Question 1

Where can I find more information about exhibit requirements in patent applications?

Accepted Answer

For more detailed information about exhibit requirements in patent applications, you can refer to several key resources. The MPEP 715.07(d) states, "See also MPEP § 608.03(a)." This reference directs you to MPEP 608.03(a), which provides comprehensive guidance on models, exhibits, and specimens. Additionally, the requirements for exhibits are detailed in 37 CFR 1.91, which outlines the specific rules for submitting exhibits in patent applications.

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Question 2

What should I prepare for a patent interview with an examiner?

Accepted Answer

To prepare for a patent interview with an examiner, consider the following:

Be fully prepared to discuss issues raised in the Office action.
Submit an agenda indicating issues you want to discuss.
Prepare a proposed amendment or argument in writing.
Familiarize yourself with the status and existing issues in the application.
Be prepared to keep the interview within a reasonable time frame (usually 30 minutes).

The MPEP advises: "It is desirable that the attorney, agent, or applicant submit an agenda which indicates in advance what issues they desire to discuss at the interview by submitting, in writing, a proposed amendment or argument. This would permit the examiner to prepare in advance for the interview and to focus on the matters set forth in the proposed amendment."

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Question 3

What materials are allowed to be visible during a patent interview?

russ.krajec@blueironip.com · Accepted Answer

During a patent interview, only materials directly related to the case under discussion should be visible. The MPEP 713.07 provides clear guidance on this matter:

Prior to an interview, the examiner should ensure that all files, drawings and other papers, except those necessary in the interview, are out of view.

This means that the following materials may be visible during the interview:

The specific patent application being discussed
Relevant drawings or diagrams for the application in question
Any documents or prior art cited in the current application
Notes or materials prepared specifically for the interview

All other materials, especially those related to other patent cases, must be kept out of view to maintain confidentiality and focus on the current application.

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Question 4

What is the purpose of the Manual of Patent Examining Procedure (MPEP)?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) serves as a comprehensive guide for patent examiners, applicants, attorneys, and agents involved in the patent application process. According to MPEP 101, its purpose is to:

Provide instructions to examiners for the examination of patent applications
Outline procedures for processing and examining patent applications
Serve as a reference work on patent laws, rules, and examination practices

The MPEP states: The Manual contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.

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

For more information on USPTO Guidelines, visit: USPTO Guidelines.

Question 5

What is the preferred order of arrangement for a patent specification?

Accepted Answer

The MPEP provides guidelines for the preferred order of arrangement in framing a patent specification. While not mandatory, following this order can help organize the application effectively:

Title of the invention
Cross-reference to related applications
Statement regarding federally sponsored research or development
Background of the invention
Brief summary of the invention
Brief description of the several views of the drawing
Detailed description of the invention
Claims
Abstract of the disclosure

The MPEP states: "The following order of arrangement is preferable in framing the specification. See also MPEP § 608.01(a). Each of the lettered items should appear in upper case, without underlining or bold type, as section headings."

For more detailed information on the specification arrangement, refer to MPEP § 608.01(a).

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Question 6

What is the legal status of the Manual of Patent Examining Procedure (MPEP)?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) holds a unique legal status in patent law. According to MPEP 101:

The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.

This means:

The MPEP is not legally binding like statutes or regulations
It serves as an interpretive guide for patent examiners and practitioners
Courts may give it deference but are not bound by its contents

However, the MPEP is highly influential because it:

Reflects official USPTO policies and procedures
Is used by examiners in their day-to-day work
Provides valuable guidance for patent applicants and attorneys

While not law, the MPEP is an essential resource for understanding and navigating the patent examination process.

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

For more information on USPTO Guidelines, visit: USPTO Guidelines.

Question 7

What is an extract of an original document in patent assignment submissions?

Accepted Answer

An extract of an original document refers to a portion or summary of the original assignment document that contains the essential information required for recording. Both 37 CFR 3.24(a) and (b) state that "Either a copy of the original document or an extract of the original document may be submitted for recording."

When submitting an extract:

Ensure it includes all relevant assignment details.
The extract must meet the same format requirements as a full copy.
It should be clear that the extract represents the key elements of the original document.

Using an extract can be beneficial when the original document contains confidential information not necessary for the assignment record.

Question 8

What are the requirements for using video conferencing for patent interviews?

Accepted Answer

Video conferencing for patent interviews must adhere to specific requirements as outlined in MPEP 713.01:

All video conferences must originate or be hosted by USPTO personnel.
Examiners cannot conduct interviews via video conferences hosted by applicants or third parties.
The examiner assigned to the application should coordinate the video conference using USPTO web-based collaboration tools.
Written authorization from the applicant is preferred before scheduling a video conference.
Oral authorization is sufficient but limited to arranging the video conference interview.

The MPEP states: "All video conferences for interviews MUST originate or be hosted by USPTO personnel. Examiners may not conduct interviews via video conferences hosted by applicants or third parties."

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Question 9

What are the requirements for paper submissions of patent assignment documents?

Accepted Answer

For paper submissions of patent assignment documents, the following requirements must be met:

Submit either a copy of the original document or an extract of the original document.
Use only one side of each page.
Paper size must be either 8.5" x 11" or A4, with a 1-inch margin on all sides.
Use flexible, strong white, non-shiny, and durable paper.

As stated in 37 CFR 3.24(b): "For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable." This ensures that the document can be properly recorded and stored by the USPTO.

Question 10

What are the requirements for citing prior art in a patent examiner's office action?

Accepted Answer

What are the requirements for citing prior art in a patent examiner's office action?

When citing prior art in an office action, patent examiners must follow specific requirements to ensure clarity and completeness. According to MPEP 707.05, examiners should:

Cite domestic and foreign patents by document number, kind code, and date
Include the name of the patentee for domestic patents
Cite non-patent literature with sufficient detail for identification
Indicate relevant pages, sections, or lines where the specific pertinent subject matter may be found

The MPEP states: 'In citing references, the examiner should remember that breath is not necessarily a virtue in a reference citation, and that brievity and pointedness are important.' This approach helps applicants quickly locate and understand the relevance of cited prior art to their application.

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Question 11

What are the general guidelines for conducting interviews in patent applications?

Accepted Answer

The general guidelines for conducting interviews in patent applications are outlined in MPEP 713.01. Key points include:

Interviews must be conducted on Office premises and within Office hours, as designated by examiners.
Interviews for discussing patentability typically won't occur before the first Office action, unless it's a continuing or substitute application.
Face-to-face interviews may be accomplished via video conferencing or in-person.
In-person interviews should normally be granted and conducted on Office premises during normal business hours.
Video conferencing interviews should be offered when in-person meetings are not possible.

As stated in the MPEP: "A request for a face-to-face interview will normally be granted. Other times, a telephone interview provides an appropriate level of interaction."

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Question 12

What are the consequences of an improper title in a patent application?

Accepted Answer

What are the consequences of an improper title in a patent application?

An improper title in a patent application can lead to several consequences:

Rejection or objection: The USPTO may reject or object to the application if the title doesn't meet the requirements outlined in MPEP 606.
Delayed processing: An improper title may cause delays in processing the application as it may need to be corrected.
Misclassification: An inaccurate or vague title might result in the application being misclassified, potentially affecting the examination process.
Difficulty in prior art searches: A poor title can make it harder for examiners to conduct effective prior art searches, potentially impacting the examination quality.

As stated in MPEP 606, The title of the invention should be placed at the top of the first page of the specification unless it is provided in an application data sheet. The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. Adhering to these guidelines helps avoid potential issues and ensures smooth processing of the application.

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Question 13

What are the best practices for conducting patent interviews?

Accepted Answer

The USPTO provides guidelines for conducting effective patent interviews:

Use interview time efficiently
Present positions with decorum and courtesy
Minimize interruptions during the interview
Group interviews where effective

The MPEP refers to a comprehensive resource: "This policy and other interview tips are detailed in the Interview Best Practices document which is available at www.uspto.gov/InterviewPractice." Applicants and examiners are encouraged to review this document for detailed guidance on conducting productive interviews.

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Question 14

What are the benefits and limitations of filing a provisional patent application?

Accepted Answer

Filing a provisional patent application offers several benefits but also has limitations:

Benefits:

Establishes an early filing date quickly and inexpensively
Allows use of 'Patent Pending' for up to 12 months
Provides time to assess commercial potential before filing a nonprovisional application
Does not require claims or an oath/declaration

Limitations:

Limited 12-month pendency
Cannot directly mature into a patent
Not examined for patentability
Cannot claim priority to any earlier applications

The MPEP notes: A provisional application is not entitled to the right of priority of any other application under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application.

Additionally, No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. This limits the use of provisional applications in certain contexts.

For more information on USPTO Guidelines, visit: USPTO Guidelines.

Question 15

How should patent examiners communicate rejections not based on prior art?

Accepted Answer

According to MPEP 706.03, patent examiners should communicate rejections not based on prior art in a clear and thorough manner. The MPEP states:

"Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved."

Furthermore, the MPEP emphasizes:

"Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion."

This guidance encourages examiners to:

Provide clear explanations for rejections
Offer specific reasons for each rejection
Suggest potential solutions or ways to overcome the rejection
Avoid making rejections without proper justification

By following these guidelines, examiners can help applicants better understand the issues with their applications and how to address them effectively.

To learn more:

patent examination
non-prior art rejections
communication
USPTO guidelines

Question 16

How should examiners handle multiple dependent claims in patent applications?

Accepted Answer

How should examiners handle multiple dependent claims in patent applications?

When dealing with multiple dependent claims in patent applications, examiners must follow specific guidelines. The MPEP 707.07(i) states: 'When examining an application with multiple dependent claims, the examiner should make certain that each multiple dependent claim is proper.' Examiners are instructed to:

Ensure that multiple dependent claims meet the requirements of 35 U.S.C. 112(e)
Check that fees have been properly calculated for multiple dependent claims
Treat each multiple dependent claim as covering every combination of dependencies specified

If issues are found with multiple dependent claims, examiners should clearly communicate these in their office actions to allow applicants to make necessary corrections.

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Question 17

How should a patent abstract be formatted?

Accepted Answer

The formatting requirements for a patent abstract are:

It should be in narrative form
Generally limited to a single paragraph
Preferably 50 to 150 words in length
Should not exceed 15 lines of text
Avoid legal phraseology often used in patent claims (e.g., 'means' and 'said')
Use clear and concise language
Avoid phrases like 'This disclosure concerns,' 'The disclosure defined by this invention,' or 'This disclosure describes'

The MPEP states: The abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length. The abstract should not exceed 15 lines of text.

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Question 18

How does the USPTO view experimental failures in determining patent operability?

Accepted Answer

The USPTO takes a nuanced view of experimental failures when determining patent operability. According to MPEP 716.07:

'It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker. The failures of experimenters who have no interest in succeeding should not be accorded great weight.'

This means that occasional failures or the need for some experimentation doesn't necessarily indicate that a patent is inoperable. The USPTO expects that skilled artisans would make reasonable efforts to get the invention to work, and failures by those not invested in the success of the invention are not given significant consideration.

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Question 19

How does the USPTO handle proof of refusal for a non-signing inventor?

Accepted Answer

The USPTO has specific guidelines for handling proof of refusal from a non-signing inventor. According to MPEP 409.03(d):

In the case of refusal, the proof that a bona fide attempt was made to present a copy of the application papers to the non-signing inventor for signature, but the inventor refused to sign the papers, must be submitted.

To demonstrate proof of refusal, an applicant should:

Provide evidence of attempts to present the application to the inventor
Document the inventor's explicit refusal to sign
Include any communication or statements from the inventor indicating refusal
Submit an affidavit or declaration detailing the refusal circumstances

The USPTO will review this evidence to determine if it constitutes a valid proof of refusal.

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Question 20

How does the USPTO handle photographs in patent applications?

Accepted Answer

How does the USPTO handle photographs in patent applications?

The USPTO has specific guidelines for handling photographs in patent applications:

General rule: As stated in MPEP 608.02(a), "Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications."
Exceptions: Photographs are accepted in applications where they are the only practicable medium for illustrating the claimed invention. This typically applies to:

Crystalline structures
Metallurgical microstructures
Textile fabrics
Grain structures
Color effects

If photographs are submitted, applicants should ensure they meet USPTO standards to avoid potential issues during examination.

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Question 21

How does the USPTO handle offensive language in patent applications?

Accepted Answer

The USPTO has specific guidelines for handling offensive language in patent applications. According to MPEP 608:

"If during the course of examination of a patent application, an examiner notes the use of language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, he or she should object to the use of the language as failing to comply with 37 CFR 1.3 which proscribes the presentation of papers which are lacking in decorum and courtesy."

Examiners are instructed to object to such language and require its removal before classifying the application for publication or passing it to issue. This policy applies to both text and drawings in the application.

To learn more:

37 CFR 1.3

Question 22

How does the USPTO handle allegations of unexpected results for different types of inventions?

Accepted Answer

How does the USPTO handle allegations of unexpected results for different types of inventions?

The USPTO's approach to allegations of unexpected results can vary depending on the type of invention. According to MPEP 716.02:

For chemical inventions: Unexpected results are often demonstrated through comparative tests. The MPEP states, Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention.

For mechanical inventions: Unexpected results may be less common but can still be relevant. The MPEP notes, The mere fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic.

For biotechnology inventions: Unexpected results can be particularly important due to the unpredictability of the field. The MPEP advises, The evidence relied upon should establish 'that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.'

In all cases, the USPTO emphasizes that the alleged unexpected results must be commensurate in scope with the claimed invention.

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Question 23

How does the USPTO handle allegations of unexpected results for chemical compounds?

russ.krajec@blueironip.com · Accepted Answer

How does the USPTO handle allegations of unexpected results for chemical compounds?

The USPTO has specific guidelines for evaluating allegations of unexpected results, particularly for chemical compounds. According to MPEP 716.02(a)(II):

"Evidence that a compound possesses unexpected properties is not sufficient to rebut a prima facie case of obviousness if the prior art suggested that the compound would possess the properties."

This means that if the prior art suggests that a chemical compound would have certain properties, showing that it actually has those properties is not considered unexpected. To be considered unexpected, the results must be truly surprising in light of what was known in the prior art.

Additionally, the USPTO requires that the unexpected results be commensurate in scope with the claims. This means that the evidence of unexpected results should apply to the full range of what is being claimed, not just a narrow subset.

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Question 24

How does the USPTO evaluate evidence of utility in patent applications?

Accepted Answer

The evaluation of utility evidence in patent applications is guided by specific sections of the MPEP. As mentioned in MPEP 716.08:

"See MPEP § 2107.02, for guidance on when it is proper to require evidence of utility or operativeness, and how to evaluate any evidence which is submitted to overcome a rejection under 35 U.S.C. 101 for lack of utility."

The USPTO evaluates such evidence based on established legal precedents and examination guidelines. Examiners consider factors such as the nature of the invention, the level of predictability in the art, and the sufficiency of the evidence provided. The goal is to ensure that the claimed invention has a credible, specific, and substantial utility as required by 35 U.S.C. 101.

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Question 25

How are new claims numbered in a patent application?

Accepted Answer

When adding new claims to a patent application, it's crucial to follow the proper numbering convention. According to MPEP 608.01(j):

"When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not)."

This means that new claims should be numbered sequentially, starting with the number that comes after the highest-numbered claim in the application, regardless of whether that claim was entered or not. This system ensures a clear and consistent numbering scheme throughout the prosecution process.

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Question 26

How are claims numbered in a single claim patent application?

Accepted Answer

In the case of a patent application with only one claim, the numbering convention is different. According to MPEP 608.01(j):

"In a single claim case, the claim is not numbered."

This means that if your patent application contains only one claim, you should not assign a number to that claim. This practice simplifies the presentation of the claim and avoids unnecessary numbering in cases where there's only one claim to consider.

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Question 27

Can patent practitioners rely on information from reserved MPEP sections?

Accepted Answer

Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:

Refer to active, non-reserved sections of the MPEP
Consult the most recent USPTO guidelines and notices
Stay updated on changes to patent laws and regulations
Seek guidance from official USPTO sources when needed

It's important to always use the most current and official information when dealing with patent matters.

Question 28

Can I show a video during a patent interview with an examiner?

Accepted Answer

Yes, you can show a video during a patent interview with an examiner, but there are specific guidelines to follow:

You must demonstrate that the video content is relevant to an outstanding issue in the application.
The video should advance the prosecution of the application.
If the video format is not compatible with USPTO equipment, you should bring the necessary equipment to display it.
The substance of the interview, including a summary of the video content, must be made of record in the application.

As stated in MPEP 713.01: "Attorneys or applicants wishing to show a video during an examiner interview must be able to demonstrate that the content of the video has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application."

To learn more:

Here’s the complete FAQ:

MPEP 101-General (2)

What is the purpose of the Manual of Patent Examining Procedure (MPEP)?

What is the legal status of the Manual of Patent Examining Procedure (MPEP)?

MPEP 200 - Types and Status of Application; Benefit and Priority (1)

What are the benefits and limitations of filing a provisional patent application?

MPEP 201 - Types of Applications (1)

What are the benefits and limitations of filing a provisional patent application?

MPEP 300 - Ownership and Assignment (2)

What is an extract of an original document in patent assignment submissions?

What are the requirements for paper submissions of patent assignment documents?

MPEP 302 - Recording of Assignment Documents (2)

What is an extract of an original document in patent assignment submissions?

What are the requirements for paper submissions of patent assignment documents?

MPEP 400 - Representative of Applicant or Owner (2)

How does the USPTO handle proof of refusal for a non-signing inventor?

Can patent practitioners rely on information from reserved MPEP sections?

MPEP 404 - [Reserved] (1)

Can patent practitioners rely on information from reserved MPEP sections?

Patent Law (14)

What is the purpose of the Manual of Patent Examining Procedure (MPEP)?

What is the preferred order of arrangement for a patent specification?

What is the legal status of the Manual of Patent Examining Procedure (MPEP)?

What is an extract of an original document in patent assignment submissions?

What are the requirements for paper submissions of patent assignment documents?

What are the consequences of an improper title in a patent application?

What are the consequences of an improper title in a patent application?

What are the benefits and limitations of filing a provisional patent application?

How should a patent abstract be formatted?

How does the USPTO handle proof of refusal for a non-signing inventor?

How does the USPTO handle photographs in patent applications?

How does the USPTO handle photographs in patent applications?

How does the USPTO handle offensive language in patent applications?

How are new claims numbered in a patent application?

How are claims numbered in a single claim patent application?

Can patent practitioners rely on information from reserved MPEP sections?

Patent Procedure (14)

What is the purpose of the Manual of Patent Examining Procedure (MPEP)?

What is the preferred order of arrangement for a patent specification?

What is the legal status of the Manual of Patent Examining Procedure (MPEP)?

What is an extract of an original document in patent assignment submissions?

What are the requirements for paper submissions of patent assignment documents?

What are the consequences of an improper title in a patent application?

What are the consequences of an improper title in a patent application?

What are the benefits and limitations of filing a provisional patent application?

How should a patent abstract be formatted?

How does the USPTO handle proof of refusal for a non-signing inventor?

How does the USPTO handle photographs in patent applications?

How does the USPTO handle photographs in patent applications?

How does the USPTO handle offensive language in patent applications?

How are new claims numbered in a patent application?

How are claims numbered in a single claim patent application?

Can patent practitioners rely on information from reserved MPEP sections?