When is a Patentability Report not appropriate in patent examination?

Patentability Reports are not always the most efficient or appropriate method for patent examination. MPEP 705.01(e) outlines situations where Patentability Reports are ordinarily not proper:

“Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.”

Additionally, Patentability Reports are generally not appropriate in the following situations:

• Claims related to a manufacturing process and a product defined by that process
• Claims related to a product and a process involving merely the fact that a product with certain characteristics is made
• Claims related to a combination distinguished solely by the characteristics of a subcombination

The MPEP emphasizes that Patentability Reports should only be used when they save total examiner time or result in improved quality of action due to specialized knowledge.

To learn more:

• Patentability Report
• USPTO Procedure
• Patent Examination
• Claim Scope

To learn more:

• Manufacturing Process
• Product Claims