How does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings?
When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243: Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will…
Read MoreHow does the USPTO handle post-filing date evidence for enablement?
How does the USPTO handle post-filing date evidence for enablement? The USPTO has specific guidelines for handling post-filing date evidence in relation to enablement. According to MPEP 2164.05(a), “Evidence to support a contention that the specification would have been enabling may be submitted after the filing date without incident.” However, it’s important to note that…
Read MoreWhat are the limitations on patenting ‘products of nature’ under USPTO guidelines?
What are the limitations on patenting ‘products of nature’ under USPTO guidelines? The USPTO has specific guidelines regarding the patentability of ‘products of nature’ as outlined in MPEP 2106.03. While natural products fall within the statutory categories of invention, they are subject to additional scrutiny: “Products of nature are considered to be an exception because…
Read MoreHow does the USPTO handle genus claims when species are disclosed in the prior art?
The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus. The MPEP states: “A genus does not always anticipate a claim…
Read MoreHow does the USPTO handle submissions of copending reexamination proceedings and applications?
The USPTO has specific guidelines for handling submissions related to copending reexamination proceedings and applications. According to the MPEP: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding…
Read MoreWhat forms are used by the USPTO in inter partes reexamination actions?
The USPTO uses several specific forms for inter partes reexamination actions and processing. According to MPEP 2696, these forms include: PTOL-2064: Office Action in Inter Partes Reexamination PTOL-2065: Action Closing Prosecution (37 CFR 1.949) PTOL-2066: Right of Appeal Notice (37 CFR 1.953) PTOL-2068: Notice of Intent to Issue Inter Partes Reexamination Certificate PTOL-2069: Notice of…
Read MoreWhat forms are used in ex parte reexamination proceedings?
The USPTO uses several specific forms for ex parte reexamination actions and processing. Some key forms include: PTOL-471D: Order Denying Request For Ex Parte Reexamination PTOL-471G: Order Granting Request For Ex Parte Reexamination PTOL-466: Office Action in Ex Parte Reexamination PTOL-469: Notice of Intent to Issue Ex Parte Reexamination Certificate As stated in MPEP 2296,…
Read MoreHow does the USPTO treat foreign language publications as prior art?
The USPTO considers foreign language publications as potential prior art, provided they meet the criteria for public accessibility and publication date. According to MPEP 2128: “Prior art publications in a language other than English are considered as prior art as of their publication date, even though an English translation may not be available until a…
Read MoreHow does the USPTO handle submissions from foreign courts?
The United States Patent and Trademark Office (USPTO) has specific guidelines for handling submissions from foreign courts. According to MPEP 2207: “It is to be further noted that 35 U.S.C. 290 is directed to ‘courts of the United States.’ Accordingly, any submission of papers from a court outside the United States (a foreign jurisdiction) will…
Read MoreWhen can the USPTO make a final determination on a patent term extension application?
The USPTO can make a final determination on a patent term extension application at various points in the process. According to MPEP 2755: “A final determination may be made at any time after an application is filed.“ This means that once an applicant submits their patent term extension application, the USPTO has the authority to…
Read More