Patent Law FAQ

While the initial screening for sensitive subject matter is performed by designated personnel, patent examiners also play a crucial role in this process. The MPEP states:

While the initial screening is performed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced, for example, by amendment.

If an examiner identifies potentially sensitive subject matter, they are instructed to take action:

If the examiner is aware of subject matter which should be subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review.

This ongoing vigilance by examiners helps ensure that sensitive information is not inadvertently disclosed, even if it was not identified during the initial screening process.

For more information on Patent examiners, visit: Patent examiners.

A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.

Patent attorneys and examiners generally do not need to be concerned about ‘[Reserved]’ sections like MPEP 212. These sections contain no substantive information and do not affect current patent examination procedures. However, it’s good practice to stay informed about MPEP updates in case reserved sections are filled with new content in the future.

A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.

Patent attorneys and examiners generally do not need to be concerned about ‘[Reserved]’ sections like MPEP 212. These sections contain no substantive information and do not affect current patent examination procedures. However, it’s good practice to stay informed about MPEP updates in case reserved sections are filled with new content in the future.

MPEP 303 outlines specific situations where a patent examiner needs to obtain assignment information from the Patent Application Locator and Monitoring (PALM) system:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

This typically occurs in two main scenarios:

1. When applications from different inventors have conflicting claims
2. When there’s uncertainty about who should direct the prosecution

In these cases, the examiner must consult PALM to clarify the assignment status.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

For more information on assignment information, visit: assignment information.

For more information on conflicting claims, visit: conflicting claims.

For more information on Patent examiners, visit: Patent examiners.

For more information on patent prosecution, visit: patent prosecution.

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.

MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This instruction serves to:

• Remind examiners not to include assignment documents in the main application file
• Direct examiners to forward any received assignment documents to the Assignment Division
• Ensure that the proper procedures for recording assignments are followed
• Maintain the separation between technical examination and ownership recording

By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.

MPEP 303 outlines specific situations where a patent examiner needs to obtain assignment information from the Patent Application Locator and Monitoring (PALM) system:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

This typically occurs in two main scenarios:

1. When applications from different inventors have conflicting claims
2. When there’s uncertainty about who should direct the prosecution

In these cases, the examiner must consult PALM to clarify the assignment status.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

For more information on assignment information, visit: assignment information.

For more information on conflicting claims, visit: conflicting claims.

For more information on Patent examiners, visit: Patent examiners.

For more information on patent prosecution, visit: patent prosecution.

MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This instruction serves to:

• Remind examiners not to include assignment documents in the main application file
• Direct examiners to forward any received assignment documents to the Assignment Division
• Ensure that the proper procedures for recording assignments are followed
• Maintain the separation between technical examination and ownership recording

By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.

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.

A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:

“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”

However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.

A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:

“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”

However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.

MPEP 303 outlines specific situations where a patent examiner needs to obtain assignment information from the Patent Application Locator and Monitoring (PALM) system:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

This typically occurs in two main scenarios:

1. When applications from different inventors have conflicting claims
2. When there’s uncertainty about who should direct the prosecution

In these cases, the examiner must consult PALM to clarify the assignment status.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

For more information on assignment information, visit: assignment information.

For more information on conflicting claims, visit: conflicting claims.

For more information on Patent examiners, visit: Patent examiners.

For more information on patent prosecution, visit: patent prosecution.

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.

A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:

“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”

However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.

A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.

While the initial screening for sensitive subject matter is performed by designated personnel, patent examiners also play a crucial role in this process. The MPEP states:

While the initial screening is performed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced, for example, by amendment.

If an examiner identifies potentially sensitive subject matter, they are instructed to take action:

If the examiner is aware of subject matter which should be subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review.

This ongoing vigilance by examiners helps ensure that sensitive information is not inadvertently disclosed, even if it was not identified during the initial screening process.

For more information on Patent examiners, visit: Patent examiners.

Patent attorneys and examiners generally do not need to be concerned about ‘[Reserved]’ sections like MPEP 212. These sections contain no substantive information and do not affect current patent examination procedures. However, it’s good practice to stay informed about MPEP updates in case reserved sections are filled with new content in the future.

MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This instruction serves to:

• Remind examiners not to include assignment documents in the main application file
• Direct examiners to forward any received assignment documents to the Assignment Division
• Ensure that the proper procedures for recording assignments are followed
• Maintain the separation between technical examination and ownership recording

By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.

MPEP 303 outlines specific situations where a patent examiner needs to obtain assignment information from the Patent Application Locator and Monitoring (PALM) system:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

This typically occurs in two main scenarios:

1. When applications from different inventors have conflicting claims
2. When there’s uncertainty about who should direct the prosecution

In these cases, the examiner must consult PALM to clarify the assignment status.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

For more information on assignment information, visit: assignment information.

For more information on conflicting claims, visit: conflicting claims.

For more information on Patent examiners, visit: Patent examiners.

For more information on patent prosecution, visit: patent prosecution.

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.

A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401:

“If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent.”

However, the examiner should not suggest hiring a practitioner if the application appears to contain no patentable subject matter. The MPEP provides a form paragraph (4.10) for examiners to use when making this suggestion.

A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.

While the initial screening for sensitive subject matter is performed by designated personnel, patent examiners also play a crucial role in this process. The MPEP states:

While the initial screening is performed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced, for example, by amendment.

If an examiner identifies potentially sensitive subject matter, they are instructed to take action:

If the examiner is aware of subject matter which should be subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review.

This ongoing vigilance by examiners helps ensure that sensitive information is not inadvertently disclosed, even if it was not identified during the initial screening process.

For more information on Patent examiners, visit: Patent examiners.

Patent attorneys and examiners generally do not need to be concerned about ‘[Reserved]’ sections like MPEP 212. These sections contain no substantive information and do not affect current patent examination procedures. However, it’s good practice to stay informed about MPEP updates in case reserved sections are filled with new content in the future.

MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This instruction serves to:

• Remind examiners not to include assignment documents in the main application file
• Direct examiners to forward any received assignment documents to the Assignment Division
• Ensure that the proper procedures for recording assignments are followed
• Maintain the separation between technical examination and ownership recording

By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.