What is the purpose of correspondence between the USPTO and regulatory agencies in patent term extension?
The correspondence between the USPTO and regulatory agencies serves multiple purposes in the patent term extension process: To facilitate eligibility decisions for patent term extension To allow both entities to carry out their responsibilities under 35 U.S.C. 156 To exchange information regarding regulatory review period determinations, due diligence petitions, and informal regulatory agency hearings As…
Read MoreHow should USPTO personnel report time spent on reexamination activities?
According to the Manual of Patent Examining Procedure (MPEP) Section 2638, all USPTO personnel are required to report all time spent on reexamination activities accurately. The MPEP states: “It is essential that all time expended on reexamination activities be reported accurately. Thus, all USPTO personnel should report all time spent on reexamination on their individual…
Read MoreHow does the USPTO treat claims held “not invalid” by a federal court in reexamination?
The USPTO may still reexamine claims that have been held “not invalid” by a federal court. According to MPEP § 2259: “Claims finally held as ‘not invalid’ by a federal court, after all appeals, may still be subject to reexamination.” This means that even if a court has upheld the validity of certain claims, the…
Read MoreWhat activities should be included in USPTO personnel’s Time and Attendance Reports for reexamination?
According to MPEP 2638, USPTO personnel should include all activities related to reexamination in their Time and Attendance Reports. The section specifically states: “Even activities such as supervision, copying, typing, and docketing should be included.” This means that in addition to direct examination work, administrative and support tasks related to reexamination should also be reported.…
Read MoreHow does the USPTO notify the public about tentative abstract idea rejections?
The USPTO has a process for notifying the public about tentative abstract idea rejections. According to the MPEP: The TC Director will then inform Patents Management that this procedure has been used so that the public can be notified, for example, on USPTO.GOV at the Subject Matter Eligibility website. (MPEP 2106.04(a)(3)) This process ensures: Transparency…
Read MoreHow does the USPTO determine if a document is publicly accessible for patent purposes?
The USPTO determines public accessibility of a document for patent purposes based on several factors outlined in MPEP 2128.01. Key considerations include: The extent of dissemination The ease with which the document can be located The intended audience’s ability to find the document The MPEP provides guidance: “Whether a document is ‘publicly accessible’ is determined…
Read MoreHow does the USPTO handle prior art rejections when operability is questioned?
The USPTO handles prior art rejections where operability is questioned as follows: The examiner must provide a reasonable basis to question the operability of the prior art. If operability is questioned, the burden shifts to the applicant to provide rebuttal evidence. The prior art is presumed to be operable unless proven otherwise. As stated in…
Read MoreDoes the USPTO return or preserve the computer readable form (CRF) submitted on read-only optical discs?
No, the USPTO does not permanently preserve or return computer readable forms (CRFs) submitted on read-only optical discs. The MPEP clearly states: The Office does not desire to be bound by a requirement to permanently preserve computer readable forms submitted on read-only optical disc(s) for support, priority or correction purposes. Thus, once use of the…
Read MoreHow does the USPTO make a preliminary eligibility decision for patent term extension?
The USPTO makes a preliminary eligibility decision for patent term extension through the following process: The USPTO sends an initial letter to the relevant regulatory agency requesting information on eligibility. Upon receiving a reply from the regulatory agency, the USPTO reviews the information provided. The USPTO compares the regulatory agency’s information with the details in…
Read MoreWhat is the preferred method for submitting a “Sequence Listing” to the USPTO?
The USPTO’s preferred method for submitting a “Sequence Listing” is as an ASCII plain text file via the USPTO patent electronic filing system. The MPEP states: Filing the “Sequence Listing” as an ASCII plain text file submitted via the USPTO patent electronic filing system that complies with both 37 CFR 1.821(c) and (e) is the…
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