Can US applicants file international design applications directly with WIPO?
Yes, US applicants can file international design applications directly with the World Intellectual Property Organization (WIPO). MPEP 2905 states: “If the applicant is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, the international design application may be…
Read MoreHow does the Uruguay Round Agreements Act affect patent terms?
How does the Uruguay Round Agreements Act affect patent terms? The Uruguay Round Agreements Act (URAA) had a significant impact on patent terms in the United States. As explained in MPEP 2701: “The 20-year patent term presented in 35 U.S.C. 154(a)(2) is not applicable to all patents. The 20-year term applies only to patents issued…
Read MoreCan the best mode requirement be updated after the initial patent filing?
No, the best mode requirement cannot be updated after the initial patent filing. The MPEP 2165.01 clearly states: “There is no requirement to update in the context of a foreign priority application under 35 U.S.C. 119, Standard Oil Co. v. Montedison, S.p.A., 494 F.Supp. 370, 206 USPQ 676 (D.Del. 1980) (better catalyst developed between Italian…
Read MoreHow should a patent owner update their address for reexamination proceedings?
To update their address for reexamination proceedings, a patent owner should: File a properly signed paper in the patent file identifying the new address Include a request that the new address be used for all future communications related to reexamination proceedings As stated in MPEP 2222: “A change of address filed in a patent application…
Read MoreHow do I update my address for patent correspondence with the USPTO?
How do I update my address for patent correspondence with the USPTO? To update your address for patent correspondence with the USPTO: Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012. Use Form PTO/SB/122 for applications filed before September 16, 2012. Submit the form to the USPTO’s…
Read MoreHow do I update or correct the name of the applicant in an international design application?
To update or correct the name of the applicant in a nonprovisional international design application, you need to: Submit a corrected Application Data Sheet (ADS) under 37 CFR 1.76 Specify the correct or updated name of the applicant in the applicant information section Identify the information being changed with underlining for insertions and strike-through or…
Read MoreHow does the USPTO handle an untimely or inappropriate comment from a third party requester in inter partes reexamination?
According to MPEP 2666.10, if a third party requester files an untimely or inappropriate comment, notice of appeal, or brief in an inter partes reexamination, the USPTO will refuse consideration of the paper. Specifically: “If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination,…
Read MoreWhat happens to untimely submissions in ex parte reexamination?
Untimely submissions in ex parte reexamination are generally not considered and may be returned to the sender. MPEP 2252 states: “Untimely submissions will ordinarily not be considered. Untimely submissions, other than untimely papers filed by the patent owner after the period set for response, will not be placed of record in the reexamination file but…
Read MoreCan papers filed untimely in inter partes reexamination be considered later in the proceedings?
Yes, papers that were initially considered untimely and returned or expunged in inter partes reexamination can potentially be considered later in the proceedings. According to MPEP 2625: “If the submission of the returned/expunged papers is appropriate later in the proceedings, they may be filed, and accepted by the Office, at that time.” This provision allows…
Read MoreWhat is the significance of unsuccessful attempts to prepare a compound in prior art?
Unsuccessful attempts to prepare a compound disclosed in prior art can be significant in demonstrating that the prior art lacks an enabling disclosure. According to MPEP 2121.02: “When a prior art reference merely discloses the structure of the claimed compound, evidence showing that attempts to prepare that compound were unsuccessful before the relevant time will…
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