37 C.F.R. § 1.251

Unlocatable file

Read at: eCFRecfr.gov CornellLII GovInfogovinfo.gov CasesGoogle Scholar

(a) In the event that the Office cannot locate the file of an application, patent, or other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.

(1) Applicant or patentee may comply with a notice under this section by providing:

(i) A copy of the applicant's or patentee's record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents);

(ii) A list of such correspondence; and

(iii) A statement that the copy is a complete and accurate copy of the applicant's or patentee's record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant's or patentee's records.

(2) Applicant or patentee may comply with a notice under this section by:

(i) Producing the applicant's or patentee's record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and

(ii) Providing a statement that the papers produced by applicant or patentee are applicant's or patentee's complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant's or patentee's records.

(3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.

(b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.

[65 FR 69451, Nov. 17, 2000]

Notes of Decisions

Cited in 5 cases, 1967–1986 · leading case: Frank E. Paulik & Robert G. Schultz v. Nabil Rizkalla & Charles N. Winnick, 760 F.2d 1270 (Fed. Cir. 1985).

Sort: Relevance Newest Treatment

Frank E. Paulik & Robert G. Schultz v. Nabil Rizkalla & Charles N. Winnick, 760 F.2d 1270 (Fed. Cir. 1985). · cites it 2× “The Board relied on the provision in 37 C.F.R. § 1.251 (b) that only rebuttal testimony can be taken during the rebuttal period, and held that since Rizkalla had taken no testimony during the period assigned to him for that purpose, there was nothing to rebut.”

Holmes v. Kelly, 586 F.2d 234 (C.C.P.A. 1978). · cites it 2× “The board noted that the test is not whether the Holmes disclosure might lead a skilled worker to the method of the counts, but whether there is an unequivocal disclosure. The affidavit of Fuller and Vest was not considered because it was not submitted in accordance with 37 CFR…”

Montecatini Edison S. P. A. v. E. I. Du Pont De Nemours & Co., 434 F.2d 70 (3rd Cir. 1970). “See Patent Office Rule 251, 37 CFR 1.251. The present litigation is ancillary to interference No.”

Hogan v. Zletz, 43 F.R.D. 308 (N.D. Okla. 1967). “Pursuant to Patent Office Rule 251(a) (37 C.F.R. 1.251(a)) Natta et al now has the opportunity to attack the sufficiency of the testimony-in-chief and the instant Motion seeks the documentation favorable to its priority date from the files of the juniormost party for use in…”

Frank E. Paulik & Robert G. Schultz v. Nabil Rizkalla & Charles N. Winnick, 796 F.2d 456 (Fed. Cir. 1986). “We also held that the Board did not abuse its discretion when it excluded, based on 37 C.F.R. § 1.251 (b), certain evidence that Paulik sought to introduce during the rebuttal period, because it was not rebuttal evidence.”

— 37 C.F.R. § 1.251(a) — 1 case

— 37 C.F.R. § 1.251(b) — 1 case

Holmes v. Kelly, 586 F.2d 234 (C.C.P.A. 1978). “The board noted that the test is not whether the Holmes disclosure might lead a skilled worker to the method of the counts, but whether there is an unequivocal disclosure. The affidavit of Fuller and Vest was not considered because it was not submitted in accordance with 37 CFR…”

Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.