Where can I find additional information on submitting reproductions through EFS-Web for international design applications?
The MPEP 2909.02(a) provides several resources for additional information on submitting reproductions through EFS-Web for international design applications: General EFS-Web information: “See MPEP § 502.05 for additional information on using EFS-Web.” You can find more details about using EFS-Web in general in MPEP 502.05. Specific guide for international design applications: “For further information concerning submitting…
Read MoreWhere can I find definitions related to the Patent Cooperation Treaty (PCT)?
Definitions related to the Patent Cooperation Treaty (PCT) can be found in several sources: PCT Article 2 and PCT Rule 2, which are available in MPEP Appendix T 35 U.S.C. 351, found in MPEP Appendix L 37 CFR 1.9 and 1.401, located in MPEP Appendix R PCT Administrative Instructions Section 101, available in MPEP Appendix…
Read MoreWhen can I file a petition against a restriction requirement?
The timing for filing a petition against a restriction requirement is specified in MPEP 818.01(c), which cites 37 CFR 1.144: Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. This means you have several options for when to file…
Read MoreWhen can an examiner not require restriction between species in a patent application?
An examiner cannot require restriction between species in a patent application under certain circumstances. The MPEP 808.01(a) provides guidance on this: “In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary…
Read MoreWhen does cancellation of claims to nonelected invention occur?
Cancellation of claims to nonelected invention typically occurs after a restriction requirement has been made by the patent examiner and the applicant has elected to pursue only certain claims. This process is part of the patent examination procedure and is outlined in the Manual of Patent Examining Procedure (MPEP). The MPEP 1302.04(c) directs readers to…
Read MoreWhat is a traverse in patent law?
In patent law, a traverse is a formal objection or disagreement with a requirement or decision made by the patent examiner. Specifically, in the context of restriction requirements, a traverse is a response where the applicant distinctly and specifically points out supposed errors in the restriction requirement. This is crucial because, as stated in MPEP…
Read MoreHow does the USPTO handle rejoinder of divided inventions in transitional applications?
The USPTO’s handling of rejoinder of divided inventions in transitional applications is outlined in MPEP 803.03(a). The process involves: “Whenever divided inventions in a transitional application are rejoined because a linking claim is allowable ( MPEP § 809 , § 821.04 , and § 821.04(a) ) and applicant paid the fee set forth in 37…
Read MoreWhat is the “decision tree” process mentioned in MPEP 904.02(b)?
The MPEP 904.02(b) mentions a “decision tree” process as a general methodology for making broad decisions in search tool selection. Specifically, it states: a general methodology following a “decision tree” process, set forth below, for making broad decisions in search tool selection is suggested. While the MPEP doesn’t provide the detailed decision tree in this…
Read MoreHow does the USPTO define a combination in patent applications?
The United States Patent and Trademark Office (USPTO) defines a combination in patent applications according to the Manual of Patent Examining Procedure (MPEP) 806.05(a). The MPEP states: “A combination is an organization of which a subcombination or element is a part.” This definition emphasizes that a combination in a patent application refers to a larger…
Read MoreWhat is the balance between general and specific guidance for search tool selection in patent examination?
The USPTO maintains a balance between providing general guidance and allowing for specific, technology-focused approaches in search tool selection for patent examination. This balance is evident in MPEP 904.02(b), which states: Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each…
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