What are form paragraphs in patent examination?
Form paragraphs are standardized text blocks used by patent examiners when drafting office actions. They help ensure consistency and efficiency in patent examination. For rejections under pre-AIA 35 U.S.C. 103, the MPEP provides specific form paragraphs to be used, such as: 7.20.fti – Statement of Statutory Basis for pre-AIA 35 U.S.C. 103(a) rejections 7.21.fti –…
Read MoreWhat are the rules for responding to Office actions in ex parte reexamination proceedings?
In ex parte reexamination proceedings, the rules for responding to Office actions are governed by 37 CFR 1.550(a) and 37 CFR 1.111. Key points include: Patent owners are typically given 2 months to respond to an Office action. Extensions of time are only available under 37 CFR 1.550(c). The certificate of mailing, certificate of transmission,…
Read MoreHow are Office actions mailed in ex parte reexamination proceedings?
In ex parte reexamination proceedings, Office actions are mailed using structured forms that include identifying information for the reexamination file and the correspondence address for the patent owner. The MPEP states: “Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which…
Read MoreHow are merged reissue application and reexamination proceedings conducted?
When a reissue application and a reexamination proceeding are merged, the examination follows specific guidelines. The MPEP states: Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. Key aspects of the merged proceeding include: Amendments are submitted…
Read MoreWho can sign final Office actions containing a final requirement for restriction?
According to MPEP 803.01, only examiners with specific signatory authority can sign final Office actions containing a final requirement for restriction: “Only an examiner with permanent full signatory authority or temporary full signatory authority may sign final Office actions containing a final requirement for restriction.” This requirement ensures that experienced examiners review and approve these…
Read MoreWhat is the difference between a “Printer Rush – No mailing” action and other Office Actions?
A “Printer Rush – No mailing” action is a specific type of action taken by patent examiners when addressing Printer Rush cases that don’t require communication with the applicant. According to MPEP 1309.02: “If correction does not require mailing of an Office Action, the examiner creates an action entitled ‘Printer Rush – No mailing’ and…
Read MoreHow should patent examiners handle potentially copyrighted material during internet searches?
When conducting internet searches, patent examiners must be cautious about handling potentially copyrighted material. The MPEP 904.02(c) provides specific guidance on this matter: “Care should be taken to avoid copyright infringement when including an excerpt from a copyrighted source in an Office action. Usually, examiners should not include more than a limited number of paragraphs…
Read MoreWhat are the special considerations for Office actions in litigation-related or PTAB trial-related reissue applications?
When issuing Office actions for litigation-related or PTAB trial-related reissue applications, examiners must consider several special factors: A 2-month reply period is typically set for these applications The Office action must inform applicants that 37 CFR 1.136(a) provisions are not available Extensions beyond 2 months require clear justification under 37 CFR 1.136(b) In some cases,…
Read MoreHow do patent examiners handle Printer Rush cases?
Patent examiners handle Printer Rush cases with high priority. According to MPEP 1309.02: “These applications are placed on the examiner’s ‘expedited’ tab in Docket Application Viewer (DAV) and should be taken up for immediate action.” The process typically involves: Reviewing the “RUSH” document in the Image File Wrapper (IFW) Annotating the “RUSH” document to indicate…
Read MoreWhat is a First Action on the Merits (FAOM) in patent examination?
A First Action on the Merits (FAOM) is an important step in the patent examination process. According to MPEP 1705: “Office actions on the merits consist of rejections (final and non-final), Ex parte Quayle actions, and allowances. The first time an examiner performs one of the above merit actions, credit is received for a First…
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