What is the difference between USPTO and court standards in patent validity determinations?
The USPTO and federal courts use different standards when determining patent validity, which can lead to different outcomes. MPEP 2286 explains this distinction: “Specifically, invalidity in a district court must be shown by ‘clear and convincing’ evidence, whereas in the Office, it is sufficient to show unpatentability by a ‘preponderance of evidence.’ Since the ‘clear…
Read MoreHow does the USPTO handle correspondence with patent owners during inter partes reexamination?
The USPTO has specific procedures for handling correspondence with patent owners during inter partes reexamination. According to the MPEP: “Communications from the Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).” This means that the USPTO will send all communications to the address…
Read MoreHow does the USPTO handle correspondence with patent owners in ex parte reexamination proceedings?
The USPTO has specific guidelines for handling correspondence with patent owners during ex parte reexamination proceedings: Correspondence Address: The MPEP states, “Communications from the U.S. Patent and Trademark Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).” No Double Correspondence: “Double correspondence with…
Read MoreWhere does the USPTO send correspondence regarding supplemental examination?
The USPTO sends correspondence regarding supplemental examination to the official correspondence address of the patent. MPEP 2804 states: “Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address…
Read MoreHow does the USPTO handle copending reexamination and interference proceedings?
How does the USPTO handle copending reexamination and interference proceedings? The USPTO handles copending reexamination and interference proceedings as follows: The Board of Patent Appeals and Interferences (BPAI) has jurisdiction over an interference proceeding. The Central Reexamination Unit (CRU) has jurisdiction over any reexamination proceeding. When both proceedings are copending, the BPAI’s jurisdiction over the…
Read MoreWhat happens if the USPTO can’t contact the patent owner during reexamination?
If the USPTO cannot deliver mail to the patent owner due to lack of a current address, and all efforts to correspond fail, the reexamination proceeding will continue without actual notice to the patent owner. In such cases, the USPTO provides constructive notice through publication in the Official Gazette. As stated in MPEP 2230: “The…
Read MoreHow does the USPTO handle confidentiality of sequence data in pending applications?
The USPTO maintains strict confidentiality of sequence data in pending applications, in compliance with 35 U.S.C. 122. The MPEP clarifies: It should be noted that the Office’s database complies with the confidentiality requirement imposed by 35 U.S.C. 122. Unpublished pending application sequences are maintained in the database separately from published or patented sequences. That is,…
Read MoreHow does the USPTO handle confidentiality in material fraud cases?
How does the USPTO handle confidentiality in material fraud cases? The USPTO treats potential material fraud cases with strict confidentiality. According to MPEP 2819: “In order to preserve the confidentiality of any investigation… the employee or program should not discuss the matter with any other employees not having a need to know the information.” This…
Read MoreHow does the USPTO handle concurrent reexamination and interference proceedings?
When reexamination and interference proceedings are concurrent, the USPTO follows specific guidelines to manage both processes. According to MPEP 2686.04: “If a reexamination proceeding is ordered while an interference proceeding is pending, the reexamination proceeding is suspended until the interference proceeding is terminated at the interference level (i.e., the interference is terminated as to the…
Read MoreHow does the USPTO distinguish between improvements to computer functionality and mere automation of manual processes?
The USPTO distinguishes between improvements to computer functionality and mere automation of manual processes by examining the technical nature of the improvement. According to MPEP 2106.04(d)(1): “[I]f the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a…
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