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MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include

Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: a claim; indications concerning the identity of the creator (i.e., the inventor); […]

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MPEP Q & A 81: Items Applicant’s Must Establish Under 35 USC 156

Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that: (1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension […]

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MPEP Q & A 80: Assignments Potentially Utilized as the Oath or Declaration

Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made […]

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MPEP Q & A 79: Factors When Determining Sufficient Evidence Concerning Enablement Requirement

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. Answer: The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does […]

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MPEP Q & A 77: Conclusion of an Inter Partes Reexamination Proceeding

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of the reexamination proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or […]

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MPEP Q & A 76: Filing a Petition for a Covered Business Method Patent Review

Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has […]

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MPEP Q & A 75: Duty of Disclosure in Reexamination Proceedings

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. Chapter Details: The answer to […]

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MPEP Q & A 74: Sources of Information Material to Patentability

Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from or with competitors potential infringers third parties Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers Duty of Disclosure. The answer is from the 9th […]

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MPEP Q & A 73: Contents of an International Application

Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention). Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter […]