Q: What subject matter is exempt from international search requirements?

According to MPEP 1843.02 , certain subject matter is not required to be searched by International Searching Authorities. These include: Scientific and mathematical theories Plant or animal varieties or essentially biological processes for their production Schemes, rules, or methods of doing business, performing purely mental acts, or playing games Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods Mere presentations of information Computer programs (to the extent that the Authority is not equipped to search prior art) The MPEP states: " No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following: " followed by the list above. However, it's important to note that " the U.S. Patent and Trademark Office has declared that it will search and examine all subject matter searched and examined in U.S. national applications. " To learn more: International Search PCT Patent Cooperation Treaty Excluded Subject Matter USPTO Policy

Question 1

What subject matter is exempt from international search requirements?

Accepted Answer

According to MPEP 1843.02, certain subject matter is not required to be searched by International Searching Authorities. These include:

Scientific and mathematical theories
Plant or animal varieties or essentially biological processes for their production
Schemes, rules, or methods of doing business, performing purely mental acts, or playing games
Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods
Mere presentations of information
Computer programs (to the extent that the Authority is not equipped to search prior art)

The MPEP states: "No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:" followed by the list above. However, it's important to note that "the U.S. Patent and Trademark Office has declared that it will search and examine all subject matter searched and examined in U.S. national applications."

To learn more:

Question 2

Is filing an Information Disclosure Statement considered an admission of prior art search?

Accepted Answer

No, filing an Information Disclosure Statement (IDS) is not considered an admission that a prior art search has been conducted. The MPEP clearly states:

The filing of an information disclosure statement shall not be construed as a representation that a search has been made. 37 CFR 1.97(g).

Furthermore, the MPEP emphasizes that There is no requirement that an applicant for a patent make a patentability search.

It's important to note that submitting an IDS is also not an admission of the materiality of the information to patentability. The MPEP states:

The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in 37 CFR 1.56(b). 37 CFR 1.97(h).

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Question 3

How are references from the international search report considered in a PCT national stage application?

Accepted Answer

In a PCT national stage application, the examiner will consider all U.S. patents, U.S. patent application publications, and U.S. pending applications cited in the international search report that are stored electronically in the USPTO's Image File Wrapper (IFW) system. As stated in MPEP 609.03:

"The examiner will consider other documents cited in the international search report when the Form PCT/DO/EO/903 in the national stage application indicates that both the international search report and the copies of the documents are present in the national stage file."

The examiner should indicate in the first Office action that the information has been considered. However, these citations will not be printed on the face of the patent unless they are listed on a form that can be easily captured by the Office printing contractor.

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Question 4

How does the Pfaff test apply to the on-sale bar in patent law?

Accepted Answer

The Pfaff test, established by the Supreme Court in Pfaff v. Wells Electronics, Inc., is crucial for determining whether an invention is "on sale" for purposes of the on-sale bar in patent law. According to MPEP 2152.02(d), the Pfaff test requires that:

The product must be the subject of a commercial offer for sale; and
The invention must be ready for patenting.

An invention is considered "ready for patenting" when either:

The invention is reduced to practice; or
The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.

This test helps determine whether an inventor's actions have triggered the on-sale bar, potentially affecting the patentability of their invention.

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Question 5

How does the Pfaff test apply to the "on sale" bar?

Accepted Answer

The Pfaff test, established by the Supreme Court in Pfaff v. Wells Electronics, Inc., is used to determine if an invention was "on sale" for the purposes of the on-sale bar. According to MPEP 2133.03(b), the test has two conditions:

The product must be the subject of a commercial offer for sale; and
The invention must be ready for patenting.

Both conditions must be satisfied before the critical date for the on-sale bar to apply. This test provides a more objective standard for determining when the on-sale bar is triggered.

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Question 6

What is the relationship between the streamlined analysis and the full Alice/Mayo test?

Accepted Answer

The streamlined analysis and the full Alice/Mayo test are closely related, with the streamlined analysis serving as an efficient shortcut in clear cases. As stated in MPEP 2106.06:

"The results of the streamlined analysis will always be the same as the full analysis, thus the streamlined analysis is not a means of avoiding a finding of ineligibility that would occur if a claim were to undergo the full eligibility analysis."

This means that:

A claim found eligible through streamlined analysis would also be eligible under the full test.
The streamlined analysis cannot be used to bypass ineligibility findings that would result from the full test.
Examiners may use the streamlined analysis for efficiency, but the underlying eligibility principles remain the same.

The MPEP further clarifies that the use of streamlined analysis may not always be apparent in the record, as it often results in a conclusion of eligibility without explicit rejection or with brief clarifying remarks.

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Question 7

What are 'special cases' in patent examination?

Accepted Answer

'Special cases' in patent examination refer to applications that are advanced out of turn for examination. According to MPEP 708.01, these include:

Applications deemed of peculiar importance to a branch of public service
Applications made special through petitions or prioritized examination requests
Reissue applications, especially those involved in stayed litigation
Applications remanded by appellate tribunals
Applications interfering with other allowable applications or patents
Applications ready for allowance or final rejection
Applications pending for more than 5 years
Reexamination proceedings

The MPEP states: Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Director of the USPTO or a Commissioner) will continue to be special throughout its entire course of prosecution in the U.S. Patent and Trademark Office, including appeal, if any, to the Patent Trial and Appeal Board.

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Question 8

What are the requirements for submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC)?

Accepted Answer

Submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC) requires meeting specific criteria due to the advanced stage of the reexamination process. According to MPEP 2656, the submission must be accompanied by:

A factual accounting providing a sufficient explanation of why the information could not have been submitted earlier
An unequivocal statement that one or more claims are unpatentable
An amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable

Additionally, the MPEP states:

"This must be provided via a petition under 37 CFR 1.182 (with petition fee) for entry and consideration of the information submitted after NIRC."

These requirements are necessary to justify interrupting the reexamination certificate printing process while complying with the statutory mandate for "special dispatch" in reexamination proceedings. The strict criteria reflect the advanced stage of the process and the need for a compelling reason to consider new information at this late stage.

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What subject matter is exempt from international search requirements?

Is filing an Information Disclosure Statement considered an admission of prior art search?

How are references from the international search report considered in a PCT national stage application?

How does the Pfaff test apply to the on-sale bar in patent law?

How does the Pfaff test apply to the “on sale” bar?

What is the relationship between the streamlined analysis and the full Alice/Mayo test?

What are ‘special cases’ in patent examination?

What are the requirements for submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC)?

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