Question 1

What search tools are recommended in MPEP 904 for patent examiners?

Accepted Answer

MPEP 904 recommends several search tools for patent examiners to conduct thorough prior art searches:

Classification indices (e.g., CPC, USPC)
Patent databases (e.g., USPTO, EPO, JPO)
Non-patent literature databases
Internet search engines
Specialized technical databases

The MPEP emphasizes the importance of using multiple tools: "In addition to searching the invention as described in the disclosure, it is necessary to search for all claimed elements." (MPEP 904)

Examiners are encouraged to use a combination of these tools to ensure comprehensive coverage of potential prior art sources.

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Question 2

What is the Scientific and Technical Information Center (STIC)?

Accepted Answer

The Scientific and Technical Information Center (STIC) is a resource for patent examiners located at the Remsen Building in Alexandria, VA. As stated in the MPEP 901.06(a):

"The main Scientific and Technical Information Center (STIC) is located at the Remsen Building, Room 1D58, 400 Dulany Street, Alexandria, VA 22314. STIC maintains Electronic Information Centers (EICs) in each Technology Center (TC) whose mission is to assist patent examiners in the patent process by providing fast, accurate, prior art searches, document deliver services, the provision of foreign patent copies, translations of foreign documents, and access to non-patent literature in electronic format and in print."

STIC provides essential resources and services to support patent examiners in their work, including access to technical literature, foreign patent documents, and search services.

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Question 3

What is the purpose of a search strategy in patent examination?

Accepted Answer

A search strategy in patent examination serves several important purposes:

To identify the most relevant prior art for determining patentability
To ensure a comprehensive and efficient search process
To guide the examiner through various search resources
To document the search process for future reference

According to MPEP 904, "In the examination of an application for patent, an examiner must conduct a thorough search of the prior art." A well-planned search strategy helps examiners fulfill this requirement effectively.

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search strategy
patent examination
prior art
MPEP 904

Question 4

How is the interference search documented in the patent application file?

Accepted Answer

Proper documentation of the interference search is crucial in the patent examination process. The MPEP 2304.01(a) states:

"The interference search must be made of record in the application file. See MPEP § 719.05, subsection III."

This requirement ensures transparency and provides a clear record of the search conducted. The documentation typically includes the search strategy, databases searched, and the results of the search. This record is important for both the current examination and any future reviews or proceedings related to the application.

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Question 5

How does the USPTO define a "complete search" for patent applications?

Accepted Answer

The USPTO defines a "complete search" for patent applications as one that covers the disclosed invention and the state of the art as thoroughly as possible within reasonable time and with reasonable effort. According to MPEP 904.02:

"The U.S. Patent and Trademark Office has traditionally attempted to provide the most thorough search possible within the limitations of time and expense."

This means that examiners are expected to conduct a comprehensive search that balances thoroughness with practical constraints. The search should cover all aspects of the claimed invention and relevant prior art to ensure a fair and accurate examination process.

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Question 6

What are the consequences of including offensive content in a patent application?

russ.krajec@blueironip.com · Accepted Answer

Including offensive content in a patent application can have significant consequences. According to MPEP 608:

The examiner will object to the offensive language or drawings.
The application will not be classified for publication under 35 U.S.C. 122(b).
The examiner will not pass the application to issue until the offensive content is removed.

The MPEP states, "An application should not be classified for publication under 35 U.S.C. 122(b) and an examiner should not pass the application to issue until such language or drawings have been deleted, or questions relating to the propriety thereof fully resolved." This policy ensures that federal government publications maintain appropriate standards of decorum and courtesy.

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Question 7

Does filing an interim copy replace the need for a certified copy of the foreign application?

russ.krajec@blueironip.com · Accepted Answer

No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point:

Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.

In essence, the interim copy allows applicants to meet initial deadlines, but they must still provide a certified copy of the foreign application during the pendency of the U.S. application, unless they file a specific petition.

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Question 8

What is the Alice/Mayo test for patent subject matter eligibility?

Accepted Answer

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

"The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). ... If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception."

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

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What search tools are recommended in MPEP 904 for patent examiners?

Hacking the business plan for startup funding

What is the Scientific and Technical Information Center (STIC)?

What is the purpose of a search strategy in patent examination?

How is the interference search documented in the patent application file?

How does the USPTO define a “complete search” for patent applications?

USPTO Request for Comment Docket No. PTO-P-2022-0025

What are the consequences of including offensive content in a patent application?

Does filing an interim copy replace the need for a certified copy of the foreign application?

What is the Alice/Mayo test for patent subject matter eligibility?