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

Q: When is a Patentability Report not appropriate in patent examination?

According to MPEP 705.01(e) , Patentability Reports are not appropriate in several situations: Claims with the same character but different scope: Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper. Manufacturing process and product claims: Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report. Product and simple process claims: Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination. Combination and subcombination claims: Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination. To learn more: Patentability Report Patent Examination Claim Scope Manufacturing Process Product Claims

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.

To learn more:

Question 2

Who prepares patentability reports?

Accepted Answer

Patentability reports are typically prepared by examiners with specialized knowledge in different technical fields. The MPEP 705 states: "Patentability reports are prepared by examiners in the Technology Center (TC) to which the application is assigned and by examiners in one or more other TCs." This collaborative approach ensures that all aspects of complex or multi-invention applications are thoroughly examined by experts in relevant fields.

To learn more:

Question 3

Who initiates a patentability report during patent examination?

Accepted Answer

A patentability report is typically initiated by the primary examiner assigned to the application. According to MPEP 705, 'the primary examiner indicates the classifications where patentability reports are desired and suggests the best fitted examiners'. This decision is based on the primary examiner's assessment of the application's complexity and the need for specialized knowledge in different areas.

To learn more:

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.

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Question 5

When is a Patentability Report not appropriate in patent examination?

Accepted Answer

According to MPEP 705.01(e), Patentability Reports are not appropriate in several situations:

Claims with the same character but different scope:
Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.
Manufacturing process and product claims:
Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.
Product and simple process claims:
Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.
Combination and subcombination claims:
Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.

To learn more:

Question 6

When is a Patentability Report not appropriate in patent examination?

Accepted Answer

Patentability Reports are not always the most efficient or appropriate method for patent examination. MPEP 705.01(e) outlines situations where Patentability Reports are ordinarily not proper:

"Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper."

Additionally, Patentability Reports are generally not appropriate in the following situations:

Claims related to a manufacturing process and a product defined by that process
Claims related to a product and a process involving merely the fact that a product with certain characteristics is made
Claims related to a combination distinguished solely by the characteristics of a subcombination

The MPEP emphasizes that Patentability Reports should only be used when they save total examiner time or result in improved quality of action due to specialized knowledge.

To learn more:

Question 7

What is the role of reminders in the Patentability Report process?

Accepted Answer

Reminders play an important role in ensuring the timely completion of Patentability Reports (P.R.s). According to MPEP 705.01(c), To ensure orderly progress in the reported dates, a timely reminder should be furnished to the TC making the P.R. This procedure helps maintain efficiency in the patent examination process by prompting the reporting Technology Center (TC) to complete the P.R. in a timely manner. It's a proactive measure to prevent delays and keep the application moving through the examination pipeline.

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Question 8

What is the role of auxiliary examiners in patentability reports?

Accepted Answer

Auxiliary examiners play a crucial role in preparing patentability reports. The MPEP 705 outlines their responsibilities: 'When an application is sent for a patentability report, the primary examiner must indicate in the application file any field of search that should be covered by the report'. Auxiliary examiners then:

Conduct searches in their specialized areas
Provide expert opinions on patentability
Contribute to the comprehensive examination of complex applications

Their input ensures that all aspects of the invention are thoroughly examined by experts in relevant fields.

To learn more:

Question 9

What is the role of a primary examiner in patentability reports?

Accepted Answer

The primary examiner plays a crucial role in coordinating and overseeing the preparation of patentability reports. According to MPEP 705, "The primary examiner having jurisdiction of the application initiates a request for a patentability report using form PTO-1323." The primary examiner is responsible for:

Identifying the need for a patentability report
Initiating the request for the report
Coordinating with other Technology Centers
Reviewing and incorporating the findings into the overall examination

This oversight ensures a comprehensive and coordinated examination of complex applications.

To learn more:

Question 10

What is the purpose of a patentability report?

Accepted Answer

A patentability report serves to provide a comprehensive examination of an application that involves multiple inventions or complex subject matter. According to MPEP 705, "A patentability report is an internal USPTO memorandum, prepared by one examiner, expressing that examiner's opinion as to the patentability of claims in a patent application assigned to another examiner." This report helps ensure thorough examination by leveraging expertise from different technology areas within the USPTO.

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Question 11

What is the primary goal of using Patentability Reports in patent examination?

Accepted Answer

The primary goal of using Patentability Reports in patent examination is to save total examiner time or improve the quality of examination. According to MPEP 705.01(e):

A saving of total examiner time that is required to give a complete examination of an application is of primary importance.

The MPEP further explains that Patentability Reports should only be used when they can achieve one or both of these objectives:

Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge.

This practice aims to enhance the efficiency and effectiveness of the patent examination process, particularly for applications with plural, indivisible inventions that may benefit from specialized expertise.

To learn more:

Question 12

What is a Patentability Report in patent examination?

Accepted Answer

A Patentability Report is a specialized practice in patent examination where multiple examiners with different expertise collaborate on examining an application with plural, indivisible inventions. According to MPEP 705.01(e):

Patentability Report practice is based on the proposition that when plural, indivisible inventions are claimed, in some instances either less time is required for examination, or the results are of better quality, when specialists on each character of the claimed invention treat the claims directed to their specialty.

However, this practice is not obligatory and should only be used when it saves total examiner time or improves the quality of examination due to specialized knowledge.

To learn more:

Patentability Report
Patent Examination
Plural Inventions
Examiner Specialization

Question 13

What is a Patentability Report in patent examination?

Accepted Answer

A Patentability Report (P.R.) is a specialized examination process used by the United States Patent and Trademark Office (USPTO) when an application contains claims that require expertise from different Technology Centers (TCs). According to MPEP 705.01:

"When an application comes up for any action and the primary examiners involved (i.e., from both the requesting and the requested Technology Center (TC)) agree that a Patentability Report from the requested TC is necessary for some of the claims, and if the TC Director of the requesting TC approves, the application is forwarded to the requested TC with a request for the Patentability Report."

This process allows for specialized knowledge to be applied to specific claims, potentially improving the quality of the examination.

To learn more:

Question 14

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.

To learn more:

Question 15

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.

To learn more:

MPEP

Question 16

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:

MPEP

Question 17

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 18

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).

To learn more:

Question 19

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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 20

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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 21

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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 22

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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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P.R.

Question 23

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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 24

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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 25

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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 26

How is the sequence of examination determined in Patentability Report cases?

russ.krajec@blueironip.com · Accepted Answer

The sequence of examination in Patentability Report (P.R.) cases is determined through collaboration between supervisory patent examiners. According to MPEP 705.01(b):

"In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the application will direct that a complete search be made of the art relevant to his or her claims prior to referring the application to another TC for report."

The process involves:

Agreement between supervisory patent examiners on the order of examination
If no agreement is reached, a complete search is conducted by the TC with jurisdiction before referral
The TC receiving the referral is advised of the search results
Flexibility to modify the search sequence if supervisory patent examiners deem it expedient

To learn more:

Question 27

How is a Patentability Report prepared and what does it include?

Accepted Answer

A Patentability Report is prepared by the primary examiner in the requested Technology Center (TC) after approving the request. According to MPEP 705.01(a):

"This Patentability Report is in memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered must be recorded in the appropriate section of the 'Search Notes' form."

The report includes:

Citations of pertinent references
A complete action on all claims involved
Record of the field of search

Once completed, the Patentability Report is signed by the primary examiner in the reporting TC and returned to the TC to which the application is regularly assigned.

To learn more:

Question 28

How is a Patentability Report approved in the USPTO?

Accepted Answer

A Patentability Report must be approved by the Director of the Technology Center to which the application is assigned. The MPEP 705.01(e) states:

Where it can be shown that a Patentability Report will save total examiner time, one is permitted with the approval of the Director of the Technology Center to which the application is assigned. The "Approved" stamp should be impressed on the memorandum requesting the Patentability Report.

This approval process ensures that Patentability Reports are used only when they are likely to save total examiner time or improve the quality of examination due to specialized knowledge.

To learn more:

Patentability Report
USPTO Approval Process
Technology Center Director
Patent Examination

Question 29

How does the USPTO determine if a Patentability Report is appropriate?

Accepted Answer

The USPTO determines if a Patentability Report is appropriate based on two main factors: saving total examiner time and improving examination quality. According to MPEP 705.01(e):

Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge.

The decision to use a Patentability Report involves considering:

The nature of the claimed inventions
The potential time savings from involving specialists
The potential improvement in examination quality due to specialized knowledge
The relationship between the claims (e.g., same character but different scope, manufacturing process and product, etc.)

If it can be demonstrated that a Patentability Report will save total examiner time, it may be approved by the Director of the Technology Center to which the application is assigned.

To learn more:

Question 30

How does the USPTO count and record Patentability Reports?

Accepted Answer

The USPTO has specific procedures for counting and recording Patentability Reports (P.R.s). According to MPEP 705.01(c):

When the P.R. is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer.
Credit, however, is given for the time spent.

This means that while the P.R. process doesn't affect the official count of actions or receipts, the USPTO does acknowledge the time examiners spend on preparing these reports.

To learn more:

Question 31

How does a Patentability Report affect an application's date status?

Accepted Answer

The Patentability Report (P.R.) process has a specific impact on an application's date status. MPEP 705.01(c) states: The date status of the application in the reporting TC will be determined on the basis of the dates in the TC of original jurisdiction. This means that even though the application is temporarily in a different Technology Center (TC) for the P.R., its official timeline and status dates are still based on its original TC. This ensures consistency in tracking the application's progress throughout the examination process.

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Question 32

How are search fields determined for patentability reports?

Accepted Answer

The determination of search fields for patentability reports is a crucial step in the examination process. According to MPEP 705, 'the primary examiner must indicate in the application file any field of search that should be covered by the report'. This process typically involves:

The primary examiner identifying relevant technical areas
Consideration of the invention's various aspects and potential applications
Input from auxiliary examiners with specialized knowledge

The goal is to ensure a comprehensive search that covers all aspects of the invention and potential prior art.

To learn more:

Question 33

How are patentability reports different from regular examinations?

Accepted Answer

Patentability reports differ from regular examinations in several ways:

They involve multiple examiners with different areas of expertise.
They are used for applications with multiple inventions or complex subject matter.
They provide a more comprehensive analysis of various aspects of the application.

The MPEP 705 states that 'patentability reports are prepared by examiners who are best fitted to do so by reason of their knowledge of any art properly subject to their special scrutiny'. This collaborative approach ensures a thorough examination of all aspects of the application.

To learn more:

Question 34

How are Patentability Reports counted and recorded by the USPTO?

Accepted Answer

The USPTO has specific procedures for counting and recording Patentability Reports (P.R.s). 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). When the P.R. is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent."

Key points about counting and recording P.R.s:

Forwarding for a P.R. is not considered a transfer
Completing and returning a P.R. is not counted as a receipt or action by transfer
Examiners receive credit for time spent on P.R.s
The date status of the application is determined based on dates in the TC of original jurisdiction
Timely reminders should be furnished to the TC making the P.R. to ensure orderly progress

To learn more:

Question 35

How are multiple Technology Centers involved in patentability reports?

Accepted Answer

Patentability reports often involve collaboration between multiple Technology Centers (TCs) to address complex or multi-invention applications. The MPEP 705 explains: "Patentability reports are prepared by examiners in the Technology Center (TC) to which the application is assigned and by examiners in one or more other TCs." This collaboration typically occurs when:

An application covers multiple technical fields
Specialized expertise is required for certain aspects of the invention
The primary TC needs input on specific claims or inventions

By involving multiple TCs, the USPTO ensures a thorough and expert examination of all aspects of the application.

To learn more:

Question 36

How are interviews conducted in cases involving Patentability Reports?

Accepted Answer

When interviews are held for applications involving Patentability Reports, special considerations apply. According to MPEP 705.01(f):

"In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting Technology Center may be called on for assistance at the interview when it concerns claims treated by them."

Key points about interviews in Patentability Report cases:

This procedure allows for a comprehensive discussion of all claims, including those examined through the Patentability Report process.

To learn more:

Question 37

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 38

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.

To learn more:

Question 39

How are appeals handled in cases involving Patentability Reports?

Accepted Answer

When an appeal is taken from the rejection of claims in a case involving a Patentability Report, specific procedures are followed. According to MPEP 705.01(a):

"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. The receiving TC will take jurisdiction of the application and prepare the examiner's answer."

This process ensures that:

The TC with the most relevant expertise handles the appeal
The examiner's answer is prepared by the TC most familiar with the subject matter
If the application is allowed after appeal, the receiving TC may send it to issue with its classification determined by the controlling claims remaining in the application

To learn more:

Question 40

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.

To learn more:

Patent Law FAQ

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

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Patent Law (1)

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Patent Procedure (1)

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