What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination?
What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination? In inter partes reexamination, when the Board issues a decision that affirms some rejections while reversing others, the examiner must follow specific procedures. According to MPEP 2674: “Where the Board decision affirms a rejection of some claims…
Read MoreWhat form paragraph should examiners use when reopening prosecution after an appeal brief?
Examiners should use Form Paragraph 12.239 when reopening prosecution after an appeal brief has been filed. According to MPEP 1207.04, this form paragraph is specifically designed for this purpose: “Form paragraph 12.239 may be used when reopening prosecution:” The form paragraph includes important information for the appellant, such as the reason for reopening prosecution, the…
Read MoreWhat can an examiner do if they believe an application has improper CPC classifications?
If an assigned examiner believes that an application has one or more improper Cooperative Patent Classification (CPC) symbols, they have the option to submit a classification challenge. This process allows for the correction of CPC designations to ensure accurate classification and appropriate assignment of the application. According to MPEP 909.01(a): “When a new application is…
Read MoreHow should patent examiners document their Internet search strategies?
Patent examiners are required to document their Internet search strategies according to established practices and procedures. The MPEP provides guidance on this in Article 10 of the Patent Internet Usage Policy: “All Patent Organization users of the Internet for patent application searches must document their search strategies in accordance with established practices and procedures as…
Read MoreHow should patent examiners handle new issues raised during interviews?
When new issues are raised during patent examination interviews, examiners should handle them carefully. The MPEP 713.01 provides guidance: New issues raised during an interview should be discussed and resolved if possible. However, if the new issues cannot be fully addressed during the interview, the examiner should: Encourage the applicant to provide a written statement…
Read More