Can Board remarks about claim features be interpreted as allowance guidance?
No, remarks by the Patent Trial and Appeal Board about claim features should not be interpreted as guidance for allowance. MPEP 1213 clearly states: A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim may be allowed if the…
Read MoreCan CPC classification for a patent application change during examination?
Yes, the CPC classification for a patent application can change during examination. While MPEP 909.01(a) states that “New applications are classified in the CPC system” initially, the classification may be adjusted during the examination process. Reasons for changes include: Amendments to the claims that alter the scope of the invention Examiner’s improved understanding of the…
Read MoreHow should claims be presented in a reissue application?
How should claims be presented in a reissue application? In a reissue application, claims must be presented in a specific manner according to MPEP 1453. The MPEP states: “All amendment changes must be made relative to the patent to be reissued. Pursuant to 37 CFR 1.173(b)(2), for each claim that is being amended, the entire…
Read MoreWhat is the Board’s obligation regarding new or amended claims during an appeal?
The Board of Patent Appeals and Interferences (BPAI) has no obligation to consider new or amended claims submitted while it has jurisdiction of an appeal. This is clearly stated in MPEP 1211.02: “There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal.” This…
Read MoreHow can I avoid a statutory double patenting rejection?
A statutory double patenting rejection can be avoided by: Amending the conflicting claims so that they are not coextensive in scope Canceling the conflicting claims in all pending applications (if the conflicting claims are in one or more pending applications and a patent) Canceling the conflicting claims in all but one of the pending applications…
Read MoreWhat should be included in an Article 19 amendment submission?
An Article 19 amendment submission should include several components as outlined in the MPEP: A complete set of claims replacing the originally filed claims A letter indicating the differences between the original and amended claims An explanation of the basis for the amendments in the original application An optional statement under Article 19 The MPEP…
Read MoreWhat is an Article 19 Amendment in the Patent Cooperation Treaty?
An Article 19 Amendment is a mechanism under the Patent Cooperation Treaty (PCT) that allows applicants to amend the claims of an international patent application after the issuance of the search report. According to MPEP 1893.01(a)(2), “The claims of an international application may be amended under PCT Article 19 after issuance of the search report.”…
Read MoreHow are Article 19 and Article 34 amendments treated in the U.S. national stage?
Article 19 and Article 34 amendments made during the international phase are treated differently when entering the U.S. national stage: Article 19 Amendments: Article 19 amendments to the claims will be entered by the USPTO if they are in English and received by the date of national stage commencement. As stated in MPEP 1893.01(a)(2): “Article…
Read MoreWhat types of amendments may be remanded for consideration during an appeal?
According to MPEP 1211.02, certain types of amendments may be remanded for consideration by the examiner during an appeal. Specifically: “[A] proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite…
Read MoreWhat happens if a proposed amendment is effectively an abandonment of the appeal?
When a proposed amendment during an appeal is effectively an abandonment of the appeal, the Board typically dismisses the appeal. As stated in MPEP 1211.02: “If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.” This means that if the amendment substantially changes the…
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