What information can examiners request about the invention’s commercial success?
What information can examiners request about the invention’s commercial success? Patent examiners can request various types of information related to an invention’s commercial success. According to MPEP 704.11, this may include: ‘Information concerning the success of the invention, including licenses, sales, and advertising.’ Specifically, examiners might ask for: Sales figures for products embodying the claimed…
Read MoreWhat commercial information can examiners request about the invention?
What commercial information can examiners request about the invention? Examiners can request various types of commercial information related to the invention. According to MPEP 704.11, this may include: ‘Information on any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.’…
Read MoreHow should parties comment on material submitted under MPEP § 724?
When parties need to comment on material submitted under MPEP § 724, they should follow specific guidelines to maintain confidentiality. The MPEP provides the following advice: If the party or parties served find it necessary or desirable to comment on material submitted under MPEP § 724 before it is, or without its being, found ‘material…
Read MoreWhat does ‘commensurate in scope’ mean in the context of unexpected results?
‘Commensurate in scope’ refers to the requirement that evidence of unexpected results must cover the entire range of the claimed invention. The MPEP 716.02(d) states: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope…
Read MoreWhat role do ‘properties of a claimed invention’ play in patent examination?
The properties of a claimed invention play a significant role in patent examination, particularly when assessing obviousness. According to MPEP 716.02(c): ‘The properties of a claimed invention must be shown to have a significance equal to or greater than the expected properties to rebut the evidence of obviousness.’ This means that: Both expected and unexpected…
Read MoreHow should unpublished decisions be cited in patent examination?
When citing unpublished decisions that are available to the public, it’s crucial to provide complete identifying information. The MPEP provides specific guidance: “In citing a decision which is available to the public but which has not been published, the tribunal rendering the decision and complete data identifying the paper should be given.” For example, an…
Read MoreHow should examiners handle the citation of references in Office actions?
How should examiners handle the citation of references in Office actions? Examiners must follow specific guidelines when citing references in Office actions: Each reference cited should be relevant to the examination and support any rejections or objections made. Citations must include all bibliographic information necessary for clear identification of the source. For U.S. patents and…
Read MoreWhat are the requirements for citing prior art in a patent examiner’s office action?
What are the requirements for citing prior art in a patent examiner’s office action? When citing prior art in an office action, patent examiners must follow specific requirements to ensure clarity and completeness. According to MPEP 707.05, examiners should: Cite domestic and foreign patents by document number, kind code, and date Include the name of…
Read MoreCan applicants cite documents that are not prior art in patent applications?
Yes, applicants can and are encouraged to cite documents that are not strictly prior art if they are relevant to the examination process. MPEP 707.05(b) states: ‘Applicants may cite related art which is not prior art in accordance with MPEP § 609.’ This means that applicants can provide information about documents that may not qualify…
Read MoreHow should court decisions be cited in patent examination?
When citing court decisions in patent examination, it’s preferable to provide the U.S. or Federal Reporter citation when convenient. Alternatively, the USPQ (United States Patent Quarterly) citation can be given. The MPEP states: “In citing court decisions, when it is convenient to do so, the U.S. or Federal Reporter citation should be provided; in the…
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