How can an applicant respond to an examiner’s requirement to add a claim for interference?
When an examiner requires an applicant to add a claim for interference under 37 CFR 41.202(c), the applicant must comply but can also express disagreement. The MPEP outlines several ways an applicant can respond: Identify an existing claim in their application or another of their applications that provides a basis for the proposed interference Add…
Read MoreCan an examiner require an applicant to respond to issues raised in a protest?
Yes, in certain circumstances, an examiner can require an applicant to respond to issues raised in a protest. According to MPEP 1901.06: “Where necessary or desirable to decide questions raised by the protest, under 37 CFR 1.291(f) the primary examiner can require the applicant to reply to the protest and answer specific questions raised by…
Read MoreWhat form should an examiner use to require an applicant to add a claim for interference?
When an examiner needs to require an applicant to add a claim for interference, they should use Form Paragraph 23.04. The MPEP provides the specific language for this form paragraph, which includes: “The following allowable claim from [1] is required to be added for the purpose of an interference: [2]” The form paragraph also includes…
Read MoreWhen does an examiner require a copy or translation of the priority document in PCT applications?
An examiner may require a copy or translation of the priority document in PCT applications under specific circumstances. MPEP 1870 states: “A copy of the priority document and/or a translation thereof, if the priority document is not in English may be required by the examiner if necessary because of an intervening reference.” This means that…
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