Can an examiner continue to examine a patent application involved in a derivation proceeding?
No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313: “The examiner may not act on an involved patent or application except as the Board may authorize.” This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically…
Read MoreWhat actions can an examiner take if claims don’t meet the requirements of 35 U.S.C. 112(b)?
If an examiner determines that claims do not meet the requirements of 35 U.S.C. 112(b), they can take specific actions as outlined in MPEP 2171: “If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the…
Read MoreWhat happens to examiner actions when the Board assumes jurisdiction?
When the Board assumes jurisdiction over a patent application or proceeding involving an issued patent, it significantly impacts the examiner’s ability to take action. The MPEP 2312 clearly states: “Where the Board has assumed jurisdiction of an application or proceeding involving an issued patent no action by the examiner may be taken until jurisdiction has…
Read MoreWhen can an examiner reopen prosecution after an appeal brief has been filed?
An examiner can reopen prosecution after an appeal brief has been filed to enter a new ground of rejection, but only with approval from the supervisory patent examiner. According to MPEP 1207.04: “The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s…
Read MoreHow do patent examiners handle Printer Rush cases?
Patent examiners handle Printer Rush cases with high priority. According to MPEP 1309.02: “These applications are placed on the examiner’s ‘expedited’ tab in Docket Application Viewer (DAV) and should be taken up for immediate action.” The process typically involves: Reviewing the “RUSH” document in the Image File Wrapper (IFW) Annotating the “RUSH” document to indicate…
Read MoreWhat actions should an examiner take following a remand?
Following a remand, the examiner should take action consistent with the remand order. MPEP 1211 provides guidance: “Following the remand, the examiner should take action consistent with the remand order. In the absence of other guidance in the remand order, the examiner should take an action described in MPEP § 1207.” This may include issuing…
Read MoreHow does the USPTO handle actions by different examiners on the same application?
The USPTO has specific guidelines for handling actions by different examiners on the same patent application. According to MPEP 706.04: “Full faith and credit should be given to the search and action of a previous examiner unless there is a clear error in the previous action or knowledge of other prior art.” This means that:…
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