufficient, the request may be denied. The MPEP 2617 explains: “If the required statement applying the prior art is not included in the request, the request will be denied.” An insufficient statement could include: Failing to address all claims for which reexamination…
Read MoreWhat are the consequences of failing to disclose material information to the USPTO?
What are the consequences of failing to disclose material information to the USPTO? Failing to disclose material information to the USPTO can have serious consequences. The MPEP 2001.04 states: “The Office encourages applicants to carefully examine: (1) prior art cited in search reports of a foreign patent office in a counterpart application, and (2) the…
Read MoreWhat is the proper service requirement for confidential submissions to the USPTO?
When making confidential submissions to the USPTO, it’s crucial to follow the proper service requirements. According to MPEP 2203: Confidential submissions should include proper proof of service as required by 37 CFR 1.248(b) that the patent owner has been sent a copy of the submission; otherwise the submission will not be entered into the patent…
Read MoreWhat are the expectations regarding conduct in ex parte reexamination proceedings?
The USPTO has specific expectations regarding conduct in ex parte reexamination proceedings. As stated in MPEP 2209: “Parties are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called ‘litigation tactics’ in reexamination proceedings. The parties are expected to conduct themselves accordingly.“ This means that participants should adhere to the established…
Read MoreHow does the USPTO handle concurrent proceedings during ex parte reexamination?
The MPEP 2288 addresses the handling of concurrent proceedings during ex parte reexamination. It states: “If concurrent proceedings are pending at the time the ex parte reexamination certificate is to be issued, the USPTO may suspend the issuance of the certificate until the concurrent proceedings are terminated.” This means that if there are other ongoing…
Read MoreWhat constitutes a “complete application” for patent term extension?
A “complete application” for patent term extension is defined in 37 CFR 1.741(a) and must meet the requirements set forth in 35 U.S.C. 156(d)(1). The MPEP states: “The Office will consider each of these statutory requirements to be satisfied in an application which provides sufficient information, directed to each requirement, to act on the application,…
Read MoreCan collateral estoppel apply in patent reexamination proceedings?
Collateral estoppel, or issue preclusion, can apply in certain circumstances during patent reexamination proceedings. According to MPEP § 2259: “If the claims in a reexamination proceeding present the same issue(s) as claims that were finally held invalid by a federal court in a proceeding involving a different patent in the same patent family, collateral estoppel…
Read MoreHow can applicants claim foreign priority in international design applications designating the United States?
Applicants can claim foreign priority in international design applications designating the United States under certain conditions: The claim must be in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations. The priority claim can be made to a prior foreign application, international application (PCT) designating at…
Read More