Can an applicant rebut a prima facie showing of serious search or examination burden?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 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. Yes, an applicant can rebut a prima facie showing of serious search or examination burden made by the examiner. The MPEP 803 states: “A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant.” This means that if an applicant believes the examiner’s justification for a restriction requirement is insufficient or incorrect, they can provide evidence or arguments to challenge the examiner’s assertion of a serious burden. For example, an applicant might demonstrate that the claimed inventions are closely related and would not require substantially different search strategies or raise distinct non-prior art issues. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Prima Facie Showing of Serious Search/Examination Burden MPEP 803 Permitted Requirement for Serious Search Burden MPEP 803 Required Requirement for Showing Non-Prior Art Issues for Separate Inventions MPEP 803 Permitted Requirement for Showing Serious Search Burden MPEP 803 Permitted Merits Examination Required Without Serious Burden MPEP 803 Required Proper Restriction Criteria for Distinct Inventions MPEP 803 Required Restriction Practice for Genus-Species Claims MPEP 803 Obviousness Admission Requires No Restriction MPEP 803 Required Criteria for Restricting Markush Claims MPEP 803 Claims Must Support Separate Patents and Be Independent or Distinct MPEP 803 Required Other Related FAQs 5 FAQs Collapse Are there exceptions to comprehensive patent examination? What is the difference between the 1996 and 2007 USPTO policies on nucleotide sequences? What are the implications of the 2007 USPTO policy change for pending a...