Question 1

What documentation does Rospatent search as an International Searching Authority?

Accepted Answer

What documentation does Rospatent search as an International Searching Authority?

As an International Searching Authority, Rospatent searches specific documentation. The MPEP 1840.04 provides information on this: "The Federal Service for Intellectual Property (Rospatent) (Russian Federation) has agreed to conduct international searches and prepare international search reports for international applications filed with the United States Patent and Trademark Office (USPTO) as receiving Office." While the MPEP doesn't specify the exact documentation, it's understood that Rospatent would search the minimum documentation required under the PCT, which includes patent documents and non-patent literature.

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Question 2

How does the clarity of claims affect the international search and examination process?

Accepted Answer

The clarity of claims plays a crucial role in the international search and examination process under the Patent Cooperation Treaty (PCT). MPEP 1843.03 highlights this importance:

"If the International Searching Authority considers that the description, claims, or drawings are so unclear, or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability of the claimed invention, the Authority shall not go into these issues in its written opinion with regard to the claims so affected."

This means that unclear claims can result in:

Inability to conduct a meaningful search
No substantive written opinion on patentability criteria
Potential delays in the patent examination process

Applicants should ensure their claims are clear and well-supported by the description to facilitate a thorough international search and examination. This is in line with PCT Rule 43bis.1(b) and PCT Rule 66.1(e), which govern the written opinion of the International Searching Authority.

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Question 3

What is the significance of search files in patent examination?

Accepted Answer

Search files play a crucial role in patent examination, as outlined in MPEP 901.06(d). The MPEP emphasizes their importance:

"Abstracts, Abbreviatures, and Defensive Publications are included in the search files."

Search files are comprehensive collections of prior art documents used by patent examiners to evaluate the novelty and non-obviousness of patent applications. These files include various types of publications, such as abstracts, abbreviatures, and defensive publications, which help examiners conduct thorough and efficient prior art searches during the examination process.

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Question 4

Can the international preliminary examination start at the same time as the international search?

Accepted Answer

Yes, under certain conditions, the international preliminary examination can start simultaneously with the international search. MPEP 1879.01 states:

"If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that national Office or intergovernmental organization so wishes and subject to paragraphs (d) and (e), start at the same time as the international search."

Furthermore, if the office acting as both authorities considers that all conditions of Article 34(2)(c)(i) to (iii) are met, they may choose not to establish a separate written opinion under Rule 43bis.1. This provision allows for a more streamlined examination process when the same office performs both the search and preliminary examination.

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Question 5

How does the USPTO determine the field of search for a patent application?

Accepted Answer

The USPTO determines the field of search for a patent application based on the claimed subject matter and its classification. MPEP 904.02(a) states:

"The field of search should extend to all probable areas relevant to the claimed subject matter and should cover the disclosed features which might reasonably be expected to be claimed."

This means that examiners consider:

The subclass where the claimed subject matter would be classified
Analogous areas of domestic and foreign classification
Disclosed features that might be claimed
Probable areas relevant to the claimed subject matter

By considering these factors, examiners can conduct a comprehensive search that covers all relevant areas of prior art.

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Question 6

What is the significance of a "substantial new question of patentability" in supplemental examination?

Accepted Answer

A "substantial new question of patentability" (SNQ) is crucial in supplemental examination as it determines whether further action is necessary. The MPEP 2816.03 states:

"The determination must identify each item of information that raises a substantial new question of patentability."

The significance of an SNQ in supplemental examination includes:

It indicates that the submitted information presents a new, non-cumulative technological teaching
It suggests that the patent's validity may be in question
If an SNQ is found, it triggers an ex parte reexamination
It provides patent owners an opportunity to address potential issues before third parties can challenge the patent

Identifying an SNQ is a critical step in the supplemental examination process, as it determines whether further review of the patent is necessary to ensure its validity.

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SNQ
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Question 7

What is a substantial new question of patentability in inter partes reexamination?

Accepted Answer

A substantial new question of patentability (SNQ) is a key criterion for granting inter partes reexamination requests filed before September 16, 2011. It refers to a question that:

Has not been raised in a previous examination of the patent
Is likely to be considered important by a reasonable examiner in determining patentability
Is based on prior art or other information not previously considered

For example, the MPEP states: As pointed out on pages 2-3 of the request, Smith teaches using an extruder supported on springs at a 30 degree angle to the horizontal but does not teach the specific polymer of claims 1-3 which is extruded. The teaching as to spring-supporting the extruder at 30 degrees was not present in the prosecution of the application which became the Key patent. This new teaching raised an SNQ for the claims in question.

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Question 8

What is a "substantial new question of patentability" in ex parte reexamination?

Accepted Answer

A "substantial new question of patentability" is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209:

"The Office initially determines if 'a substantial new question of patentability' (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered."

This requirement ensures that the USPTO only conducts reexaminations when there are significant new issues to consider regarding the patentability of the claims. It typically involves new prior art or a new interpretation of previously considered prior art that raises questions about the validity of the patent that were not addressed in the original examination.

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Question 9

What is the difference between "a substantial new question of patentability" and a "prima facie case of unpatentability"?

Accepted Answer

The MPEP distinguishes between "a substantial new question of patentability" (SNQ) and a "prima facie case of unpatentability" in the context of patent reexamination. Specifically:

"It is not necessary that a 'prima facie' case of unpatentability exist as to the claim in order for 'a substantial new question of patentability' to be present as to the claim."

This means that an SNQ can exist even if the examiner wouldn't necessarily reject the claim as anticipated by or obvious in view of the prior art. The MPEP emphasizes that this difference is important, citing In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).

In essence, an SNQ is a lower threshold that asks whether the prior art raises a substantial question about patentability, while a prima facie case of unpatentability requires a stronger showing that the claim is actually unpatentable based on the prior art.

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Question 10

What is the difference between supplementary notes and 'See or Search' notes in USPC definitions?

Accepted Answer

The United States Patent Classification (USPC) system includes two types of Definition Notes, as explained in MPEP 902.02(a):

Supplementary notes: These "supplement definitions by explaining terms or giving examples." They provide additional context and clarification for the class or subclass definition.
'See or Search' notes: These refer to "related disclosures located in other classes or subclasses." They help users understand the relationships between different classifications and guide them in expanding their search to related areas.

The key difference is that supplementary notes focus on explaining the current classification, while 'See or Search' notes direct users to other relevant classifications. Both types of notes are crucial for understanding the scope of a classification and conducting thorough prior art searches.

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What documentation does Rospatent search as an International Searching Authority?

How does the clarity of claims affect the international search and examination process?

What is the significance of search files in patent examination?

Can the international preliminary examination start at the same time as the international search?

How does the USPTO determine the field of search for a patent application?

What is the significance of a “substantial new question of patentability” in supplemental examination?

What is a substantial new question of patentability in inter partes reexamination?

What is a “substantial new question of patentability” in ex parte reexamination?

What is the difference between “a substantial new question of patentability” and a “prima facie case of unpatentability”?

What is the difference between supplementary notes and ‘See or Search’ notes in USPC definitions?