Can a restriction requirement be made after the first Office action in a patent application?
Yes, a restriction requirement can be made after the first Office action in a patent application, although it’s generally preferred to make it earlier. The MPEP 811 states: “While it is held that an examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, it is…
Read MoreHow are copies of references supplied in design patent applications?
For information on how copies of references are supplied to applicants in design patent applications, MPEP 1513 directs us to another section: “With respect to copies of references being supplied to applicant in a design patent application, see MPEP § 707.05(a).” This cross-reference suggests that the procedure for providing reference copies in design patent applications…
Read MoreDo patent examiners need to conduct a second search after the first Office action?
Generally, patent examiners do not need to conduct a second search after the first Office action, unless specific circumstances arise. The MPEP states: Following the first Office action, the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in a reply to…
Read MoreWhat constitutes “originally presented claims” for restriction purposes?
According to MPEP 818.02(a), “originally presented claims” for restriction purposes include: Claims presented upon filing the application Claims properly added and entered before the earlier of: The mailing of a first restriction requirement The mailing of a first Office action on the merits The MPEP states: “Where claims to another invention are properly added and…
Read MoreWhat happens if drawing changes in a reissue application are not approved?
If drawing changes in a reissue application are not approved or if a submitted sheet of drawings is not entered, the examiner will inform the applicant in the next Office action. The MPEP states: “If any drawing change is not approved, or if any submitted sheet of drawings is not entered, the examiner will so…
Read MoreHow should an examiner present an Election of Species requirement?
When presenting an Election of Species requirement, an examiner should follow specific guidelines outlined in the MPEP 809.02. The key steps include: Identify generic claims or indicate that no generic claims are present Clearly identify each of the disclosed species Provide reasons why the species are independent or distinct Require the applicant to elect a…
Read MoreHow should examiners handle non-static Internet sources in patent searches?
How should examiners handle non-static Internet sources in patent searches? When dealing with non-static Internet sources during patent searches, examiners must take special precautions. The MPEP 904.02(c) provides specific guidance: “If the copy of the Internet source to be cited is not stable, the examiner should print out the source and attach it to the…
Read MoreCan a new Office action be made final when reopening prosecution after an appeal?
Yes, a new Office action containing a new ground of rejection can be made final when reopening prosecution after an appeal, but only under specific circumstances. According to MPEP 1207.04: “The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or…
Read MoreWhat are the main components of an Examiner’s Answer in a patent appeal?
An Examiner’s Answer in a patent appeal typically includes two main components: Grounds of Rejection to be Reviewed on Appeal: This section maintains the rejections from the final Office action, unless any have been withdrawn. Response to Argument: This section addresses the appellant’s arguments in the appeal brief. According to the MPEP, “The examiner’s answer…
Read MoreWhat actions does an examiner take after an application is withdrawn from issue?
Once an application has been withdrawn from issue due to new grounds for rejection, the examiner must take specific actions. According to MPEP 1308.01: “After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing any new reference(s), and…
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