What is the process for entering an examiner’s action in a patent application?
According to MPEP 707.10, the process for entering an examiner’s action in a patent application is as follows: 1. Signing: The action is signed by the authorized examiner. 2. Scanning: The signed action is soft scanned into the Image File Wrapper (IFW). 3. Delivery: A copy of the action is either given electronically or mailed…
Read MoreWhat is the examiner’s responsibility regarding completeness of actions?
The examiner’s responsibility regarding completeness of actions is outlined in 37 CFR 1.104(b), which states: The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before…
Read MoreWhat is the examiner’s responsibility when applicant traverses a rejection?
When an applicant traverses a rejection, the examiner has a responsibility to address the applicant’s arguments. As stated in MPEP 707.07(f): Where the applicant traverses any rejection, the examiner should, if they repeat the rejection, take note of the applicant’s argument and answer the substance of it. This means the examiner must carefully consider the…
Read MoreWhat is the examiner’s responsibility when claims corresponding to a patent are presented in an application?
When claims corresponding to claims of a patent are presented in an application, the examiner has the responsibility to: Determine whether the presented claims are unpatentable on any grounds, including under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. Reject any claims that are rejectable on any grounds. As stated in MPEP 706.06: “If…
Read MoreWhat information can an examiner request about related applications?
What information can an examiner request about related applications? An examiner can request information about related applications as part of the examination process. According to MPEP 704.11, this may include: Copies of related applications (foreign or domestic) and related documents Dates and details of public use or sale Information regarding inventorship Computer programs, if described…
Read MoreCan an examiner request information about public use or sale of an invention?
Can an examiner request information about public use or sale of an invention? Yes, an examiner can request information about public use or sale of an invention. The MPEP 704.11 states: “Dates and details of public use or sale.” This information is crucial for determining the novelty and non-obviousness of the invention. Examiners may request:…
Read MoreCan a patent examiner request information about inventorship?
Can a patent examiner request information about inventorship? Yes, a patent examiner can request information about inventorship during the examination process. The MPEP 704.11 explicitly states that examiners may request: “Names of persons to whom the invention was disclosed.” This information may be requested to: Clarify the correct inventorship of the application Determine if there…
Read MoreWhat information can an examiner request about related patent applications?
An examiner can request information about related patent applications during the examination process. According to MPEP 704.11(a), an examiner may reasonably require: “(G) Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not…
Read MoreCan an examiner request information about related foreign applications under MPEP 704.10?
Yes, under MPEP 704.10, an examiner can request information about related foreign applications. This is particularly relevant for ensuring a comprehensive examination and understanding the global patent landscape for the invention. The MPEP states: ‘The examiner may require the submission… of such information as may be reasonably necessary to properly examine or treat the matter.’…
Read MoreCan a patent examiner request clarification on means-plus-function claim limitations?
Yes, a patent examiner can request clarification on means-plus-function claim limitations. According to MPEP 704.11(a), an examiner may reasonably require: “(R) Clarification of the correlation and identification of what structure, material, or acts set forth in the specification would be capable of carrying out a function recited in a means or steps plus function claim…
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