When should an interference be suggested during patent examination?
An interference should rarely be suggested until examination is completed on all other issues. According to MPEP 2303, “Each pending claim must be allowed, finally rejected, or canceled. Any appeal from a final rejection must be completed, including any judicial review. Any petition must be decided.” This means that examiners should resolve all other patentability…
Read MoreWhat is an Interference Practice Specialist (IPS) and when should an examiner consult one?
An Interference Practice Specialist (IPS) is an expert in each Technology Center (TC) who must be consulted when suggesting an interference to the Board. Examiners should consult an IPS when they first become aware of a potential interference or when any interference issue arises during prosecution of an application. According to the MPEP, Examiners are…
Read MoreWhen should an examiner search for foreign patents under pre-AIA 35 U.S.C. 102(d)?
An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this: “The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent…
Read MoreWhen is a replacement “Sequence Listing XML” required in a patent application?
A replacement “Sequence Listing XML” is required in a patent application under the following circumstances: When errors are identified in a previously submitted “Sequence Listing XML” When the previously submitted “Sequence Listing XML” fails to comply with 37 CFR 1.831 – 1.834 When the applicant chooses to amend a previously submitted “Sequence Listing XML” According…
Read MoreWhen must an applicant provide a certified translation for a foreign benefit application?
According to MPEP 2304.01(c), an applicant must provide a certified translation of a foreign benefit application when: The foreign benefit application or PCT application is not filed in English The examiner requires the applicant to file a certified translation The applicant wants to be accorded the benefit of the non-English language application The MPEP states:…
Read MoreWhen is claim sorting not appropriate in patent applications?
Claim sorting may not be appropriate in all cases, particularly when it could lead to issues with claim support. The MPEP 2304.01(d) provides guidance on this matter: “Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35…
Read MoreWhen can a patent examiner reject claims as prolix?
A patent examiner can reject claims as prolix under specific circumstances outlined in MPEP 2173.05(m). The manual states: “Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.” Additionally, claims may be rejected as prolix “when they contain…
Read MoreWhen can an examiner take official notice without documentary evidence?
An examiner can take official notice without documentary evidence in certain circumstances where the facts are considered well-known or common knowledge in the art. According to MPEP 2144.03, this is permissible when the facts are “capable of instant and unquestionable demonstration as being well-known.” The MPEP states: “Official notice without documentary evidence to support an…
Read MoreWhen is an Action Closing Prosecution (ACP) issued in inter partes reexamination?
An Action Closing Prosecution (ACP) is typically issued at specific points in the inter partes reexamination process. According to MPEP 2671.02: 1. When all claims are found patentable in the first action: “When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner…
Read MoreWhat is patent term adjustment?
Patent term adjustment (PTA) is additional time added to a patent’s term to compensate for delays in patent issuance caused by the United States Patent and Trademark Office (USPTO). The adjustment is governed by 35 U.S.C. 154(b) and is calculated based on various types of delays specified in the statute. As stated in MPEP 2731:…
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