What is the examiner’s role in a petition to set aside their holding?
According to MPEP 711.03(d), the examiner may be required to provide a written statement regarding a petition to set aside their holding. Specifically, the section states: 37 CFR 1.181 states that the examiner ‘may be directed by the Director to furnish a written statement, within a specific time, setting forth the reasons for his or…
Read MoreWhat is the examiner’s responsibility regarding art submitted in response to a 37 CFR 1.105 requirement?
Examiners have a specific responsibility to consider art submitted in response to a 37 CFR 1.105 requirement. The MPEP states: “Art that is submitted in response to a 37 CFR 1.105 requirement must be considered, at least to the extent that art submitted with an Information Disclosure Statement under 37 CFR 1.97 and 1.98 is…
Read MoreCan examiners request information about related litigation?
Can examiners request information about related litigation? Yes, examiners can request information about related litigation. MPEP 704.11 states: ‘Information relating to litigation involving the claims or other similar claims, including any arguments or affidavits presented to courts or other decision making bodies.’ This may include: Details of ongoing or concluded litigation related to the patent…
Read MoreCan examiners request information about foreign patent applications?
Can examiners request information about foreign patent applications? Yes, examiners can request information about foreign patent applications related to the invention. MPEP 704.11 specifically mentions: ‘Copies of any non-patent literature, published application, or patent (U.S. or foreign) which has been relied upon to draft the specification or any copy of the claims in the application.’…
Read MoreWhat is the examiner’s obligation after receiving an applicant’s reply to a 37 CFR 1.105 requirement?
The examiner has a clear obligation to consider the information submitted with the applicant’s reply and apply it appropriately. This obligation stems from the examiner’s assertion that the information is necessary for examination. Specifically, the MPEP states: “The examiner must consider the information submitted with the applicant’s reply and apply the information as the examiner…
Read MoreWhat is the examiner’s duty regarding answers to queries posed during examination?
Examiners have a specific duty to consider answers provided by applicants to queries posed during the examination process. The MPEP clearly states: “Information constituting answers to queries posed by the examiner or another Office employee must be considered, and the record must indicate that the answers were considered.” This means that when an examiner or…
Read MoreHow should an examiner indicate a first action final rejection?
When an examiner needs to make a first action final rejection, they should use specific form paragraphs provided in the Manual of Patent Examining Procedure (MPEP). According to MPEP 706.07(b): “A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate.” The MPEP provides specific form paragraphs for different…
Read MoreCan an examiner deny considering information submitted in reply to a 37 CFR 1.105 requirement?
No, an examiner cannot deny considering information that is submitted in reply to a 37 CFR 1.105 requirement, as long as it is within the scope of that requirement. The MPEP is explicit on this point: “It is never appropriate to deny considering information that is submitted in reply to, and is within the scope…
Read MoreHow do examiners balance expected and unexpected results in patent applications?
Patent examiners must carefully balance expected and unexpected results when evaluating patent applications. The MPEP 716.02(c) provides guidance on this process: ‘Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut…
Read MoreWhen can an examiner’s amendment be made without extension fees?
An examiner’s amendment can be made without the payment of extension fees under certain circumstances, as outlined in MPEP 706.07(f): “Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner’s amendment to place the application in condition for allowance may be made…
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