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See the ninth revision of the Eighth Edition of the MPEP published August 2012 as posted on the USPTO Web site on the MPEP Archives page ( pac/mpep/old/index.htm) for the text of form paragraphs in force in August 2012 and the prior revision marks.] This Chapter deals with the duties owed toward the U. Patent and Trademark Office by the inventor and every other individual who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor or the inventor’s assignee.

These duties, of candor and good faith and disclosure, have been codified in 37 CFR 1.56, as promulgated pursuant to carrying out the duties of the Director under Sections 2, 3, 131, and 132 of Title 35 of the United States Code.

Innovation and technological advancement are best served when an inventor is issued a patent with the scope of protection that is deserved.

The rules as adopted serve to remind individuals associated with the preparation and prosecution of patent applications of their duty of candor and good faith in their dealings with the Office, and will aid the Office in receiving, in a timely manner, the information it needs to carry out effective and efficient examination of patent applications.

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Unless the applicant makes explicit statements to the contrary, the applicant can almost always add or remove elements from a claim even if that particular combination is not shown.prosecution, the written description requirement is most often applied against newly presented or amended claims. Secondly, this obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U. case, an Applicant is under no obligation to present a rebuttal.This requirement can also be applied against original claims and claims copied to provoke an interference, however. The written description requirement (WDR) requires an Applicant to demonstrate possession of each feature of a claimed invention. So, until the Office has met this initial burden to “fully develop reasons for the rejection by providing “properly reasoned and supported statements,” the obligation to rebut a written description rejection does not shift to the Applicant.The EPO’s new matter is essentially a super strict version of written description where you basically need the precise words and also the precise combination of elements recited. Your “If the original filing anticipates the claim” test looks like the “novelty” test the EPO uses, to check whether a prosecution amendment adds matter.

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The public policy reason to stop Applicants getting to issue with claims that really ought not to enjoy the filing date of the app as the date of their defence against validity attacks is the same in both jurisdictions, yet Americans think EPO is super-strict while Europe thinks the USPTO is super lax.

[Editor Note: This chapter was not substantively revised for the Ninth Edition of the MPEP.



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