Q: Who signs a Patentability Report in the USPTO examination process?

According to MPEP § 705 , a Patentability Report (P.R.) is signed by a specific individual in the examination process. The MPEP states: This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC. This means that the primary examiner in the Technology Center (TC) that is providing the report on certain designated claims is responsible for signing the Patentability Report. This is typically not the examiner from the TC where the application was originally assigned, but rather the examiner from the TC with expertise in the area of the claims being reported on. To learn more: Patentability Report Primary Examiner Technology Center USPTO MPEP

Question 1

Who signs a Patentability Report in the USPTO examination process?

Accepted Answer

According to MPEP § 705, a Patentability Report (P.R.) is signed by a specific individual in the examination process. The MPEP states:

This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.

This means that the primary examiner in the Technology Center (TC) that is providing the report on certain designated claims is responsible for signing the Patentability Report. This is typically not the examiner from the TC where the application was originally assigned, but rather the examiner from the TC with expertise in the area of the claims being reported on.

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Question 2

Where can I find information about the former public use proceedings process?

Accepted Answer

If you need information about the former public use proceedings process, which was discontinued in 2012, you should refer to an older version of the Manual of Patent Examining Procedure (MPEP). The current MPEP section 720 provides guidance on where to find this historical information:

For information necessary regarding the former process, the August 2012 revision of the MPEP ( www.uspto.gov/web/offices/pac/mpep/old/mpep_E8R9.htm ) may be consulted.

This archived version of the MPEP contains details about how public use proceedings were conducted before their discontinuation. It's important to note that while this information is valuable for historical context, it no longer applies to current patent examination procedures.

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Question 3

When is a supplemental amendment considered to be entered as a matter of right?

Accepted Answer

When is a supplemental amendment considered to be entered as a matter of right?

A supplemental amendment is entered as a matter of right under specific circumstances. According to MPEP 714.03(a):

"A supplemental amendment will be entered as a matter of right if it is filed within the period during which action by the Office is suspended under 37 CFR 1.103(a) or (c)."

This typically occurs when:

The supplemental amendment is filed within a suspension period requested by the applicant.
It's filed in response to an examiner's request for information under 37 CFR 1.105.
It's filed after a final Office action but before or with a Notice of Appeal.

In these cases, the supplemental amendment is automatically entered without requiring the examiner's approval.

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Question 4

When is a Patentability Report used in the patent examination process?

Accepted Answer

A Patentability Report is used in specific circumstances during the patent examination process. According to MPEP § 705, it's used:

When an application is properly assigned to one Technology Center (TC)
The application contains one or more claims classifiable in one or more other TCs
These claims are not divisible from each other or from the claims governing the application's classification in the first TC

However, it's crucial to understand that Patentability Reports are not a routine part of examination. The MPEP explicitly states: Note that the Patentability Report practice is only to be used in extraordinary circumstances. This underscores that P.R.s are reserved for special cases where the expertise of multiple TCs is required to properly examine an application's claims.

To learn more:

Patentability Report
Patent Examination
Technology Center
USPTO
MPEP

Question 5

When can a patent examiner question test results in a patent application?

Accepted Answer

A patent examiner can question test results in a patent application when there is a reasonable basis for doing so. The Manual of Patent Examining Procedure (MPEP) 707.07(l) states:

The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results.

If an examiner has a valid reason to doubt the accuracy or relevance of the provided test results, they may challenge them. However, this should not be done arbitrarily and must be based on a sound rationale.

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Question 6

What is the significance of avoiding 'undue multiplication of references' in patent examination?

Accepted Answer

The concept of avoiding 'undue multiplication of references' in patent examination is mentioned in MPEP 707.07(g). The MPEP states:

"The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references."

This guideline is significant because it aims to balance thoroughness with efficiency in patent examination. It means that examiners should:

Provide comprehensive rejections covering all valid grounds
Use a reasonable number of references to support rejections
Avoid excessive citation that could obscure the main reasons for rejection
Focus on the most relevant and strongest prior art references

By avoiding undue multiplication of references, examiners can provide clear, focused rejections that applicants can more easily understand and respond to, promoting more efficient patent prosecution.

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Question 7

What is the procedure for examiners to request additional information from applicants?

Accepted Answer

The procedure for examiners to request additional information from applicants is outlined in 37 CFR 1.105 and MPEP § 704.10 et seq. These sections set forth procedures for examiners to require applicants, their attorneys, and agents to submit information reasonably necessary for the Office to examine an application or treat a matter being addressed in an application.

According to MPEP 707.05(b), "Any such requirement, and any information submitted in reply thereto, will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware." This means that even when additional information is requested and provided, examiners must still perform their own thorough search and analysis.

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Question 8

What is the difference between a supplemental amendment and a preliminary amendment?

Accepted Answer

What is the difference between a supplemental amendment and a preliminary amendment?

A supplemental amendment is filed after an initial reply to an Office action, while a preliminary amendment is filed before the first Office action. The MPEP 714.03(a) states:

"A supplemental amendment is an amendment filed after a reply has been entered to an Office action."

In contrast, a preliminary amendment is typically filed with or before the application's initial examination. Supplemental amendments are subject to different rules and considerations, as they can potentially delay prosecution if not properly handled.

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Question 9

What is the 'safety net' provision in 37 CFR 1.136(a)(3)?

Accepted Answer

The 'safety net' provision in 37 CFR 1.136(a)(3) is designed to protect applicants who inadvertently omit a petition for extension of time. The MPEP explains that this provision allows for three scenarios to be treated as a constructive petition for an extension of time:

A previously filed written request to treat a reply requiring an extension of time as incorporating a petition for such extension of time;
A previously filed authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees;
Submission of the fee set forth in 37 CFR 1.17(a) with the reply.

The MPEP states: Accordingly, 37 CFR 1.136(a)(3) is a 'safety net' to avoid a potential loss of patent rights for applicants who inadvertently omitted a petition in these scenarios.

To learn more:

extension of time
safety net
USPTO
MPEP

Question 10

What is piecemeal examination in patent law?

Accepted Answer

Piecemeal examination refers to the practice of examining a patent application in a fragmented or incomplete manner. According to MPEP 707.07(g), "Piecemeal examination should be avoided as much as possible." This means that patent examiners should strive to provide a comprehensive examination of each claim, addressing all valid grounds for rejection in a single office action, rather than addressing issues one at a time across multiple office actions.

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Question 11

What is a Patentability Report (P.R.) in patent examination?

Accepted Answer

A Patentability Report (P.R.) is a memorandum prepared by a primary examiner in a Technology Center (TC) at the request of another TC. According to MPEP 705.01(a), it includes:

Citation of all pertinent references
A complete action on all claims involved
The field of search covered, recorded in the 'Search Notes' form

The report is used to provide expertise on specific aspects of an application that may fall outside the primary TC's area of focus.

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Question 12

What is a Patentability Report (P.R.) in patent examination?

Accepted Answer

A Patentability Report (P.R.) is a process in patent examination where an application is forwarded from one Technology Center (TC) to another for additional review. According to MPEP 705.01(c), The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). This means that while the application is temporarily moved, it's not considered a permanent transfer between TCs.

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MPEP

Question 13

What happens if examiners disagree on a Patentability Report?

Accepted Answer

When examiners disagree on a Patentability Report, there are established procedures to resolve the conflict. According to MPEP 705.01(a):

"If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot be reached, the primary examiner having jurisdiction of the application need not rely on the Patentability Report but may make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file."

This process ensures that:

Examiners attempt to resolve disagreements through consultation
The primary examiner with jurisdiction can make an independent decision if necessary
The integrity of the examination process is maintained

To learn more:

Patentability Report
Examiner Disagreement
USPTO Procedure
Patent Examination

To learn more:

MPEP

Question 14

What happens if examiners disagree on a Patentability Report?

Accepted Answer

When examiners disagree on a Patentability Report, MPEP 705.01(a) outlines the following process:

The primary examiners may consult with each other to resolve the disagreement.
If agreement cannot be reached, the primary examiner with jurisdiction over the application can choose not to rely on the Patentability Report.
In such cases, the examiner may 'make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file.'

This procedure ensures that the examination process can proceed even when there are differing opinions on patentability.

To learn more:

Question 15

What factors does an examiner consider when deciding whether to enter a supplemental amendment?

Accepted Answer

What factors does an examiner consider when deciding whether to enter a supplemental amendment?

When deciding whether to enter a supplemental amendment, an examiner considers several factors. The MPEP 714.03(a) outlines these considerations:

"The factors to be considered by the examiner for entry of a supplemental amendment include: (A) the state of preparation of a Office action responsive to the applicant's latest submission as of the date of the supplemental amendment; (B) whether the supplemental amendment is filed within a suspension period under 37 CFR 1.103(a) or (c); and (C) whether applicant has given a convincing reason in support of why the supplemental amendment should be entered."

In essence, the examiner evaluates:

How far along they are in preparing a response to the latest submission
Whether the amendment is filed during a suspension period
The strength of the applicant's reasons for submitting the supplemental amendment

These factors help the examiner balance the efficiency of the examination process with the applicant's need to present their best case.

To learn more:

Question 16

What evidence is needed to prove commercial success in patent applications?

Accepted Answer

To prove commercial success as evidence of non-obviousness in patent applications, applicants must provide substantial and credible evidence. According to MPEP 716.03(a), the following types of evidence are typically required:

Sales figures: Actual sales data for the product embodying the claimed invention
Market share: Information on the product's share of the relevant market
Growth in market share: Data showing an increase in market share over time
Licensing: Evidence of licensing by others, especially competitors
Praise from the industry: Recognition or awards for the product
Long-felt need: Evidence that the product fulfilled a long-standing need in the market

The MPEP emphasizes that merely stating that a product was commercially successful is not sufficient. As stated in the manual:

Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims.

Applicants should provide detailed documentation and analysis to demonstrate how the commercial success is directly related to the claimed invention and not to other factors.

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Question 17

What does 'No Inter Partes Questions Discussed Ex Parte' mean in patent examination?

Accepted Answer

In patent examination, 'No Inter Partes Questions Discussed Ex Parte' means that an examiner is not allowed to discuss issues involving multiple parties (inter partes) with only one party present (ex parte). The Manual of Patent Examining Procedure (MPEP) Section 713.06 states:

The examiner may not discuss inter partes questions ex parte with any of the interested parties.

This rule ensures fairness and transparency in the patent examination process by preventing private discussions about matters that involve multiple parties.

To learn more:

Question 18

What are the time limits for extensions under 37 CFR 1.136(a)?

Accepted Answer

According to 37 CFR 1.136(a), an applicant may extend the time period for reply up to five months after the time period set for reply, unless:

Prohibited by statute
Prohibited by one of the items listed in the rule
The applicant has been notified otherwise in an Office action

The MPEP states: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee as set forth in 37 CFR 1.17(a) up to 5 months after the end of the time period set to take action. However, it's important to note that no extension can operate to extend the time beyond the 6 months statutory period.

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Question 19

What are the guidelines for submitting prior art to the USPTO?

Accepted Answer

The guidelines for submitting prior art to the U.S. Patent and Trademark Office (USPTO) are outlined in MPEP § 609. These guidelines are for applicants, their attorneys, and agents who wish to submit prior art for consideration.

According to MPEP 707.05(b), "Submitted citations will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware." This means that while applicants can submit prior art, examiners are still required to perform their own searches and cite any relevant art they find.

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Question 20

What are 'inter partes questions' in patent examination?

Accepted Answer

'Inter partes questions' in patent examination refer to issues or matters that involve multiple parties or have the potential to affect multiple parties' interests. These questions typically arise in proceedings where there are opposing parties, such as in patent interferences or inter partes reexaminations.

The MPEP 713.06 prohibits examiners from discussing such questions ex parte:

The examiner may not discuss inter partes questions ex parte with any of the interested parties.

This ensures that all parties have equal access to information and prevents any unfair advantages in the examination process.

To learn more:

Question 21

What are 'extraordinary circumstances' for using Patentability Reports?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) § 705 emphasizes that Patentability Reports should only be used in extraordinary circumstances. While the MPEP doesn't provide an exhaustive list of what constitutes 'extraordinary circumstances,' we can infer from the context that these may include:

Applications with claims spanning multiple, distinctly different technology areas
Cases where the expertise of multiple Technology Centers is crucial for a comprehensive examination
Situations where the claims are not clearly divisible, yet require diverse technical knowledge for proper examination

The MPEP states: Note that the Patentability Report practice is only to be used in extraordinary circumstances. This underscores the exceptional nature of using Patentability Reports in the examination process. For more detailed guidance on what might constitute extraordinary circumstances, refer to MPEP § 705.01(e).

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Question 22

No more FAQs can be generated

Accepted Answer

All relevant information from MPEP 609.04 – Content and Timing Requirements for an Information Disclosure Statement has been thoroughly covered in the previously generated FAQs. No additional meaningful questions can be formulated without significant repetition or overlap with existing content.

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Question 23

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Accepted Answer

All relevant information from MPEP 704.12(a) has been covered in previous FAQs. No additional meaningful questions can be generated without duplicating content.

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Question 24

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Accepted Answer

All relevant information from MPEP 710.04(a) - Copying Patent Claims has been covered in the previously generated FAQs. No additional meaningful questions can be created without significant repetition or overspecification.

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Information Requirement
Duty of Disclosure

Question 25

No more FAQs can be generated

Accepted Answer

All possible FAQs have been exhausted and no further meaningful questions can be generated from the given MPEP section without significant repetition or overlap with existing questions.

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Patent Examination
Information Requirement
Duty of Disclosure

Question 26

No more FAQs available

Accepted Answer

All relevant information from MPEP 323.01(b) - Typographical Errors in Recorded Assignment Document has been covered in previous FAQs. No additional meaningful questions can be generated without repetition.

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Question 27

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Accepted Answer

All relevant information from MPEP 707.05(a) - Copies of Cited References has been covered in previous FAQs. No additional meaningful questions can be generated without redundancy.

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Question 28

No More FAQs Available

Accepted Answer

All relevant information from MPEP 707.07(d) - Language To Be Used in Rejecting Claims has been thoroughly covered in the previously generated FAQs. No additional meaningful questions can be formulated without risking redundancy.

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Question 29

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Accepted Answer

All relevant information from MPEP 714.02 - Must Be Fully Responsive has been covered in the previously generated FAQs. No additional meaningful questions can be formulated without redundancy.

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cited references

Question 30

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Accepted Answer

All relevant information from MPEP 713.07 - Exposure of Other Cases has been covered in the previously generated FAQs. No additional meaningful questions can be created without duplicating content.

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cited references

Question 31

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Accepted Answer

All relevant information from MPEP 716.06 - Copying has been covered in the previously generated FAQs. No additional meaningful questions can be created without redundancy.

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Question 32

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Accepted Answer

All relevant information from MPEP 714.10 - Claims Added in Excess of Claims Previously Paid For has been comprehensively covered in previous FAQ cycles. No additional meaningful questions can be generated without significant repetition or overlap with existing content.

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patent examination
claim rejections

Question 33

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Accepted Answer

All relevant information from MPEP 502.05 – Correspondence Transmitted by EFS-Web has been thoroughly covered in the previously generated FAQs. No additional meaningful questions can be created without substantial repetition of existing content.

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Question 34

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Accepted Answer

All relevant information from MPEP 705.01(a) - Nature of P.R., Its Use and Disposal has been covered in the previously generated FAQs. No additional meaningful questions can be created without repeating information.

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P.R.

Question 35

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Accepted Answer

All relevant information from MPEP 711.06 has been covered in previous FAQs. No additional meaningful questions can be generated without redundancy.

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Question 36

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Accepted Answer

All relevant information from MPEP 714.13 - Amendments and Other Replies After Final Rejection or Action, Procedure Followed has been covered in the previously generated FAQs. No additional meaningful questions can be created without redundancy.

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Patentability Report
P.R.

Question 37

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Accepted Answer

All relevant information from MPEP 715.07(c) has been covered in previous FAQs. No additional meaningful questions can be generated without significant repetition.

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Question 38

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Accepted Answer

All relevant information from MPEP 714.07 - Amendments Not in Permanent Ink has been covered in previously generated FAQs. No additional meaningful questions can be created based on the given content.

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Question 39

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Accepted Answer

All possible FAQs have been exhausted. No further meaningful questions can be generated from the given MPEP section without significant repetition or overlap with existing content.

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Question 40

How should patent examiners approach claim rejections?

Accepted Answer

According to MPEP 707.07(g), patent examiners should approach claim rejections comprehensively. The MPEP states, "The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references." This means that examiners should:

Address all valid grounds for rejection in a single office action
Apply rejections for issues such as lack of proper disclosure, lack of enablement, and indefiniteness where appropriate
Provide full development of reasons for non-prior art rejections, rather than mere conclusions
Avoid excessive citation of references while still covering all valid grounds

To learn more:

patent examination
claim rejections
MPEP
patent law

Question 41

How should examiners handle perpetual motion applications?

Accepted Answer

According to MPEP 707.07(g), patent applications directed to perpetual motion require special handling. The MPEP states:

"Where disclosure is directed to perpetual motion... the best prior art readily available should be cited and its pertinence pointed out without specifically applying it to the claims."

This means that for perpetual motion applications, examiners should:

Cite the best available prior art
Explain the relevance of the cited art
Avoid directly applying the art to the claims

This approach allows examiners to address the scientific impossibility of perpetual motion while still providing relevant information to the applicant.

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Question 42

How should an applicant respond to a rejection based on questioned test results?

Accepted Answer

When an applicant faces a rejection based on questioned test results, they have several options for response. According to MPEP 707.07(l):

The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted.

The applicant can:

Provide additional test results or examples to support their claims
Present arguments explaining why the original results should be considered valid
Offer evidence that strongly suggests the predicted results would occur

It's crucial that any new information provided does not introduce new matter into the application, as this could lead to further rejections.

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Question 43

How does the MPEP define 'commercial success' in patent examination?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) does not provide a specific definition for 'commercial success.' However, it outlines the requirements for using commercial success as evidence of non-obviousness. According to MPEP 716.03(a):

An applicant who is asserting commercial success to support its contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of commercial success.

The MPEP emphasizes that commercial success must be directly related to the claimed invention and not to extraneous factors such as business acumen or advertising. The success should be commensurate in scope with the claims and demonstrate that the commercial success flows from the functions and advantages disclosed or inherent in the specification description.

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Question 44

How does the fee structure work for extensions of time under 37 CFR 1.136(a)?

Accepted Answer

The fee structure for extensions of time under 37 CFR 1.136(a) is cumulative. The MPEP explains:

The fees for extensions of time under 37 CFR 1.136(a) are set forth in 37 CFR 1.17(a) and are subject to a 50% reduction for persons or concerns qualifying as small entities. The fees itemized at 37 CFR 1.17(a) are cumulative.

This means that if you've already paid for a 1-month extension and need an additional month, you would pay the difference between the 2-month fee and the 1-month fee you've already paid. The MPEP provides an example:

Thus, if an applicant has paid an extension fee in the amount set forth in 37 CFR 1.17(a)(l) for a 1-month extension of time and thereafter decides that an additional 1 month is needed, the proper fee would be the amount set forth in 37 CFR 1.17(a)(2) less the amount set forth in 37 CFR 1.17(a)(l) which was previously paid.

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Question 45

How does MPEP 711.05 relate to other sections of the MPEP regarding abandonment?

Accepted Answer

MPEP 711.05 specifically addresses letters of abandonment received after an application is allowed. It relates to other sections of the MPEP, particularly those dealing with abandonment procedures. For instance, the section mentions:

See also MPEP § 711.01.

This reference to MPEP 711.01 suggests that there are related procedures and considerations for express abandonment in general that may be applicable or provide additional context to situations where abandonment is requested after allowance.

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Question 46

How do extensions of time work with final rejections?

Accepted Answer

For final rejections, the USPTO has a specific procedure for extensions of time. The MPEP states:

If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection.

This means that if you reply within 2 months of a final rejection and don't receive an advisory action within 3 months, your extension time (and fees) will be calculated from when the advisory action is mailed. However, the total time can never exceed 6 months from the final rejection date.

The examiner must include specific language in each final rejection to explain this procedure. It's important to note that This procedure applies only to a first reply to a final rejection.

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Question 47

How are disagreements on classification handled in Patentability Reports?

Accepted Answer

When there's a disagreement on classification in relation to a Patentability Report, the MPEP provides a clear process:

'Conflict of opinion as to classification may be referred to a classification dispute TC representative panel for decision.'

This means that if examiners from different Technology Centers disagree on how to classify an application, they can seek resolution from a specialized panel. This ensures consistency and accuracy in patent classification across different technical fields.

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Question 48

How are appeals handled when a Patentability Report is involved?

Accepted Answer

When an appeal is taken from the rejection of claims involving a Patentability Report, MPEP 705.01(a) states:

'When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal.'

This means:

The TC that prepared the Patentability Report takes jurisdiction of the application
They prepare the examiner's answer for the appeal
If the application is ultimately allowed, that TC may send it to issue
The final classification is determined by the controlling claims remaining in the application

This process ensures that the TC with the most relevant expertise handles the appeal.

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Question 49

Can extensions of time be granted after the Notice of Allowance?

Accepted Answer

Generally, extensions of time are not available after the Notice of Allowance has been issued. The MPEP clearly states:

The statutory (nonextendable) time period for payment of the issue fee is 3 months from the date of the Notice of Allowance (35 U.S.C. 151).

Furthermore, for any outstanding informalities at the time of allowance:

Extensions of time under 37 CFR 1.136(a) or (b) are NOT available to correct such informalities. Any such informalities must be corrected and the issue fee and the publication fee, if required, must be paid within the 3-month period.

This means that once you receive a Notice of Allowance, you have a strict 3-month period to pay the issue fee and correct any remaining issues. This period cannot be extended.

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Question 50

Can a supplemental amendment be filed after a final Office action?

Accepted Answer

Can a supplemental amendment be filed after a final Office action?

Yes, a supplemental amendment can be filed after a final Office action, but its entry is not guaranteed. The MPEP 714.03(a) provides guidance on this:

"A supplemental amendment filed after a final action or after an appeal has been taken from a final rejection will not be entered unless approved by the examiner."

When considering whether to enter a post-final supplemental amendment, examiners typically look for:

Amendments that place the application in condition for allowance
Amendments that do not raise new issues requiring further search or consideration
Amendments that address objections or rejections in the final Office action

If the supplemental amendment doesn't meet these criteria, the examiner may deny entry. Applicants should provide a clear explanation of why the amendment should be entered when filing after a final action.

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Question 51

Can a primary examiner refuse to prepare a Patentability Report?

russ.krajec@blueironip.com · Accepted Answer

Yes, a primary examiner can refuse to prepare a Patentability Report. According to MPEP 705.01(a):

'If the primary examiner in a reporting TC is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding TC.'

This means that if the examiner believes the report is unnecessary or inappropriate, they can communicate this to the requesting examiner. This provision allows for efficient use of USPTO resources and ensures that Patentability Reports are prepared only when truly needed.

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Question 52

Are there exceptions to comprehensive patent examination?

Accepted Answer

Yes, there are exceptions to comprehensive patent examination. MPEP 707.07(g) outlines specific situations where limiting examination to a particular issue may be appropriate:

When an application is too informal for a complete action on the merits (See MPEP § 702.01)
When there is an undue multiplicity of claims and no successful telephone request for election of a limited number of claims (See MPEP § 2173.05(n))
When there is a misjoinder of inventions and no successful telephone request for election (See MPEP §§ 803, 810, and 812.01)
When the disclosure is directed to perpetual motion

In these cases, examiners may focus on specific issues rather than providing a comprehensive examination.

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Patent Law FAQ

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MPEP 300 - Ownership and Assignment (1)

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MPEP 500 - Receipt and Handling of Mail and Papers (1)

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Patent Law (3)

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