Question 1

When do patent examiners need title reports?

Accepted Answer

Patent examiners typically do not require title reports for routine examination. The MPEP states:

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report.

When ownership information is necessary, examiners can obtain a title report through the USPTO's internal PALM Intranet system.

Question 2

What is the purpose of citing related art in patent applications?

Accepted Answer

The purpose of citing related art in patent applications is to provide the examiner with a comprehensive understanding of the state of the art relevant to the claimed invention. According to MPEP 707.05(b), applicants are encouraged to cite related art and information that may be helpful in the examination process.

Specifically, the MPEP states:

'The citation of related art by applicants in accordance with MPEP § 609 and § 708.02 is encouraged.'

This practice helps ensure a thorough examination and can potentially expedite the patent prosecution process by providing the examiner with relevant information upfront.

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Question 3

What happens after a pre-AIA 37 CFR 1.47 application is accepted?

Accepted Answer

After an application filed under pre-AIA 37 CFR 1.47 is accepted by the USPTO, the examiner proceeds with the application as usual. As stated in the MPEP:

"After an application deposited pursuant to pre-AIA 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner."

This means that the application will be examined and processed like any other patent application, despite its initial filing under special circumstances.

To learn more:

pre-AIA 37 CFR 1.47

Question 4

What authority do patent examiners have under MPEP 704?

Accepted Answer

Under MPEP 704, patent examiners are granted significant authority in the examination process. This authority includes:

Conducting comprehensive prior art searches to assess the novelty and non-obviousness of claimed inventions.
Requesting additional information from applicants when necessary for proper examination.
Determining the scope and content of prior art relevant to the claimed invention.
Evaluating the patentability of claims based on the search results and provided information.

While the specific details of this authority are not provided in the given excerpt, MPEP 704 typically outlines the procedures and limitations of examiner actions to ensure fair and thorough examination of patent applications.

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Question 5

What are the consequences of submitting a supplemental amendment without sufficient cause?

Accepted Answer

What are the consequences of submitting a supplemental amendment without sufficient cause?

If an applicant submits a supplemental amendment without sufficient cause, the examiner may exercise discretion to enter or deny entry of the supplemental amendment. According to MPEP 714.03(a):

The Office may enter a supplemental amendment if the supplemental amendment is clearly limited to: (A) cancellation of claims; (B) adoption of examiner's suggestions; (C) placement of the application in condition of allowance; (D) reply to an Office requirement made after the first reply was filed; (E) correction of informalities (e.g., typographical errors); or (F) simplification of issues for appeal.

If the supplemental amendment doesn't fall under these categories and lacks sufficient cause, the examiner may deny its entry, potentially delaying the examination process.

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Question 6

How should examiners handle early allowance of claims in patent applications?

Accepted Answer

Patent examiners are encouraged to allow claims early in the examination process when appropriate. The MPEP 707.07(j) provides guidance on this matter:

Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed.

This approach helps streamline the patent examination process and provides timely feedback to applicants. Examiners can use form paragraphs 7.43, 7.43.01, and 7.43.02 to indicate allowable subject matter in their office actions. Early allowance of claims can benefit both the USPTO and applicants by reducing examination time and costs.

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Question 7

How does MPEP 704 impact patent applicants?

russ.krajec@blueironip.com · Accepted Answer

MPEP 704 has significant implications for patent applicants. It outlines the procedures that patent examiners follow when conducting searches and requesting additional information, which directly affects how applications are examined and prosecuted.

For applicants, this means:

Their inventions will be subject to thorough prior art searches.
They may be required to provide additional information or evidence to support their claims.
They should be prepared to respond to examiner requests for information in a timely and comprehensive manner.

Understanding MPEP 704 can help applicants anticipate potential examiner actions and prepare more robust patent applications.

To learn more:

Patent Law FAQ

Here’s the complete FAQ:

MPEP 300 - Ownership and Assignment (1)

When do patent examiners need title reports?

MPEP 320 - Title Reports (1)

When do patent examiners need title reports?

MPEP 400 - Representative of Applicant or Owner (1)

What happens after a pre-AIA 37 CFR 1.47 application is accepted?

Patent Law (2)

When do patent examiners need title reports?

What happens after a pre-AIA 37 CFR 1.47 application is accepted?

Patent Procedure (2)

When do patent examiners need title reports?

What happens after a pre-AIA 37 CFR 1.47 application is accepted?