When can I change the correspondence address during the patent application process?
The timing for changing the correspondence address depends on the stage of the patent application process: Before filing an oath or declaration: You can change the address as provided in pre-AIA 37 CFR 1.33(a)(1). After filing an oath or declaration: The address can be changed as per pre-AIA 37 CFR 1.33(a)(2). The MPEP states: “The…
Read MoreWhen can a protest be filed in a patent application?
According to MPEP 1901, protests must be filed within specific time frames: With the exception of a protest accompanied by a written consent of the applicant, all protests must be submitted prior to the publication of the application or the date a notice of allowance is given or mailed, whichever occurs first. Additionally, for reissue…
Read MoreWhen can a power of attorney be revoked or an attorney withdraw from a patent case?
According to MPEP 2560, “The revocation or withdrawal of an attorney may be submitted at any time.” However, it’s important to note that “a revocation or withdrawal of an attorney filed after issuance of a patent is not normally processed.” This means that while you can technically submit a revocation or withdrawal at any point,…
Read MoreWhen can a patent examiner reject claims as prolix?
A patent examiner can reject claims as prolix under specific circumstances outlined in MPEP 2173.05(m). The manual states: “Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.” Additionally, claims may be rejected as prolix “when they contain…
Read MoreWhen can an examiner take official notice without documentary evidence?
An examiner can take official notice without documentary evidence in certain circumstances where the facts are considered well-known or common knowledge in the art. According to MPEP 2144.03, this is permissible when the facts are “capable of instant and unquestionable demonstration as being well-known.” The MPEP states: “Official notice without documentary evidence to support an…
Read MoreWhen can an examiner make a rejection based on prosecution laches?
An examiner should exercise caution when considering a rejection based on prosecution laches. According to MPEP 2190: “An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.” This requirement ensures that such rejections are made only in egregious cases of unreasonable and unexplained delay in…
Read MoreWhen does the best mode requirement apply in patent applications?
The best mode requirement applies at the time of filing the patent application. It requires inventors to disclose the best way they know of carrying out their invention at that specific point in time. MPEP 2165.02 clarifies this timing: “If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor]…
Read MoreWhen is an Action Closing Prosecution (ACP) issued in inter partes reexamination?
An Action Closing Prosecution (ACP) is typically issued at specific points in the inter partes reexamination process. According to MPEP 2671.02: 1. When all claims are found patentable in the first action: “When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner…
Read MoreWhen is a 37 CFR 1.131 affidavit not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
A 37 CFR 1.131 affidavit is not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection in certain circumstances. According to the MPEP: “When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration…
Read MoreWhat qualifies as a “printed publication” under 35 U.S.C. 102(a)(1)?
What qualifies as a “printed publication” under 35 U.S.C. 102(a)(1)? A “printed publication” under 35 U.S.C. 102(a)(1) is not limited to traditional paper publications. According to MPEP 2152.02(b), it includes: Paper publications Electronic publications (including web pages) Presentations at scientific meetings Microfilm Computer programs Any other medium that provides information to the public The MPEP…
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