When can a patent examiner require evidence of utility or operativeness?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. According to MPEP 716.08 , patent examiners can require evidence of utility or operativeness in certain circumstances. The section refers to MPEP § 2107.02 for specific guidance: “See MPEP § 2107.02, for guidance on when it is proper to require evidence of utility or operativeness, and how to evaluate any evidence which is submitted to overcome a rejection under 35 U.S.C. 101 for lack of utility.” Generally, examiners may request such evidence when there are reasonable doubts about the utility or operability of the claimed invention. This could occur if the invention seems to contradict established scientific principles or if the applicant’s disclosure lacks sufficient detail to demonstrate utility. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Specific Rejection Under 35 U.S.C. 101 Must Be Supported MPEP 2107.02 Requirement for Operativeness Evidence When Likelihood Uncertain MPEP 2107.02 Evidence of Utility Does Not Need to Be Statistically Certain MPEP 2107.02 Required Guidance for Utility and Operativeness Evidence in Rejections Under 35 U.S.C. 101 MPEP 716.08 Requirement for Sufficient Evidence of Operativeness MPEP 2107.02 Recommended Requirement for Specific and Substantial Utility of Invention MPEP 2107.02 Requirement for Specific and Substantial Utility MPEP 2107.02 Permitted Requirement for Specific and Substantial Utility MPEP 2107.02 Recommended Requirement for Specific and Substantial Utility Description MPEP 2107.02 Recommended Assertion of Utility Creates Presumption Satisfying Section 101 Utility Requirement MPEP 2107.02 Other Related FAQs 5 FAQs Collapse How does the USPTO evaluate evidence of utility in patent applications? How does the USPTO...