How does the USPTO presume inventorship in patent applications?
The USPTO generally presumes that the named inventors in a patent application are the true inventors of the claimed subject matter. This presumption is mentioned in MPEP 2157: “The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors to be named on the patent. See…
Read MoreHow does the USPTO process international design applications designating the United States?
The United States Patent and Trademark Office (USPTO) processes international design applications designating the United States as follows: The USPTO examines the application according to U.S. law, as stated in 35 U.S.C. 389(a). No additional submissions are required from the applicant to initiate examination. Published international design registrations designating the U.S. are automatically received from…
Read MoreWhat is the interim procedure for requesting PTA recalculation when the USPTO fails to recognize a timely filed safe harbor statement?
The USPTO has created an interim procedure for requesting patent term adjustment (PTA) recalculation when the Office fails to recognize a timely filed safe harbor statement. Key points of this procedure include: Use of form PTO/SB/134 instead of the standard request under 37 CFR 1.705(b) Waiver of the fee set forth in 37 CFR 1.18(e)…
Read MoreCan the USPTO grant an interim extension without a request from the applicant?
Yes, the USPTO can grant an interim extension without a request from the applicant. According to MPEP 2755.01: “The Director may issue interim extensions, without a request by the applicant, for periods of up to one year each until a final determination is made.“ However, the MPEP also advises: “The Director may issue an interim…
Read MoreCan the USPTO initiate ex parte reexamination on its own?
Yes, the USPTO can initiate ex parte reexamination on its own. According to MPEP 2212: “It is also possible for the Director of the Office to initiate reexamination on the Director’s own initiative under 37 CFR 1.520.“ This means that the Director of the USPTO has the authority to start an ex parte reexamination process…
Read MoreHow does the USPTO handle inherency rejections for compositions or products?
How does the USPTO handle inherency rejections for compositions or products? The USPTO has specific guidelines for handling inherency rejections for compositions or products. According to MPEP 2112: “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” For compositions or products, the MPEP…
Read MoreWhat information does the USPTO request from regulatory agencies to determine patent term extension eligibility?
The USPTO requests specific information from regulatory agencies to help determine patent term extension eligibility. According to the MPEP, this information typically includes: Verification of whether the product underwent a regulatory review period within the meaning of 35 U.S.C. 156(g) prior to commercial marketing or use Confirmation that the marketing permission was for the first…
Read MoreHow does the USPTO handle rejections based on lack of utility and enablement?
The USPTO handles rejections based on lack of utility (35 U.S.C. 101) and lack of enablement (35 U.S.C. 112(a)) separately to avoid confusion. The MPEP states: “To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than ‘lack of utility’ should be imposed…
Read MoreWhat happens if reexamination proceedings are not merged?
When reexamination proceedings are not merged, they are typically conducted separately to maintain the “special dispatch” requirement. As explained in MPEP 2686.01: “If the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no…
Read MoreHow does the USPTO handle cases where a biological deposit becomes unavailable?
When the USPTO becomes aware that a biological deposit referenced in a patent application is unavailable, it takes the following steps: The examiner treats the application as if no deposit existed. The applicant may be required to make a replacement or supplemental deposit. The new deposit must satisfy the requirements for patentability under 35 U.S.C.…
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