Question 1

What is the balance between general and specific guidance for search tool selection in patent examination?

Accepted Answer

The USPTO maintains a balance between providing general guidance and allowing for specific, technology-focused approaches in search tool selection for patent examination. This balance is evident in MPEP 904.02(b), which states:

Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each Technology Center (TC). However, a general methodology following a "decision tree" process, set forth below, for making broad decisions in search tool selection is suggested.

This approach ensures:

A consistent framework across all technology areas through the general "decision tree" methodology.
Flexibility for each Technology Center to develop specialized search strategies.
Adaptability to the unique characteristics of different technological fields.
A standardized starting point for examiners, with room for customization based on TC-specific guidelines.

This balanced approach allows the USPTO to maintain overall consistency while accommodating the diverse needs of various technology sectors in patent examination.

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Question 2

What is an International Search Report in patent law?

Accepted Answer

An International Search Report (ISR) is a crucial document in the Patent Cooperation Treaty (PCT) process. According to MPEP 1844, "The results of the international search are recorded in the international search report (Form PCT/ISA/210), which, together with the written opinion of the International Searching Authority (Form PCT/ISA/237) is transmitted with Form PCT/ISA/220."

The ISR serves several important purposes:

It identifies prior art relevant to the patentability of the invention
It is published by the International Bureau
It serves as a basis for examination of the international application by designated Offices and the International Preliminary Examining Authority

It's important to note that "The search report is only for the purpose of identifying prior art and should not contain any expressions of opinion, reasoning, argument or explanation as to any cited prior art."

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Question 3

What is the purpose of an interference search in patent examination?

Accepted Answer

The purpose of an interference search in patent examination is to identify potentially conflicting applications or patents that could lead to an interference proceeding. According to MPEP 2304.01(a):

"The search should be directed to all subject matter encompassed by the claims, whether or not the claims are limited by an application or patent date."

This search helps examiners determine if there are any pending applications or issued patents with claims that might interfere with the current application's claims, ensuring that only one patent is granted for the same invention.

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Question 4

What are the search file implications of reexamination certificates?

Accepted Answer

Reexamination certificates have important implications for patent search files. The USPTO ensures that an electronic copy of the reexamination certificate is associated with the electronic copy of the patent in the search files.

According to MPEP 2292: "An e-copy of the reexamination certificate will be associated with the e-copy of the patent in the search files." This practice ensures that patent examiners and other users of the USPTO's search files have access to the most up-to-date information about the patent, including any changes resulting from the reexamination process.

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Question 5

When should an examiner search for foreign patents under pre-AIA 35 U.S.C. 102(d)?

Accepted Answer

An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:

"The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country."

The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.

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Question 6

How should an applicant respond to a rejection based on questioned test results?

Accepted Answer

When an applicant faces a rejection based on questioned test results, they have several options for response. According to MPEP 707.07(l):

The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted.

The applicant can:

Provide additional test results or examples to support their claims
Present arguments explaining why the original results should be considered valid
Offer evidence that strongly suggests the predicted results would occur

It's crucial that any new information provided does not introduce new matter into the application, as this could lead to further rejections.

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Question 7

What is the primary guidance for search tool selection in patent examination?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) provides general guidance on search tool selection for patent examiners. According to MPEP 904.02(b), Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each Technology Center (TC). This means that while there are general principles, the specific tools and methods may vary depending on the technological area being examined.

However, the MPEP does suggest a general methodology: a general methodology following a "decision tree" process, set forth below, for making broad decisions in search tool selection is suggested. This decision tree approach provides a structured way for examiners to select appropriate search tools based on the subject matter of the patent application.

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Question 8

What areas should patent examiners focus on during a prior art search?

Accepted Answer

Patent examiners should focus on several key areas during a prior art search, as outlined in MPEP 904.02:

Disclosed features of the invention: Search for prior art related to all aspects of the invention described in the application.
Claimed subject matter: Focus on finding prior art that specifically addresses the claims of the patent application.
Related fields: Explore areas of technology that are related to the invention, even if not directly specified in the application.
Analogous arts: Consider fields that may not be directly related but could contain relevant solutions to the problem addressed by the invention.

The MPEP states:

"The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed."

This guidance ensures that examiners conduct a comprehensive search that captures all potentially relevant prior art, improving the quality and reliability of the patent examination process.

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Question 9

Do certified copies of patent applications include assignment information?

Accepted Answer

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, "Certified copies of patent applications as filed do not include an indication of assignment documents." This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

For more information on assignment documents, visit: assignment documents.

For more information on certified copies, visit: certified copies.

For more information on patent applications, visit: patent applications.

For more information on USPTO, visit: USPTO.

Question 10

Can I obtain a certified copy of a reexamination file?

Accepted Answer

Yes, you can obtain a certified copy of a reexamination file, including non-patent literature. The MPEP states, Also, a certified copy of the reexamination file, including any non-patent literature, may be ordered from the Patent and Trademark Copy Fulfillment Branch (PTCFB) of the Public Records Division (PRD).

To order a certified copy:

Use the PTCFB's Certified Copy Center storefront (preferred method)
Or send a request to: Mail Stop Post Issue, Director of the U.S. Patent & Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
Alternatively, email your request to dsd@uspto.gov

Remember to include the control number of the reexamination proceeding in your order.

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