When did supplemental examination become available?
Supplemental examination became available on September 16, 2012. This new procedure was introduced as part of the Leahy-Smith America Invents Act (AIA). The MPEP states: “Supplemental examination became available on September 16, 2012, as a result of new section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on…
Read MoreWhen is a Statement of Grant of Protection issued for an international design application?
A Statement of Grant of Protection is issued by the United States Patent and Trademark Office (USPTO) after a patent has been granted on an international design application that designates the United States. This occurs specifically for nonprovisional international design applications. According to MPEP 2940: “Upon issuance of a patent on a nonprovisional international design…
Read MoreWhen should an examiner search for foreign patents under pre-AIA 35 U.S.C. 102(d)?
An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this: “The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent…
Read MoreWhen can an ex parte reexamination be requested?
According to MPEP 2211, an ex parte reexamination can be requested “at any time during the period of enforceability of a patent“. This is established by 37 CFR 1.510(a). The period of enforceability is generally determined by adding 6 years to the patent’s expiration date, but may be extended in cases of pending litigation. To…
Read MoreWhen is a replacement “Sequence Listing XML” required in a patent application?
A replacement “Sequence Listing XML” is required in a patent application under the following circumstances: When errors are identified in a previously submitted “Sequence Listing XML” When the previously submitted “Sequence Listing XML” fails to comply with 37 CFR 1.831 – 1.834 When the applicant chooses to amend a previously submitted “Sequence Listing XML” According…
Read MoreWhen might an applicant need to replace a biological deposit?
An applicant might need to replace a biological deposit when the original deposit is no longer viable. According to the MPEP, “Replacement will typically take place where the earlier deposit is no longer viable.” This could occur if the deposited material has degraded, lost its ability to replicate, or become contaminated to the point where…
Read MoreWhen must an applicant provide a certified translation for a foreign benefit application?
According to MPEP 2304.01(c), an applicant must provide a certified translation of a foreign benefit application when: The foreign benefit application or PCT application is not filed in English The examiner requires the applicant to file a certified translation The applicant wants to be accorded the benefit of the non-English language application The MPEP states:…
Read MoreWhen is a priority showing required in patent applications?
A priority showing is required in the following circumstances: When complying with 37 CFR 41.202(a)(2) to suggest an interference To overcome a rejection based on pre-AIA 35 U.S.C. 102(a) or 102(e) when an affidavit is not permitted under 37 CFR 1.131(a)(1) When the examiner requires it due to the application’s earliest constructive reduction-to-practice being later…
Read MoreWhen is a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) issued?
A Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in two main scenarios: When all claims are rejected or objected to in the prior Office action, the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. When at least one claim is free of…
Read MoreWhen is an Inter Partes Reexamination Certificate issued?
An Inter Partes Reexamination Certificate is issued at the conclusion of an inter partes reexamination proceeding. According to MPEP 2688: “Since abandonment is not possible in a reexamination proceeding, an inter partes reexamination certificate will be issued at the conclusion of the proceeding for each patent in which a reexamination proceeding has been ordered under…
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