How does the USPTO handle paper files in the interference process?
The USPTO has transitioned most application files to the Image File Wrapper (IFW) system, but some older files may still exist in paper form. The MPEP 2304.01(b) addresses this issue: “Although the official records for most applications have been converted into Image File Wrapper (IFW) files, some records exist only in paper form, particularly older…
Read MoreWhat is the requirement for notifying the USPTO about other post-patent proceedings during supplemental examination?
According to MPEP 2820, patent owners must notify the USPTO as soon as possible about any other prior or concurrent post-patent Office proceedings involving the patent under supplemental examination. This requirement is outlined in 37 CFR 1.620(d), which states: “The patent owner must, as soon as possible upon the discovery of any other prior or…
Read MoreWhat is the time limit for the USPTO to issue a Notification of Refusal?
According to MPEP 2920.05(a), the USPTO has 12 months from the publication of the international registration to issue a Notification of Refusal. Specifically, the MPEP states: “In accordance with 37 CFR 1.1062(b), a notification of refusal is to be sent to the International Bureau within 12 months from the publication of the international registration where…
Read MoreWhat information must be included in a Notification of Refusal?
According to MPEP 2920.05(a) and 37 CFR 1.1063(a), a Notification of Refusal must contain or indicate: The number of the international registration The grounds on which the refusal is based A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity…
Read MoreHow does the USPTO communicate defective papers in ex parte reexamination?
The USPTO uses specific forms to communicate defective papers in ex parte reexamination, depending on who requested the reexamination. According to MPEP 2296, there are two forms for this purpose: PTOL-475: Notice of Defective Paper In Ex Parte Reexamination – Third Party Requested PTO-2311: Notice of Defective Paper in Ex Parte Reexamination – Patent Owner…
Read MoreWhat notice does the USPTO issue when granting a filing date for a supplemental examination request?
When the USPTO grants a filing date to a supplemental examination request, it issues a formal notice to the patent owner. According to MPEP 2812.01: “If the request is granted a filing date, the Office will mail a ‘Notice of Supplemental Examination Request Filing Date’.” This notice serves as official confirmation that the supplemental examination…
Read MoreHow does the USPTO provide notice for reexamination requests under 35 U.S.C. 302?
The USPTO provides notice for reexamination requests filed under 35 U.S.C. 302 through publication in the Official Gazette. This is particularly important when direct communication with the patent owner is not possible. MPEP 2230 states: “The publication in the Official Gazette of (A) the notice of the filing of a request for reexamination filed under…
Read MoreHow does the USPTO handle newly discovered prior art in inter partes reexamination when there’s concurrent litigation?
The USPTO’s handling of newly discovered prior art in inter partes reexamination with concurrent litigation is as follows: Estoppel under 35 U.S.C. 317(b) does not apply to newly discovered prior art unavailable during the litigation. The patent owner must show that the art was known to the requester at a time when it could have…
Read MoreWhat happens if the USPTO fails to issue a determination on a supplemental examination request within 3 months?
According to MPEP 2816, if the USPTO fails to issue a determination on a supplemental examination request within 3 months, the following occurs: “If the Office does not issue a determination on the request within 3 months, supplemental examination is deemed to be concluded.” This means that even if the USPTO doesn’t respond within the…
Read MoreWhat information does the USPTO provide in response to maintenance fee status requests?
When responding to maintenance fee status requests, the USPTO provides comprehensive information about the patent’s maintenance fee history. According to MPEP 2570: “The Office will provide the status including the amount of any maintenance fee paid, the date paid, and any expiration date.” This information typically includes: The current status of the patent (active or…
Read More