What types of information can an examiner request under MPEP 704.10?
Under MPEP 704.10, an examiner can request various types of information, including: Technical information known to the applicant concerning the interpretation of the claims, disclosure, and state of the art Information concerning the ownership and control of the application Information reasonably necessary for finding prior art The MPEP states: ‘The examiner may require the submission,…
Read MoreHow does an examiner evaluate the sufficiency of facts in affidavits or declarations?
When evaluating the sufficiency of facts in affidavits or declarations, examiners follow specific guidelines outlined in MPEP 716. The manual states: ‘In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in…
Read MoreCan an examiner enter an amendment after final rejection that places the application in condition for allowance?
Can an examiner enter an amendment after final rejection that places the application in condition for allowance? Yes, an examiner can enter an amendment after final rejection if it places the application in condition for allowance. The MPEP 714.12 explicitly states: “An amendment filed after final rejection will be entered only if it places the…
Read MoreWhat happens if examiners disagree on a Patentability Report?
When examiners disagree on a Patentability Report, MPEP 705.01(a) outlines the following process: The primary examiners may consult with each other to resolve the disagreement. If agreement cannot be reached, the primary examiner with jurisdiction over the application can choose not to rely on the Patentability Report. In such cases, the examiner may ‘make his…
Read MoreHow does an examiner determine if the AIA 35 U.S.C. 102(b)(2)(C) exception applies?
An examiner determines if the AIA 35 U.S.C. 102(b)(2)(C) exception applies by following specific procedures outlined in the MPEP. The key steps include: Reviewing the application and prior art for potential applicability of the exception Considering any statements or evidence provided by the applicant regarding common ownership Evaluating the timing of common ownership in relation…
Read MoreWhat criteria does an examiner use to grant an interview after final rejection?
An examiner will grant an interview after final rejection if they believe it can lead to a resolution with minimal additional consideration. According to MPEP 713.09: Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. This means the examiner…
Read MoreCan an examiner require information about foreign applications under MPEP 704.10?
Can an examiner require information about foreign applications under MPEP 704.10? Yes, an examiner can require information about foreign applications under MPEP 704.10. This authority extends to requesting details about related foreign patent applications and their prosecution history. The MPEP specifically states: “Information which may be required includes … copies of, or information about, foreign…
Read MoreWhat is an Ex parte Quayle action and how does it affect statutory periods?
An Ex parte Quayle action is a specific type of office action in patent prosecution. According to MPEP 710.02(b), Ex parte Quayle actions are an exception to the use of shortened statutory periods: A shortened statutory period may be used in replying to any statutory or non-statutory Office action EXCEPT: … (B) When the application…
Read MoreWhat types of evidence can demonstrate skepticism of experts in patent cases?
What types of evidence can demonstrate skepticism of experts in patent cases? Evidence of skepticism of experts in patent cases can take various forms. According to MPEP 716.05, acceptable evidence may include: Expressions of disbelief: Documented statements from recognized experts expressing doubt about the invention’s feasibility or effectiveness. Published articles: Scientific or technical publications questioning…
Read MoreWhat criteria are used to evaluate the effectiveness of a 37 CFR 1.130(a) declaration?
The MPEP outlines several criteria used to evaluate the effectiveness of a declaration under 37 CFR 1.130(a): Whether the disclosure is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A). Whether the affidavit or declaration shows sufficient facts to establish that the disclosure was made by the inventor or a joint inventor, or the…
Read More