Q: What are the main procedural steps for an international application in the International Searching Authority?

According to MPEP 1840 , the main procedural steps for any international application in the International Searching Authority are: Making of the international search ( PCT Article 15 ) Preparing of the international search report ( PCT Article 18 and PCT Rule 43 ) For international applications having an international filing date on or after January 1, 2004, preparing a written opinion of the International Searching Authority ( PCT Rule 43bis ) These steps ensure a thorough examination of the international application and provide valuable information to both the applicant and other patent offices. To learn more: International Searching Authority PCT International Search Search Report Written Opinion

Question 1

What is the limitation on EPO's international search for U.S. applications?

Accepted Answer

The European Patent Office (EPO) has a specific limitation when acting as an International Searching Authority for U.S. applications. According to MPEP 1840.01:

"[T]he EPO has limited competence to act as an International Searching Authority for certain international applications filed by nationals or residents of the United States. The EPO is not competent to search any international application filed by a national or resident of the United States in the USPTO or IB as receiving Office where one or more claims relates to the fields of biotechnology, business methods or telecommunication systems."

This limitation means that if you are a U.S. national or resident filing an international application in these specific fields, the EPO cannot serve as your International Searching Authority.

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Question 2

Can an examiner request the transfer of a patent application to a different class?

Accepted Answer

Yes, an examiner can request the transfer of a patent application to a different class. The MPEP provides guidance on this process:

"An examiner seeking the transfer of a case may make a search, both of their own class and the class to which they think the case should be transferred, and the examiner in charge of the art unit should ensure the record includes the result of the search."

This indicates that examiners have the flexibility to suggest transfers if they believe an application would be more appropriately classified elsewhere. However, the process involves conducting a thorough search to justify the transfer and ensuring proper documentation of the search results.

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Question 3

How does the level of supervision affect public use in patent law?

Accepted Answer

The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):

"The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high."

This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.

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Question 4

What is the relationship between prior art knowledge and the level of detail required in a patent specification?

Accepted Answer

The relationship between prior art knowledge and the level of detail required in a patent specification is inverse. According to MPEP 2164.03:

"The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification."

Conversely, when little is known in the prior art or the art is unpredictable, more detailed information is required in the specification. This principle ensures that the patent disclosure is sufficient to enable a person skilled in the art to make and use the invention without undue experimentation.

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Question 5

What kind of additional information can be found in Annex D of the PCT Applicant's Guide regarding Rospatent as an ISA?

Accepted Answer

Annex D of the PCT Applicant's Guide provides detailed information about International Searching Authorities, including Rospatent. According to the MPEP, 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). This means that in Annex D, you can find specific details about:

Subject matter limitations for Rospatent as an ISA
Additional search fees that may apply
Information about cited documents
Other relevant details for using Rospatent as an ISA

This resource is valuable for applicants considering Rospatent as their International Searching Authority for PCT applications.

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Question 6

Where can I find more information about the PDX program?

Accepted Answer

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

A list of intellectual property offices participating in the PDX program
Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

Question 7

What level of detail is required for a prior art reference to be considered enabling?

Accepted Answer

For a prior art reference to be considered enabling, it must provide sufficient detail to allow a person of ordinary skill in the art to carry out the claimed invention. The MPEP 2121 states:

"A prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention."

However, it's important to note that the standard for enablement in prior art does not require proof that the described invention actually works:

"[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation."

This means that a prior art reference can be considered enabling if it provides enough information for a skilled artisan to practice the invention, even if it doesn't demonstrate the invention's success or effectiveness.

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Question 8

What standard does the USPTO use to determine if an item of information raises a Substantial New Question (SNQ) of patentability in a supplemental examination?

Accepted Answer

The USPTO uses the same standard for determining whether an item of information raises a Substantial New Question (SNQ) of patentability in supplemental examination as it does for ex parte reexaminations. According to MPEP 2816:

"The standard for determining whether an item of information properly submitted as part of the request raises a SNQ will be the same as the standard set forth in the MPEP § 2242 for ex parte reexaminations filed under 35 U.S.C. 302: i.e., whether there is a substantial likelihood that a reasonable examiner would consider the item of information important in determining patentability."

This means that the USPTO will evaluate whether the submitted information is likely to be considered important by a reasonable examiner in determining the patentability of the claims under review.

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Question 9

What happens if no Substantial New Question of patentability is raised in supplemental examination?

Accepted Answer

If the supplemental examination certificate indicates that no Substantial New Question of patentability (SNQ) is raised, the procedure is as follows:

Ex parte reexamination will not be ordered under 35 U.S.C. 257.
The supplemental examination certificate will be published as an attachment to the patent.
The fee for reexamination will be refunded.

As stated in MPEP 2818:

"If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office's patent publication process as an attachment to the patent."

To learn more:

Supplemental Examination
SNQ
Patent Certificate
Reexamination Fee

Question 10

What are the main procedural steps for an international application in the International Searching Authority?

Accepted Answer

According to MPEP 1840, the main procedural steps for any international application in the International Searching Authority are:

Making of the international search (PCT Article 15)
Preparing of the international search report (PCT Article 18 and PCT Rule 43)
For international applications having an international filing date on or after January 1, 2004, preparing a written opinion of the International Searching Authority (PCT Rule 43bis)

These steps ensure a thorough examination of the international application and provide valuable information to both the applicant and other patent offices.

To learn more:

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What is the limitation on EPO’s international search for U.S. applications?

Can an examiner request the transfer of a patent application to a different class?

How does the level of supervision affect public use in patent law?

What is the relationship between prior art knowledge and the level of detail required in a patent specification?

What kind of additional information can be found in Annex D of the PCT Applicant’s Guide regarding Rospatent as an ISA?

Where can I find more information about the PDX program?

What level of detail is required for a prior art reference to be considered enabling?

What standard does the USPTO use to determine if an item of information raises a Substantial New Question (SNQ) of patentability in a supplemental examination?

What happens if no Substantial New Question of patentability is raised in supplemental examination?

What are the main procedural steps for an international application in the International Searching Authority?