Question 1

Is a prior art search required before filing a patent application?

Accepted Answer

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

'An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.'

This is supported by several court cases cited in the MPEP, including:

Nordberg, Inc. v. Telsmith, Inc.
FMC Corp. v. Hennessy Indus., Inc.
American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The 'inquiry reasonable under the circumstances' requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

Question 2

How does a preliminary amendment affect the patent application publication?

Accepted Answer

Preliminary amendments can affect the patent application publication, but their inclusion is not guaranteed. The MPEP advises, Filing a preliminary amendment is not recommended because the changes made by the preliminary amendment may not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration. It further explains, If there is insufficient time to have the preliminary amendment be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun, the preliminary amendment will not be reflected in the patent application publication. Typically, technical preparations begin four months prior to the projected publication date. To ensure desired changes are included in the publication, applicants are encouraged to incorporate amendments into the original application text rather than filing them as preliminary amendments.

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Question 3

What should applicants do upon receiving a Notice of Allowance regarding PDX?

Accepted Answer

When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:

Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed.

Important steps for applicants:

Verify that the USPTO has received the foreign priority document.
If the document hasn't been received, consider filing a paper certified copy.
Ensure the priority document is received before the patent is granted.
Be aware that if a certified copy is filed after the issue fee is paid, the patent won't include the priority claim unless corrected by a certificate of correction.

It's crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.

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Question 4

What constitutes a commercial offer for sale in patent law?

Accepted Answer

A commercial offer for sale in patent law is a critical component of the on-sale bar. According to MPEP 2133.03(b):

"A sale is a contract between parties to give and to pass rights of property for consideration which the buyer pays or promises to pay the seller for the thing bought or sold."

Key points to consider:

The offer must be commercial in nature, not merely an experimental use.
It doesn't require an actual sale, just an offer to sell.
The offer must be for the patented invention, not just related products.
Even a single offer can trigger the on-sale bar.

Courts often look to the Uniform Commercial Code (UCC) to determine if a valid offer for sale has been made.

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