How should material information be submitted in patent term extension proceedings?
Material information in patent term extension proceedings should be submitted promptly and directly to the appropriate authority. According to MPEP 2762: “Any such material information should be submitted to the Director of the United States Patent and Trademark Office, the Secretary of Health and Human Services, or the Secretary of Agriculture, as appropriate, accompanied by…
Read MoreWhat are the requirements for submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC)?
Submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC) requires meeting specific criteria due to the advanced stage of the reexamination process. According to MPEP 2656, the submission must be accompanied by: A factual accounting providing a sufficient explanation of why the information could not have been submitted earlier An unequivocal statement…
Read MoreHow can an applicant submit an Information Disclosure Statement (IDS) for an international design application?
Applicants have multiple options for submitting an Information Disclosure Statement (IDS) for an international design application designating the United States: When filing the application: According to MPEP 2920.05(f), “When filing an international design application, an applicant may submit an IDS using Annex III to the official application form (DM/1 form).” For more information on this…
Read MoreWhat are the requirements for submitting foreign patents and publications in reexamination?
When submitting foreign patents and publications in a reexamination proceeding, there are specific requirements that must be met. According to MPEP 2656: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications…
Read MoreWhat is the proper way to submit corrections to a patent application?
When submitting corrections to a patent application, it’s important to do so in a clear and transparent manner. The MPEP 2011 provides guidance on this process: “In order to assure that any correction is fully considered by the examiner, applicants should file the correction ‘openly’, as in filing the correction under separate cover so that…
Read MoreCan copies of copending reexamination proceedings be submitted during reexamination?
No, copies of copending reexamination proceedings should not be submitted during a reexamination. The MPEP 2656 clearly states: “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 the application/proceeding serial/control number and its…
Read MoreWhat is the process for submitting a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection?
To submit a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection, you must: File a corrected application data sheet (ADS) or amend the specification, depending on the application filing date: For applications filed on or after September 16, 2012: File a corrected ADS under 37 CFR 1.76 with a…
Read MoreHow should patent owners submit amendments in a Reexamination of a Reexamination?
When submitting amendments in a Reexamination of a Reexamination, patent owners must present changes as if the modifications from the previous reexamination certificate are part of the original patent. MPEP 2295 states: “Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text…
Read MoreHow should a petition under 37 CFR 1.377 be addressed and submitted?
The MPEP provides specific instructions for addressing and submitting a petition under 37 CFR 1.377: “Any petition under 37 CFR 1.377 should be marked on the front page of the communication to the attention of the Office of Petitions and addressed as follows: Mail Stop PetitionCommissioner for PatentsP.O. Box 1450Alexandria, Virginia 22313-1450″ It’s crucial to…
Read MoreHow do I submit a Sequence Listing XML file for a national stage application?
How do I submit a Sequence Listing XML file for a national stage application? For national stage applications, you can submit the Sequence Listing XML file in one of two ways: With the initial submission: Include the Sequence Listing XML file with your initial submission documents. After the initial submission: Submit the Sequence Listing XML…
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