What is a Patentability Report (P.R.) in patent examination?
A Patentability Report (P.R.) is a process in patent examination where an application is forwarded from one Technology Center (TC) to another for additional review. According to MPEP 705.01(c), The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). This means that…
Read MoreWhat is the difference between a supplemental amendment and a preliminary amendment?
What is the difference between a supplemental amendment and a preliminary amendment? A supplemental amendment is filed after an initial reply to an Office action, while a preliminary amendment is filed before the first Office action. The MPEP 714.03(a) states: “A supplemental amendment is an amendment filed after a reply has been entered to an…
Read MoreWhen is a supplemental amendment considered to be entered as a matter of right?
When is a supplemental amendment considered to be entered as a matter of right? A supplemental amendment is entered as a matter of right under specific circumstances. According to MPEP 714.03(a): “A supplemental amendment will be entered as a matter of right if it is filed within the period during which action by the Office…
Read MoreCan a supplemental amendment be filed after a final Office action?
Can a supplemental amendment be filed after a final Office action? Yes, a supplemental amendment can be filed after a final Office action, but its entry is not guaranteed. The MPEP 714.03(a) provides guidance on this: “A supplemental amendment filed after a final action or after an appeal has been taken from a final rejection…
Read MoreHow should an applicant respond to a rejection based on questioned test results?
When an applicant faces a rejection based on questioned test results, they have several options for response. According to MPEP 707.07(l): The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to…
Read MoreWhat happens if examiners disagree on a Patentability Report?
When examiners disagree on a Patentability Report, there are established procedures to resolve the conflict. According to MPEP 705.01(a): “If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot…
Read MoreWhat is a Patentability Report (P.R.) in patent examination?
A Patentability Report (P.R.) is a memorandum prepared by a primary examiner in a Technology Center (TC) at the request of another TC. According to MPEP 705.01(a), it includes: Citation of all pertinent references A complete action on all claims involved The field of search covered, recorded in the ‘Search Notes’ form The report is…
Read MoreWhat is the ‘safety net’ provision in 37 CFR 1.136(a)(3)?
The ‘safety net’ provision in 37 CFR 1.136(a)(3) is designed to protect applicants who inadvertently omit a petition for extension of time. The MPEP explains that this provision allows for three scenarios to be treated as a constructive petition for an extension of time: A previously filed written request to treat a reply requiring an…
Read MoreHow does the fee structure work for extensions of time under 37 CFR 1.136(a)?
The fee structure for extensions of time under 37 CFR 1.136(a) is cumulative. The MPEP explains: The fees for extensions of time under 37 CFR 1.136(a) are set forth in 37 CFR 1.17(a) and are subject to a 50% reduction for persons or concerns qualifying as small entities. The fees itemized at 37 CFR 1.17(a)…
Read MoreWhen can a patent examiner question test results in a patent application?
A patent examiner can question test results in a patent application when there is a reasonable basis for doing so. The Manual of Patent Examining Procedure (MPEP) 707.07(l) states: The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If an…
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