How should examiners handle newly discovered references after allowance?
How should examiners handle newly discovered references after allowance?
Examiners have specific procedures for handling newly discovered references after a patent application has been allowed. According to MPEP 707.05:
‘Where patents, publications, and other such items of information are submitted by a party (whether the applicant or an independent third party) after the mailing date of an action or notice of allowance, such documents will not be entered into the application file. (…) However, if a printed copy of the same information is discovered by or brought to the attention of the examiner prior to payment of the issue fee, it should be entered into the application file.’
Key points for examiners:
- If a new reference is discovered before the issue fee is paid, it should be entered into the application file.
- The examiner should consider reopening prosecution if the new reference is material to patentability.
- After the issue fee is paid, new references generally cannot be entered into the application file.
- In exceptional cases, the examiner may request that the application be withdrawn from issue to consider a newly discovered reference.
This process ensures that all relevant prior art is considered up until the point of patent issuance, maintaining the integrity of the examination process.
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