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All relevant information from MPEP 704.12(a) has been covered in previous FAQs. No additional meaningful questions can be generated without duplicating content. To learn more: MPEP Patent Examination Information Requirement Duty of Disclosure
Read MoreWhat are ‘inter partes questions’ in patent examination?
‘Inter partes questions’ in patent examination refer to issues or matters that involve multiple parties or have the potential to affect multiple parties’ interests. These questions typically arise in proceedings where there are opposing parties, such as in patent interferences or inter partes reexaminations. The MPEP 713.06 prohibits examiners from discussing such questions ex parte:…
Read MoreHow should examiners handle perpetual motion applications?
According to MPEP 707.07(g), patent applications directed to perpetual motion require special handling. The MPEP states: “Where disclosure is directed to perpetual motion… the best prior art readily available should be cited and its pertinence pointed out without specifically applying it to the claims.” This means that for perpetual motion applications, examiners should: Cite the…
Read MoreWhat are the guidelines for submitting prior art to the USPTO?
The guidelines for submitting prior art to the U.S. Patent and Trademark Office (USPTO) are outlined in MPEP § 609. These guidelines are for applicants, their attorneys, and agents who wish to submit prior art for consideration. According to MPEP 707.05(b), “Submitted citations will not in any way diminish the obligation of examiners to conduct…
Read MoreWhere can I find information about the former public use proceedings process?
If you need information about the former public use proceedings process, which was discontinued in 2012, you should refer to an older version of the Manual of Patent Examining Procedure (MPEP). The current MPEP section 720 provides guidance on where to find this historical information: For information necessary regarding the former process, the August 2012…
Read MoreWhat factors does an examiner consider when deciding whether to enter a supplemental amendment?
What factors does an examiner consider when deciding whether to enter a supplemental amendment? When deciding whether to enter a supplemental amendment, an examiner considers several factors. The MPEP 714.03(a) outlines these considerations: “The factors to be considered by the examiner for entry of a supplemental amendment include: (A) the state of preparation of a…
Read MoreWhat are ‘extraordinary circumstances’ for using Patentability Reports?
The Manual of Patent Examining Procedure (MPEP) § 705 emphasizes that Patentability Reports should only be used in extraordinary circumstances. While the MPEP doesn’t provide an exhaustive list of what constitutes ‘extraordinary circumstances,’ we can infer from the context that these may include: Applications with claims spanning multiple, distinctly different technology areas Cases where the…
Read MoreCan extensions of time be granted after the Notice of Allowance?
Generally, extensions of time are not available after the Notice of Allowance has been issued. The MPEP clearly states: The statutory (nonextendable) time period for payment of the issue fee is 3 months from the date of the Notice of Allowance (35 U.S.C. 151). Furthermore, for any outstanding informalities at the time of allowance: Extensions…
Read MoreHow do extensions of time work with final rejections?
For final rejections, the USPTO has a specific procedure for extensions of time. The MPEP states: If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of…
Read MoreAre there exceptions to comprehensive patent examination?
Yes, there are exceptions to comprehensive patent examination. MPEP 707.07(g) outlines specific situations where limiting examination to a particular issue may be appropriate: When an application is too informal for a complete action on the merits (See MPEP § 702.01) When there is an undue multiplicity of claims and no successful telephone request for election…
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