Q: When should an examiner conduct a search for an imperfectly understood application?

According to MPEP 704.01 , an examiner should conduct a search even for imperfectly understood applications. The MPEP states: "However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution." This approach ensures that the examination process moves forward efficiently, even when the application is not fully clear at first glance. To learn more: patent examination imperfect applications piecemeal prosecution

Question 1

How should an examiner approach a previously searched application?

Accepted Answer

When an examiner is assigned an application that has been previously searched by another examiner, they should review the previous search to ensure its thoroughness and completeness. MPEP 704.01 states: "When an examiner is assigned to act on an application which has received one or more actions by some other examiner, the examiner should review the previous search to ensure it is thorough and complete." This approach promotes consistency and efficiency in the examination process.

Furthermore, the MPEP advises against taking an entirely new approach or reorienting the previous examiner's point of view without good reason: "In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something." This guidance helps maintain continuity in the examination process.

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Question 2

When should an examiner conduct a search for an imperfectly understood application?

Accepted Answer

According to MPEP 704.01, an examiner should conduct a search even for imperfectly understood applications. The MPEP states: "However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution." This approach ensures that the examination process moves forward efficiently, even when the application is not fully clear at first glance.

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Question 3

What is the extent of an examiner's consideration of IDS documents?

Accepted Answer

An examiner's consideration of documents listed in an Information Disclosure Statement (IDS) is as follows:

Documents are considered in the same manner as other documents in Office search files.
The examiner conducts a proper field of search.
For non-English language documents, consideration is limited to what can be understood from the concise statement and any drawings or chemical formulas.

The MPEP states: Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. (MPEP 609.05(b))

Regarding non-English documents, the Federal Circuit has noted: [A]s MPEP Section 609C(2) reveals, the examiner's understanding of a foreign reference is generally limited to that which he or she can glean from the applicant's concise statement…Consequently, while the examiner's initials require that we presume that he or she considered the [foreign] reference, this presumption extends only to the examiner's consideration of the brief translated portion and the concise statement. (Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1377-78, 54 USPQ2d 1001, 1008 (Fed. Cir. 2000))

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Question 4

How does the EPO determine its competence to search international applications?

Accepted Answer

The European Patent Office (EPO) determines its competence to search international applications based on specific criteria. According to MPEP 1840.01:

"The EPO will act as an International Searching Authority for international applications filed in the U.S. Receiving Office if the EPO is competent to search the international application and the application is filed in English, French or German."

The EPO's competence is primarily determined by:

The language of the application (must be in English, French, or German)
The subject matter of the application (certain fields are excluded for U.S. nationals/residents)
The applicant's nationality or residency (specific limitations apply to U.S. nationals/residents)

It's important to note that the EPO has limited competence for certain applications filed by U.S. nationals or residents, particularly in the fields of biotechnology, business methods, and telecommunication systems.

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Question 5

What is Form Paragraph 23.19 and when is it used in patent examination?

Accepted Answer

Form Paragraph 23.19 is a standardized notification used by patent examiners to inform applicants about the requirement for a certified English translation of a foreign priority document. According to MPEP 2304.01(c):

"Form paragraph 23.19 may be used to notify applicant that a certified English translation of the priority document is required."

The content of Form Paragraph 23.19 is as follows:

"Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application."

This form paragraph is used when an applicant claims foreign priority but has not provided a certified English translation of the foreign application, particularly in the context of potential interference proceedings.

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Question 6

When might the USPTO require earlier filing of priority claims and certified copies?

Accepted Answer

The USPTO may require earlier filing of priority claims and certified copies in certain situations. According to 37 CFR 1.55(g)(2), these situations include:

When the application is involved in an interference or derivation proceeding
When necessary to overcome the date of a reference relied upon by the examiner
When deemed necessary by the examiner

The MPEP explains that these requirements allow the USPTO to address priority issues promptly when they are relevant to ongoing proceedings or examination.

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Question 7

Where can I find additional information about the EPO as an International Searching Authority?

Accepted Answer

For additional information about the European Patent Office (EPO) as an International Searching Authority (ISA), including subject matter limitations, additional search fees, and cited documents, you can refer to Annex D of the PCT Applicant's Guide on the World Intellectual Property Organization (WIPO) website.

MPEP 1840.01 states: "For additional information, e.g., subject matter limitations, additional search fees, cited documents, etc., please refer to Annex D of the PCT Applicant's Guide found on WIPO's website (www.wipo.int/pct/en/guide/index.html)."

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Question 8

What is the function of the International Searching Authority (ISA) in the PCT system?

Accepted Answer

The International Searching Authority (ISA) plays a critical role in the PCT system by conducting prior art searches and providing a written opinion on the patentability of the claimed invention. According to the MPEP, The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international applications (it does this by searching in at least the minimum documentation defined by the Treaty (PCT Articles 15 and 16 and PCT Rule 34)) and to issue a written opinion (PCT Rule 43bis) which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded.

Key functions of the ISA include:

Conducting a prior art search
Issuing a written opinion on novelty, inventive step, and industrial applicability
Preparing an international search report (ISR)
Checking the content of the title and abstract

The MPEP further states, An international search report (ISR) and written opinion will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date) (PCT Rule 42).

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Question 9

What happens if the USPTO is unable to retrieve a priority document through PDX?

Accepted Answer

If the USPTO is unable to retrieve a priority document through the Priority Document Exchange (PDX) program, the following occurs:

The USPTO will notify the applicant of the unsuccessful retrieval attempt.
The applicant will then be required to submit the certified copy of the foreign application.

According to MPEP 215.01, If the foreign certified copy is not received by the USPTO within the pendency of the application and before the patent is granted, the USPTO will notify the applicant that the certified copy of the foreign application has not been received and require the certified copy. It's crucial for applicants to monitor the status of their priority document and be prepared to submit a certified copy if the electronic retrieval is unsuccessful.

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Question 10

How can I obtain a copy of a recorded assignment document from the USPTO?

Accepted Answer

To obtain a copy of a recorded assignment document from the USPTO, you can request a certified copy. According to MPEP 317:

Certified copies of recorded documents may be ordered from the Assignment Division for a fee.

To request a certified copy:

Contact the USPTO Assignment Division
Provide the necessary information to identify the document
Pay the required fee

The USPTO will then provide you with a certified copy of the requested assignment document. This can be useful for legal or business purposes where an official copy of the recorded assignment is needed.

For more information on Assignment Division, visit: Assignment Division.

For more information on certified copies, visit: certified copies.

For more information on USPTO, visit: USPTO.

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How should an examiner approach a previously searched application?

When should an examiner conduct a search for an imperfectly understood application?

What is the extent of an examiner’s consideration of IDS documents?

How does the EPO determine its competence to search international applications?

What is Form Paragraph 23.19 and when is it used in patent examination?

When might the USPTO require earlier filing of priority claims and certified copies?

Where can I find additional information about the EPO as an International Searching Authority?

What is the function of the International Searching Authority (ISA) in the PCT system?

What happens if the USPTO is unable to retrieve a priority document through PDX?

How can I obtain a copy of a recorded assignment document from the USPTO?