Why are omnibus claims rejected in patent applications?
Omnibus claims are typically rejected in patent applications because they are considered indefinite. The MPEP 2173.05(r) states: “This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is indefinite in that it fails to point out what is included or excluded by the claim language.” In other…
Read MoreWhy are interferences not declared for applications under secrecy orders?
Interferences are not declared for applications under secrecy orders primarily due to confidentiality concerns. The MPEP 2306 explains: “Once an interference is declared, an opposing party is entitled to access to the application and benefit applications pursuant to 37 CFR 41.109. See MPEP § 2307.02. Consequently, an interference should not be suggested for an application…
Read MoreWhy were inter partes reexamination requests discontinued?
Inter partes reexamination requests were discontinued as part of the changes implemented by the America Invents Act (AIA). While MPEP Section 2619 doesn’t explicitly state the reason, it notes: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was made to streamline patent challenge procedures and replace…
Read MoreWhat is the purpose of requiring an applicant to add a claim under 37 CFR 41.202(c)?
The purpose of requiring an applicant to add a claim under 37 CFR 41.202(c) is to provoke an interference proceeding. According to MPEP 2304.04(b), this requirement may be made “to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will pursue claims to the interfering subject matter.” The MPEP…
Read MoreWhy are ex parte communications prohibited in patent interferences?
Ex parte communications are prohibited in patent interferences to maintain the fairness and integrity of the proceedings. The MPEP 2307.01 explains: “Since an interference involves two or more parties, the integrity of the process requires the opportunity for the opposing party to participate in communications or actions regarding any involved application or patent.” This prohibition…
Read MoreWho is subject to the duty of disclosure in patent term extension proceedings?
The duty of disclosure in patent term extension proceedings applies to a wide range of individuals involved in the process. According to MPEP 2762: “A duty of candor and good faith toward the USPTO, the Secretary of Health and Human Services, and the Secretary of Agriculture rests on the patent owner or its agent, on…
Read MoreWho is responsible for disclosing information to the USPTO?
According to MPEP 2002.01, the responsibility for disclosing information to the United States Patent and Trademark Office (USPTO) can fall on several parties: Attorneys or agents of record Pro se inventors (inventors representing themselves) Other individuals who disclose information to the attorney, agent, or inventor The MPEP states: “37 CFR 1.56(d) makes clear that information…
Read MoreWho processes requests for supplemental examination?
According to MPEP 2812, requests for supplemental examination are processed by the Central Reexamination Unit (CRU) of the USPTO. The MPEP states: “All processing of requests for supplemental examination and of other papers filed in a supplemental examination proceeding and in any resulting ex parte reexamination proceeding will be performed by the staff of the…
Read MoreWho processes reexamination requests in the USPTO?
Reexamination requests are processed by designated personnel in the Central Reexamination Unit (CRU) or Technology Centers (TCs). According to MPEP 2233: “The working groups in the Central Reexamination Unit (CRU) or Technology Centers (TCs) have designated the legal instrument examiners and paralegals to act as reexamination clerks, as part of their assigned duties, and thus…
Read MoreWho owes the duty of disclosure to the USPTO?
The duty of disclosure is owed by all individuals associated with the filing and prosecution of a patent application. This includes inventors, patent attorneys, and anyone else involved in the patent application process. According to MPEP 2001.03, “37 CFR 1.56(a) states that the ‘duty of candor and good faith’ is owed ‘in dealing with the…
Read More