What is the purpose of the ‘Final’ column in the Index of Claims?
The ‘Final’ column in the Index of Claims serves a specific purpose at the end of the patent examination process. According to the MPEP 719.04, At the time of allowance, the examiner places the final patent claim numbers in the column marked ‘Final.’ This column is used to record the final numbering of the allowed…
Read MoreWhat is the significance of the file wrapper in patent examination?
What is the significance of the file wrapper in patent examination? The file wrapper, also known as the prosecution history, is a crucial component in patent examination. According to MPEP 719, “The file wrapper (sometimes referred to as the file history) contains the complete record of proceedings in the Patent and Trademark Office on an…
Read MoreCan information favorable to patentability be submitted under MPEP § 724.02?
No, information favorable to patentability should not be submitted under MPEP § 724.02. The MPEP clearly states: Neither 37 CFR 1.56 nor 1.555 require the disclosure of information favorable to patentability, e.g., evidence of commercial success of the invention (see 42 FR 5590). Such information should not be submitted in accordance with MPEP § 724.02.…
Read MoreWhat is the difference between factual evidence and opinion evidence in patent examination?
What is the difference between factual evidence and opinion evidence in patent examination? In patent examination, the distinction between factual evidence and opinion evidence is crucial. The MPEP 716.01(c) provides guidance on this matter: The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145…
Read MoreWhat factors can undermine evidence of commercial success in patent applications?
Several factors can undermine evidence of commercial success in patent applications. According to MPEP 716.03(b), these factors include: Heavy promotion or advertising Shift in advertising Consumption by purchasers normally tied to the applicant or assignee Other business events extraneous to the merits of the claimed invention Recent changes in related technology or consumer demand The…
Read MoreWhat factors are considered for making a requirement for information prior to the first action on the merits?
According to MPEP 704.11(b), several factors are considered when determining the appropriateness of a separate requirement for information prior to the first action on the merits. These include: Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool Whether the applicant submitted an Information Disclosure Statement…
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 the time period for replying to a requirement for information be extended?
Yes, the time period for replying to a requirement for information under 37 CFR 1.105 can be extended. MPEP § 704.13 provides guidance on this: Applicant may extend the time period for reply up to six months in accordance with 37 CFR 1.136(a). This means that while the initial period set for reply might be…
Read MoreCan the time period for filing an appeal brief be extended?
Yes, the time period for filing an appeal brief can be extended. The MPEP states: The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a)) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal…
Read MoreHow can an applicant extend a shortened statutory period for reply?
An applicant can extend a shortened statutory period for reply under certain conditions. The MPEP states: Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133). To extend…
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