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The New Patent Rules and Related Applications: Disclosure Requirements of 37 CFR 1.78(f)






By Terry W. Kramer and Lorenz Siddiqi of Kramer & Amado, P.C.

Kramer & Amado, P.C. focuses on ­intellectual property law and patent research services. Mr. Kramer may be ­contacted at 703-519-9804, and by email at terry@KramerAmado.com.

Mr. Siddiqi at 703-519-9801 ext. 147, and by email at lsiddiqi@KramerAmado.com.

The United States Patent and Trademark Office (PTO) has promulgated a set of new regulations dealing with patent prosecution, effective November 1, 2007. While these rules will be applicable to new patent applications filed after that date, many currently pending applications may be subject to these new rules as well. This retroactive action has important consequences for currently pending applications which may not be in compliance with new rules. This article discusses the new patent regulations dealing with disclosure requirements of related pending and patented applications.

The New Rule 1.78(f)(1)

The PTO now requires that applicants submit a statement identifying related pending or patented nonprovisional applications.  In particular, applicants must disclose the existence of nonprovisional applications which:

(A) …has a filing date that is the same or within two months of the filing date of the other pending or patented nonprovisional application.;

(B) …names at least one inventor...

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