How does restriction practice apply to potential interferences?
Restriction practice in the context of potential interferences is addressed in MPEP 2303. The section states: “Potential interferences present an additional situation in which a restriction requirement may be appropriate. Specifically, restriction of interfering claims from non-interfering claims, or from unpatentable claims whose further prosecution would unduly delay initiation of an interference, can be an…
Read MoreWhat are the requirements for restoring the right of priority in international design applications?
Restoring the right of priority in international design applications may be possible if there was a delay in filing the application within the six-month priority period. According to MPEP 2920.05(d): “Where there was a delay in filing the subsequent application within this six month period, the right of priority may be restored under the conditions…
Read MoreWho is responsible for compliance with the duty of disclosure in inter partes reexamination?
The responsibility for compliance with the duty of disclosure in inter partes reexamination rests with specific individuals. According to 37 CFR 1.933(b): “The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to…
Read MoreWho is responsible for disclosing prior art from foreign applications?
According to MPEP 2001.06(a), the responsibility for disclosing prior art from foreign applications extends to “Applicants and other individuals, as set forth in 37 CFR 1.56.” This includes: Inventors Patent attorneys or agents Every person substantively involved in the preparation or prosecution of the application It’s important to note that this responsibility extends to foreign…
Read MoreWho is responsible for determining if a supplemental examination request is compliant?
The responsibility for determining if a supplemental examination request is compliant lies with the Central Reexamination Unit (CRU) of the United States Patent and Trademark Office (USPTO). The MPEP states: If the Central Reexamination Unit (CRU) determines that the request, as originally submitted, does not satisfy all of the requirements of 37 CFR 1.605, 1.610…
Read MoreWhat are the time periods for response in ex parte reexamination proceedings?
In ex parte reexamination proceedings, specific time periods are set for responses. According to MPEP 2254: “The time periods set for response are one month (30 days) from the mailing date of the Office action for the patent owner, and one month (30 days) from the date of service for any third party requester.“ However,…
Read MoreHow can an applicant respond to a patent-eligible subject matter rejection?
According to MPEP 2106.07(b), an applicant can respond to a rejection based on failure to claim patent-eligible subject matter in three main ways: Amend the claim to add additional elements or modify existing elements Present persuasive arguments based on a good faith belief as to why the rejection is in error Submit evidence traversing the…
Read MoreHow should applicants respond to obviousness rejections?
Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP: Show that the Office erred in its factual findings Provide evidence to demonstrate nonobviousness Present arguments pointing out specific distinctions that render the claims patentable Submit rebuttal evidence, including evidence of secondary considerations The MPEP states: “37 CFR 1.111(b) requires applicant…
Read MoreHow can I respond to a rejection based on a biological material deposit issue?
According to MPEP 2411.02, there are three ways to respond to a rejection under 35 U.S.C. 112 based on the absence of access to a biological material: Make an acceptable original, replacement, or supplemental deposit in accordance with the regulations. Provide a written assurance that an acceptable deposit will be made on or before the…
Read MoreHow should a patent owner respond to rejections in an inter partes reexamination?
In an inter partes reexamination, a patent owner should respond to rejections by providing a clear and specific rebuttal. According to MPEP 2666: “Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action. A general allegation that the claims define a patentable invention,…
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