Question 1

Can a copy of the foreign patent satisfy the certified copy requirement?

Accepted Answer

No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: "A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed." The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.

Question 2

How is the certified copy of the priority document handled in a U.S. national stage application?

Accepted Answer

The certified copy of the priority document in a U.S. national stage application is typically handled through the International Bureau. According to the MPEP:

"Where applicant has complied with PCT Rule 17, the International Bureau will forward a copy of the certified priority document to each Designated Office that has requested such document with an indication that the priority document was submitted in compliance with the rule and the date the document was received by the International Bureau."

The U.S. Patent and Trademark Office usually requests this copy upon receipt of the applicant's submission to enter the U.S. national phase. The copy from the International Bureau is then placed in the U.S. national stage file and is considered acceptable to establish compliance with 37 CFR 1.55(f).

If the International Bureau cannot forward the copy, the applicant must provide it during the national stage, unless certain exceptions apply (see 37 CFR 1.55(h) or 37 CFR 1.55(i)).

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Question 3

What are the time limits for filing a certified copy in an international design application?

Accepted Answer

The time limits for filing a certified copy in an international design application are:

General rule: Within the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application.
Exception: These time limits do not apply if the priority document is available to the Office from a participating digital library.

MPEP 213.07 specifies: The time period requirement in 37 CFR 1.55(f) for filing a certified copy of the foreign application in a nonprovisional international design application is the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.

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Question 4

What is the three-step test for recapture analysis?

Accepted Answer

The Court of Appeals for the Federal Circuit established a three-step test for recapture analysis, as outlined in MPEP 1412.02:

Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims.
Determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution.
Determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

This test helps examiners and practitioners assess whether impermissible recapture has occurred in a reissue application.

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Question 5

What is the relationship between questioned test results and operability or utility rejections?

Accepted Answer

When test results in a patent application are questioned, it may raise concerns about the operability or utility of the invention. The MPEP 707.07(l) addresses this connection:

If questions are present as to operability or utility, consideration should be given to the applicability of a rejection under 35 U.S.C. 101. See MPEP § 2107 et seq.

This means that if doubts about test results lead to concerns about whether the invention actually works (operability) or has a useful purpose (utility), the examiner should consider rejecting the application under 35 U.S.C. 101. This statute requires inventions to be useful and operable to be patentable. Examiners should refer to MPEP § 2107 for guidance on utility rejections.

To learn more:

35 U.S.C. 101

Question 6

What is the primary purpose of a search during patent examination?

Accepted Answer

The primary purpose of a search during patent examination is to identify relevant prior art after the examiner has read and understood the specification and claims. As stated in MPEP 704.01: "After reading the specification and claims, the examiner searches the prior art." This search helps determine the novelty and non-obviousness of the claimed invention.

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Question 7

What is the significance of application and patent dates in interference searches?

Accepted Answer

Application and patent dates are not limiting factors in interference searches. 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 means that:

Examiners must search for potentially interfering subject matter regardless of filing dates
Older applications or patents can still be relevant to an interference search
The focus is on the subject matter of the claims, not the temporal aspects of the applications or patents

This approach ensures a comprehensive search that identifies all potential conflicts, regardless of when the applications were filed or patents were issued.

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Question 8

Why is it important to thoroughly understand the invention before conducting a search?

Accepted Answer

It is crucial to thoroughly understand the invention before conducting a search to ensure the search is effective and targeted. MPEP 704.01 emphasizes this point by stating: "The invention should be thoroughly understood before a search is undertaken." A comprehensive understanding of the invention allows the examiner to identify the most relevant prior art and assess the novelty and non-obviousness of the claimed invention accurately.

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Question 9

What is the Scientific and Technical Information Center (STIC) in relation to foreign patent documents?

Accepted Answer

The Scientific and Technical Information Center (STIC) plays a crucial role in managing foreign patent documents at the USPTO. According to MPEP 901.05:

"The Scientific and Technical Information Center (STIC) maintains a collection of foreign patents and foreign language technical literature."

STIC's responsibilities include:

Maintaining a comprehensive collection of foreign patents
Providing access to foreign language technical literature
Assisting examiners in searching and retrieving relevant foreign patent documents
Supporting the USPTO's prior art search capabilities

To learn more:

STIC
Foreign patents
USPTO resources

Question 10

What are the hours for the Public Search Facility in Alexandria?

Accepted Answer

The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:

8:00 a.m. to 8:00 p.m., Monday through Friday
Excluding federal holidays in the District of Columbia

As stated in MPEP 510: "The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia."