justicedao/patent-legal-corpus huggingface dataset:
37 CFR 42.80 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Certificate.

§ 42.80 Certificate. After the Board issues a final written decision in an inter partes review, post-grant review, or covered business method patent review and the time for appeal has expired or any appeal has terminated, the Office will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any new or amended claim determined to be patentable by operation of the certificate.
37 CFR 42.8 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Mandatory notices.

§ 42.8 Mandatory notices. (a) Each notice listed in paragraph (b) of this section must be filed with the Board: (1) By the petitioner, as part of the petition; (2) By the patent owner, or applicant in the case of derivation, within 21 days of service of the petition; or (3) By either party, within 21 days of a change of the information listed in paragraph (b) of this section stated in an earlier paper. (b) Each of the following notices must be filed: (1) Real party-in-interest. Identify each real party-in-interest for the party. (2) Related matters. Identify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding. (3) Lead and back-up counsel. If the party is represented by counsel, then counsel must be identified. (4) Service information. Identify (if applicable): (i) An electronic mail address; (ii) A postal mailing address; (iii) A hand-delivery address, if different than the postal mailing address; (iv) A telephone number; and (v) A facsimile number.
37 CFR 42.9 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Action by patent owner.

§ 42.9 Action by patent owner. (a) Entire interest. An owner of the entire interest in an involved application or patent may act to the exclusion of the inventor ( see § 3.71 of this title). (b) Part interest. An owner of a part interest in the subject patent may move to act to the exclusion of an inventor or a co-owner. The motion must show the inability or refusal of an inventor or co-owner to prosecute the proceeding or other cause why it is in the interests of justice to permit the owner of a part interest to act in the trial. In granting the motion, the Board may set conditions on the actions of the parties.
37 CFR 5.12 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Petition for license.

§ 5.12 Petition for license. (a) Filing of an application in the United States Patent and Trademark Office on an invention made in the United States will be considered to include a petition for license under 35 U.S.C. 184 for the subject matter of the application. The filing receipt or other official notice will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section. (b) A petition for license must include the fee set forth in § 1.17(g) of this chapter, the petitioner's address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner. The petition should be presented in letter form. [48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 FR 53204, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000; 69 FR 56546, Sept. 21, 2004; 80 FR 17970, Apr. 2, 2015; 85 FR 61607, Sept. 30, 2020]
37 CFR 5.13 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Petition for license; no corresponding application.

§ 5.13 Petition for license; no corresponding application. If no corresponding national, international design, or international application has been filed in the United States, the petition for license under § 5.12(b) must also be accompanied by a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted. [80 FR 17970, Apr. 2, 2015]
37 CFR 5.14 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Petition for license; corresponding U.S. application.

§ 5.14 Petition for license; corresponding U.S. application. (a) When there is a corresponding United States application on file, a petition for license under § 5.12(b) must also identify this application by application number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application. (b) Two or more United States applications should not be referred to in the same petition for license unless they are to be combined in the foreign or international application, in which event the petition should so state and the identification of each United States application should be in separate paragraphs. (c) Where the application to be filed or exported abroad contains matter not disclosed in the United States application or applications, including the case where the combining of two or more United States applications introduces subject matter not disclosed in any of them, a copy of the application as it is to be filed or exported abroad, must be furnished with the petition. If, however, all new matter in the application to be filed or exported is readily identifiable, the new matter may be submitted in detail and the remainder by reference to the pertinent United States application or applications. (Pub. L. 94-131, 89 Stat. 685) [43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984; 62 FR 53204, Oct. 10, 1997; 80 FR 17970, Apr. 2, 2015]
37 CFR 5.18 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Arms, ammunition, and implements of war.

§ 5.18 Arms, ammunition, and implements of war. (a) The exportation of technical data relating to arms, ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of State (22 CFR parts 120 through 130); the articles designated as arms, ammunitions, and implements of war are enumerated in the U.S. Munitions List (22 CFR part 121). However, if a patent applicant complies with regulations issued by the Commissioner for Patents under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner for Patents is required by the provisions of §§ 5.11 and 5.12 (22 CFR part 125). (b) When a patent application containing subject matter on the Munitions List (22 CFR part 121) is subject to a secrecy order under § 5.2 and a petition is made under § 5.5 for a modification of the secrecy order to permit filing abroad, a separate request to the Department of State for authority to export classified information is not required (22 CFR part 125). [62 FR 53205, Oct. 10, 1997]
37 CFR 5.19 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Export of technical data.

§ 5.19 Export of technical data. (a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the Department of Commerce, a license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office. (b) An export license is not required for data contained in a patent application prepared wholly from foreign-origin technical data where such application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office (15 CFR 734.10(a)). [70 FR 56129, Sept. 26, 2005]
37 CFR 5.20 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Export of technical data relating to sensitive nuclear technology.

§ 5.20 Export of technical data relating to sensitive nuclear technology. Under regulations (10 CFR 810.7) established by the United States Department of Energy, an application filed in accordance with the regulations (§§ 5.11 through 5.25) of the Patent and Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is considered to be information available to the public in published form and a generally authorized activity for the purposes of the Department of Energy regulations. [62 FR 53205, Oct. 10, 1997]
37 CFR 5.25 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Petition for retroactive license.

§ 5.25 Petition for retroactive license. (a) A petition for a retroactive license under 35 U.S.C. 184 shall be presented in accordance with § 5.13 or § 5.14(a), and shall include: (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed, (2) The dates on which the material was filed in each country, (3) A verified statement (oath or declaration) containing: (i) An averment that the subject matter in question was not under a secrecy order at the time it was filed aboard, and that it is not currently under a secrecy order, (ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and (iii) An explanation of why the material was filed abroad through error without the required license under § 5.11 first having been obtained, and (4) The required fee (§ 1.17(g) of this chapter). (b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error should include statements by those persons having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing. The acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings. (c) If a petition for a retroactive license is denied, a time period of not less than thirty days shall be set, during which the petition may be renewed. Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181 within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 will be made. [49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 FR 53206, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004; 77 FR 48826, Aug. 14, 2012]
37 CFR 5.2 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Secrecy order.

§ 5.2 Secrecy order. (a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for Patents. (b) Any request for compensation as provided in 35 U.S.C. 183 must not be made to the Patent and Trademark Office, but directly to the department or agency which caused the secrecy order to be issued. (c) An application disclosing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section also falls within the scope of such secrecy order. Any such application that is pending before the Office must be promptly brought to the attention of Licensing and Review, unless such application is itself under a secrecy order pursuant to paragraph (a) of this section. Any subsequently filed application containing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section must either be hand-carried to Licensing and Review or mailed to the Office in compliance with § 5.1(a). [24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000]
37 CFR 5.3 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Prosecution of application under secrecy orders; withholding patent.

§ 5.3 Prosecution of application under secrecy orders; withholding patent. Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section: (a) National applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the Commissioner for Patents will not be set for hearing until the secrecy order is removed. (b) An interference or derivation will not be instituted involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the application remains under a secrecy order. (c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under § 1.311 of this chapter) does not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under § 1.311 of this chapter, or take such other action as may then be warranted. (d) International applications and international design applications under secrecy order will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant. (Pub. L. 94-131, 89 Stat. 685) [43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62 FR 53203, Oct. 10, 1997; 69 FR 50002, Aug. 12, 2004; 77 FR 46629, Aug. 6, 2012; 80 FR 17969, Apr. 2, 2015]
37 CFR 5.4 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Petition for rescission of secrecy order.

§ 5.4 Petition for rescission of secrecy order. (a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate. (b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition. When prior publications or patents are alleged the petition must give complete data as to such publications or patents and should be accompanied by copies thereof. (c) The petition must identify any contract between the Government and any of the principals, under which the subject matter of the application or any significant part thereof was developed, or to which the subject matter is otherwise related. If there is no such contract, the petition must so state. (d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within sixty days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued, will be notified of the time and place of hearing. [24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204, Oct. 10, 1997]
37 CFR 5.5 — Secrecy of Certain Inventions and Licenses to Export and File Applications in Foreign Countries
Current through: 2024-07-01

Permit to disclose or modification of secrecy order.

§ 5.5 Permit to disclose or modification of secrecy order. (a) Consent to disclosure, or to the filing of an application abroad, as provided in 35 U.S.C. 182, shall be made by a “permit” or “modification” of the secrecy order. (b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate. (c) In a petition for modification of a secrecy order to permit filing abroad, all countries in which it is proposed to file must be made known, as well as all attorneys, agents and others to whom the material will be consigned prior to being lodged in the foreign patent office. The petition should include a statement vouching for the loyalty and integrity of the proposed disclosees and where their clearance status in this or the foreign country is known all details should be given. (d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as not taken out of context in a manner disclosing material beyond the modification granted in the first application. (e) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit. To be successful such petitions must ordinarily recite the security clearance status of the disclosees as sufficient for the highest classification of material that may be involved. [24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]
37 CFR 501.10 — Uniform Patent Policy for Rights in Inventions Made by Government Employees
Current through: 2024-07-01

Dissemination of this part and of implementing regulations.

§ 501.10 Dissemination of this part and of implementing regulations. Each Government agency shall disseminate to its employees the provisions of this part, and any appropriate implementing agency regulations and delegations. Copies of any such regulations shall be sent to the Secretary. If the Secretary identifies an inconsistency between this part and the agency regulations or delegations, the agency, upon being informed by the Secretary of the inconsistency, shall take prompt action to correct it.
37 CFR 501.11 — Uniform Patent Policy for Rights in Inventions Made by Government Employees
Current through: 2024-07-01

Submissions and inquiries.

§ 501.11 Submissions and inquiries. All submissions or inquiries should be directed to the Chief Counsel for NIST, National Institute of Standards and Technology, 100 Bureau Drive, Mail Stop 1052, Gaithersburg, MD 20899-1052; telephone: (301) 975-2803; email: nistcounsel@nist.gov. [78 FR 4766, Jan. 23, 2013]
37 CFR 501.1 — Uniform Patent Policy for Rights in Inventions Made by Government Employees
Current through: 2024-07-01

Purpose.

§ 501.1 Purpose. The purpose of this part is to provide for the administration of a uniform patent policy for the Government with respect to the rights in inventions made by Government employees and to prescribe rules and regulations for implementing and effectuating such policy. [61 FR 40999, Aug. 7, 1996]
37 CFR 501.3 — Uniform Patent Policy for Rights in Inventions Made by Government Employees
Current through: 2024-07-01

Definitions.

§ 501.3 Definitions. (a) The term Secretary, as used in this part, means the Director of the National Institute of Standards and Technology. (b) The term Government agency , as used in this part, means any Executive department or independent establishment of the Executive branch of the Government (including any independent regulatory commission or board, any corporation wholly owned by the United States, and the Smithsonian Institution), but does not include the Department of Energy for inventions made under the provisions of 42 U.S.C. 2182, the Tennessee Valley Authority, or the Postal Service. (c) The term Government employee , as used in this part, means any officer or employee, civilian or military, of any Government agency, including any special Government employee as defined in 18 U.S.C. 202 or an individual working for a Federal agency pursuant to the Intergovernmental Personnel Act (IPA), 5 U.S.C. 1304 and 3371-3376, or a part-time consultant or part-time employee as defined in 29 U.S.C. 2101(a)(8) except as may otherwise be provided by agency regulation approved by the Secretary. (d) The term invention , as used in this part, means any art or process, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States. (e) The term made as used in this part in relation to any invention, means the conception or first actual reduction to practice of such invention as stated in In re King , 3 USPQ2d (BNA) 1747 (Comm'r Pat. 1987). [61 FR 40999, Aug. 7, 1996, as amended at 78 FR 4766, Jan. 23, 2013]
37 CFR 501.4 — Uniform Patent Policy for Rights in Inventions Made by Government Employees
Current through: 2024-07-01

Determination of inventions and rights.

§ 501.4 Determination of inventions and rights. Each Government agency has the approval of the Secretary to determine whether the results of research, development, or other activity in the agency constitute an invention within the purview of Executive Order 10096, as amended by Executive Order 10930 and Executive Order 10695, and to determine the rights in and to the invention in accordance with the provisions of §§ 501.6 and 501.7. [61 FR 40999, Aug. 7, 1996]