justicedao/patent-legal-corpus huggingface dataset:
37 CFR 1.834 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Form and format for nucleotide and/or amino acid sequence submissions as the “Sequence Listing XML” in patent applications filed on or after July 1, 2022.

§ 1.834 Form and format for nucleotide and/or amino acid sequence submissions as the “Sequence Listing XML” in patent applications filed on or after July 1, 2022. (a) A “Sequence Listing XML” encoded using Unicode UTF-8, created by any means ( e.g., text editors, nucleotide/amino acid sequence editors, or other custom computer programs) in accordance with §§ 1.831 through 1.833, must: (1) Have the following compatibilities: (i) Computer compatibility: PC or Mac®; and (ii) Operating system compatibility: MS-DOS®, MS-Windows®, Mac OS®, or Unix®/Linux®. (2) Be in XML format, where all permitted printable characters (including the space character) and non-printable (control) characters are defined in paragraph 40 of WIPO Standard ST.26 (incorporated by reference, see § 1.839). (3) Be named as *.xml, where “*” is one character or a combination of characters limited to upper- or lowercase letters, numbers, hyphens, and underscores, and the name does not exceed 60 characters in total, excluding the extension. No spaces or other types of characters are permitted in the file name. (b) The “Sequence Listing XML” must be in a single file containing the sequence information and be submitted either: (1) Electronically via the USPTO patent electronic filing system, where the file size must not exceed 100 MB, and file compression is not permitted; or (2) On read-only optical disc(s) in compliance with § 1.52(e), where: (i) A file that is not compressed must be contained on a single read-only optical disc; (ii) The file may be compressed using WinZip®, 7-Zip, or Unix®/Linux® Zip; (iii) A compressed file must not be self-extracting; or (iv) A compressed XML file that does not fit on a single read-only optical disc may be split into multiple file parts, in accordance with the target read-only optical disc size, and labeled in compliance with § 1.52(e)(5)(vi); (c)(1) Unless paragraph (c)(2) of this section applies, when the “Sequence Listing XML” required by § 1.831(a) is submitted in XML file format via the USPTO patent electronic filing system or on a read-only optical disc (in compliance with § 1.52(e)), then the specification must contain a statement in a separate paragraph ( see § 1.77(b)(5)) that incorporates by reference the material in the XML file identifying: (i) The name of the file; (ii) The date of creation; and (iii) The size of the file in bytes; or (2) If the “Sequence Listing XML” required by § 1.831(a) is submitted in XML file format via the USPTO patent electronic filing system or on a read-only optical disc (in compliance with § 1.52(e)) for an international application during the international stage, then an incorporation by reference statement of the material in the XML file is not required. [87 FR 30818, May 20, 2022]
37 CFR 1.839 — [Reserved] Rules of Practice in Patent Cases
Current through: 2024-07-01

Incorporation by reference.

§ 1.839 Incorporation by reference. (a) Certain material is incorporated by reference into this subpart with the approval of the Director of the Federal Register under 5 U.S.C. 552(a) and 1 CFR part 51. All approved incorporation by reference (IBR) material is available for inspection at the USPTO and at the National Archives and Records Administration (NARA). Contact the USPTO's Office of Patent Legal Administration at 571-272-7701. For information on the availability of this material at NARA, email fr.inspection@nara.gov or go to www.archives.gov/federal-register/cfr/ibr-locations.html. The material may be obtained from the source(s) in paragraph (b) of this section. (b) World Intellectual Property Organization (WIPO), 34 chemin des Colombettes, 1211 Geneva 20 Switzerland, www.wipo.int. (1) WIPO Standard ST.26. WIPO Handbook on Intellectual Property Information and Documentation, Standard ST.26: Recommended Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings Using XML (eXtensible Markup Language) including Annexes I-VII, version 1.7, approved December 8, 2023; IBR approved for §§ 1.831 through 1.834. (2) [Reserved] [87 FR 30818, May 20, 2022, as amended at 88 FR 34091, May 26, 2023; 89 FR 36679, May 3, 2024]
37 CFR 1.83 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Content of drawing.

§ 1.83 Content of drawing. (a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation ( e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings. (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith. (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d). [31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60 FR 20226, Apr. 25, 1995; 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct. 21, 2013]
37 CFR 1.85 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Corrections to drawings.

§ 1.85 Corrections to drawings. (a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c), any patent application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination. (b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office. (c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026, as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). [65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct. 21, 2013; 80 FR 17962, Apr. 2, 2015]
37 CFR 1.902 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Processing of prior art citations during an inter partes reexamination proceeding.

§ 1.902 Processing of prior art citations during an inter partes reexamination proceeding. Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510. [72 FR 18906, Apr. 16, 2007]
37 CFR 1.903 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Service of papers on parties in inter partes reexamination.

§ 1.903 Service of papers on parties in inter partes reexamination. The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in § 1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.
37 CFR 1.904 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Notice of inter partes reexamination in Official Gazette.

§ 1.904 Notice of inter partes reexamination in Official Gazette. A notice of the filing of an inter partes reexamination request will be published in the Official Gazette. The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice of the inter partes reexamination proceeding and inter partes reexamination will proceed.
37 CFR 1.905 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Submission of papers by the public in inter partes reexamination.

§ 1.905 Submission of papers by the public in inter partes reexamination. Unless specifically provided for, no submissions on behalf of any third parties other than third party requesters as defined in 35 U.S.C. 100(e) will be considered unless such submissions are in accordance with § 1.915 or entered in the patent file prior to the date of the order for reexamination pursuant to § 1.931. Submissions by third parties, other than third party requesters, filed after the date of the order for reexamination pursuant to § 1.931, must meet the requirements of § 1.501 and will be treated in accordance with § 1.902. Submissions which do not meet the requirements of § 1.501 will be returned.
37 CFR 1.906 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Scope of reexamination in inter partes reexamination proceeding.

§ 1.906 Scope of reexamination in inter partes reexamination proceeding. (a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112. (b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent. (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes reexamination proceeding. If such issues are raised by the patent owner or the third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such issues considered and resolved.
37 CFR 1.907 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Inter partes reexamination prohibited.

§ 1.907 Inter partes reexamination prohibited. (a) Once an order to reexamine has been issued under § 1.931, neither the third party requester, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued under § 1.997, unless authorized by the Director. (b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office. (c) If a final decision in an inter partes reexamination proceeding instituted by a third party requester is favorable to patentability of any original, proposed amended, or new claims of the patent, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claims on the basis of issues which that party, or its privies, raised or could have raised in such inter partes reexamination proceeding.
37 CFR 1.913 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Persons eligible to file, and time for filing, a request for inter partes reexamination.

§ 1.913 Persons eligible to file, and time for filing, a request for inter partes reexamination. (a) Except as provided for in § 1.907 and in paragraph (b) of this section, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501. (b) Any request for an inter partes reexamination submitted on or after September 16, 2012, will not be accorded a filing date, and any such request will not be granted. [76 FR 59057, Sept. 23, 2011]
37 CFR 1.919 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Filing date of request for inter partes reexamination.

§ 1.919 Filing date of request for inter partes reexamination. (a) The filing date of a request for inter partes reexamination is the date on which the request satisfies all the requirements for the request set forth in § 1.915. (b) If the request is not granted a filing date, the request will be placed in the patent file as a citation of prior art if it complies with the requirements of § 1.501. [65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006]
37 CFR 1.91 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Models or exhibits not generally admitted as part of application or patent.

§ 1.91 Models or exhibits not generally admitted as part of application or patent. (a) A model or exhibit will not be admitted as part of the record of an application unless it: (1) Substantially conforms to the requirements of § 1.52 or § 1.84; (2) Is specifically required by the Office; or (3) Is filed with a petition under this section including: (i) The fee set forth in § 1.17(h); and (ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability. (b) Notwithstanding the provisions of paragraph (a) of this section, a model, working model, or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application. (c) Unless the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this section, it must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84. [62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000; 69 FR 56541, Sept. 21, 2004]
37 CFR 1.923 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Examiner's determination on the request for inter partes reexamination.

§ 1.923 Examiner's determination on the request for inter partes reexamination. Within three months following the filing date of a request for inter partes reexamination under § 1.915, the examiner will consider the request and determine whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. The examiner's determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address as provided for in § 1.33(c) and to the third party requester. If the examiner determines that the request has not established a reasonable likelihood that the requester will prevail with respect to at least one of the challenged claims, the examiner shall refuse the request and shall not order inter partes reexamination. [76 FR 59058, Sept. 23, 2011]
37 CFR 1.925 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Partial refund if request for inter partes reexamination is not ordered.

§ 1.925 Partial refund if request for inter partes reexamination is not ordered. Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with § 1.26(c).
37 CFR 1.927 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Petition to review refusal to order inter partes reexamination.

§ 1.927 Petition to review refusal to order inter partes reexamination. The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner's determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, the determination shall be final and nonappealable. [76 FR 59058, Sept. 23, 2011]
37 CFR 1.931 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Order for inter partes reexamination.

§ 1.931 Order for inter partes reexamination. (a) If it is found that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, the determination will include an order for inter partes reexamination of the patent for resolution of the question of whether the requester will prevail. (b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923. [65 FR 76777, Dec. 7, 2000, as amended at 76 FR 59058, Sept. 23, 2011]
37 CFR 1.933 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Patent owner duty of disclosure in inter partes reexamination proceedings.

§ 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings. (a) Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding as set forth in § 1.555(a) and (b). The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in § 1.555(a) and (b). (b) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.906(c).
37 CFR 1.937 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Conduct of inter partes reexamination.

§ 1.937 Conduct of inter partes reexamination. (a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding. (b) The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process, and will result in the issuance of an inter partes reexamination certificate under § 1.997, except as otherwise provided. (c) All communications between the Office and the parties to the inter partes reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding. (d) A petition in an inter partes reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under § 1.956 to extend the period for response by a patent owner, petitions under § 1.958 to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding. [65 FR 76777, as amended at 77 FR 46628, Aug. 6, 2012; 77 FR 48853, Aug. 14, 2012]
37 CFR 1.939 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Unauthorized papers in inter partes reexamination.

§ 1.939 Unauthorized papers in inter partes reexamination. (a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned. (b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.
37 CFR 1.941 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Amendments by patent owner in inter partes reexamination.

§ 1.941 Amendments by patent owner in inter partes reexamination. Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.
37 CFR 1.943 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Requirements of responses, written comments, and briefs in inter partes reexamination.

§ 1.943 Requirements of responses, written comments, and briefs in inter partes reexamination. (a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of § 1.52. (b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references. (c) Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding appendices of claims and reference materials such as prior art references. All other briefs filed by any party shall not exceed fifteen pages in length or 7,000 words. If the page limit for any brief is exceeded, a certificate is required stating the number of words contained in the brief.