Question 1

How can applicants ensure references from the international search report are printed on the resulting patent?

Accepted Answer

To ensure that references from the international search report are printed on the resulting patent, applicants must provide a separate listing of these references. According to MPEP 609.03:

"In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action."

This separate listing should be submitted within the set period for reply to the Office action or, if the application is ready for allowance, within ONE MONTH of the mailing date of the Notice of Allowability. It's important to note that no extension of time will be granted to comply with this requirement if the application is ready for allowance.

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Question 2

How does the USPTO determine if a Substantial New Question of Patentability is raised?

Accepted Answer

The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.

According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim. The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.

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Question 3

What is the significance of 37 CFR 1.55(h) for foreign priority claims?

Accepted Answer

37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:

It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
The prior-filed application must contain the certified copy and be identified as such.
This provision can simplify the process of perfecting priority claims in related applications.

The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.

Question 4

How can a patent owner seek review of a Substantial New Question of Patentability (SNQ) determination?

Accepted Answer

A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner's rejections. The MPEP outlines the process:

"To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner."

The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.

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Question 5

What is the time limit for filing a certified copy of a foreign application in a U.S. patent application filed on or after March 16, 2013?

Accepted Answer

For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application be filed within the later of:

Four months from the actual filing date of the application, or
Sixteen months from the filing date of the prior foreign application

This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).

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Question 6

What is the "inventive concept" in the Alice/Mayo test?

Accepted Answer

The "inventive concept" refers to the second part of the Alice/Mayo test for patent eligibility. As explained in MPEP 2106.05:

"An inventive concept 'cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.' Instead, an 'inventive concept' is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself."

The inventive concept analysis looks at whether the additional elements in a claim, beyond the judicial exception itself, add significantly more or transform the abstract idea into a patent-eligible application.

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Question 7

What are Definition Notes in USPC?

Accepted Answer

Definition Notes in USPC are supplementary information that accompany many of the class and subclass definitions. The MPEP describes two types of notes:

Supplementary Notes: notes that supplement definitions by explaining terms or giving examples
See or Search Notes: notes referring to related disclosures located in other classes or subclasses

The MPEP further explains the purpose of See or Search notes: The latter notes are termed "See or Search" notes and are helpful in explaining the limits of a class or subclass. They generally state the relationship to, and difference from, other identified subject matter collections.

It's important to note that Search notes are not exhaustive and do not limit the search but suggest additional fields of search.

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Question 8

What authority does the Director of International Patent Legal Administration have over international search reports?

Accepted Answer

The Director of International Patent Legal Administration has significant authority over matters related to international search reports. This includes:

Deciding petitions to review the refusal to accord a filing date to an international application
Deciding matters in international applications related to a refusal to accord an international filing date or a filing date different from the date originally accorded

As stated in MPEP 1002.02(p): "The Director of International Patent Legal Administration decides petitions to review the refusal to accord a filing date to an international application and decides matters in international applications relating to according a filing date or to a refusal to accord an international filing date or a filing date different from the date originally accorded."

This authority ensures that international applications are properly processed and that applicants have recourse if they disagree with decisions regarding filing dates.

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international search reports
filing date
international applications

Question 9

Do applicants need to provide a separate listing of references cited in the international search report?

Accepted Answer

Generally, applicants do not need to provide a separate listing of references cited in the international search report for a PCT national stage application. According to MPEP 609.03:

"There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references."

However, it's important to note that if the applicant wants these references to be printed on the face of the resulting patent, they must provide a separate listing, preferably on a PTO/SB/08 form, within the set period for reply to the Office action or within one month of the mailing date of the Notice of Allowability.

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Question 10

What is the "markedly different characteristics" test for patent eligibility of living matter?

Accepted Answer

The "markedly different characteristics" test is a key criterion for determining the patent eligibility of living matter. This test originates from the Supreme Court's decision in Diamond v. Chakrabarty.

According to the MPEP, "The Supreme Court in Chakrabarty held a claim to a genetically engineered bacterium eligible, because the claimed bacterium was not a 'product of nature' exception. As the Court explained, the modified bacterium was patentable because the patent claim was not to a 'hitherto unknown natural phenomenon,' but instead had 'markedly different characteristics from any found in nature,' due to the additional plasmids and resultant capacity for degrading oil."

This test is used to determine whether a nature-based product, such as living subject matter, is eligible for patent protection. If the claimed invention possesses characteristics markedly different from those found in nature, it may be eligible for patent protection.

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How can applicants ensure references from the international search report are printed on the resulting patent?

How does the USPTO determine if a Substantial New Question of Patentability is raised?

What is the significance of 37 CFR 1.55(h) for foreign priority claims?

How can a patent owner seek review of a Substantial New Question of Patentability (SNQ) determination?

What is the time limit for filing a certified copy of a foreign application in a U.S. patent application filed on or after March 16, 2013?

What is the “inventive concept” in the Alice/Mayo test?

What are Definition Notes in USPC?

What authority does the Director of International Patent Legal Administration have over international search reports?

Do applicants need to provide a separate listing of references cited in the international search report?

What is the “markedly different characteristics” test for patent eligibility of living matter?