How are Abstracts and Abbreviatures cited in patent references?
Abstracts and Abbreviatures are cited in patent references as follows: They are listed under ‘Other References’ in citations. The citation format includes the author’s name, type of document (abstract or abbreviature), serial number, filing date, publication details, and classification if available. The MPEP provides this example citation format: Brown, (abstract or abbreviature) of Serial No.…
Read MoreHow are continued citations captured on the PTO-892 form?
When a citation is continued across multiple boxes on the PTO-892 form, it is captured as a single citation. The MPEP 707.05(f) states: “Such citation will be captured as one citation, and any explanatory wording (such as ‘[item U continued]’ in the mockup below) will not be captured.” This means that: The entire citation, even…
Read MoreWhat circumstances can lead to the rejection of a previously allowed patent claim?
The rejection of a previously allowed patent claim is an unusual occurrence that typically happens under specific circumstances. According to MPEP 706.04, the main reason for such a rejection is the discovery of new prior art. This is evident from the language used in Form Paragraph 7.50: “The indicated allowability of claim [1] is withdrawn…
Read MoreWhat are the challenges in establishing commercial success for design patents?
Establishing commercial success for design patents presents unique challenges. The Manual of Patent Examining Procedure (MPEP) 716.03(b) specifically addresses this issue: “Establishing a nexus between commercial success and the claimed invention is especially difficult in design cases. Evidence of commercial success must be clearly attributable to the design to be of probative value, and not…
Read MoreHow can an applicant challenge a premature final rejection?
If an applicant believes a final rejection is premature, they can challenge it through a petition process. According to MPEP 706.07(c), the issue of prematureness “is reviewable by petition under 37 CFR 1.181.” This means that applicants can file a petition to the USPTO requesting a review of the premature final rejection. The MPEP directs…
Read MoreWhat happens if an amendment cancels all claims to the elected invention in a patent application?
An amendment that cancels all claims drawn to the elected invention and presents only claims drawn to the nonelected invention is considered nonresponsive and should not be entered. MPEP 714.19 states: “An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such…
Read MoreCan patent examiners request demonstrations of inventions?
Can patent examiners request demonstrations of inventions? Yes, patent examiners can request demonstrations of inventions. According to MPEP 713.08: The invention in question may be exhibited or demonstrated during the interview by the inventor or attorney. While demonstrations are often initiated by applicants, examiners may also request them if they believe it would be helpful…
Read MoreCan an examiner withdraw the finality of a rejection after an application is abandoned?
No, an examiner cannot withdraw the finality of a rejection once an application is abandoned. The MPEP 706.07(d) explicitly states: “The examiner cannot withdraw the final rejection once the application is abandoned.” This emphasizes the importance of addressing final rejections and considering requests for reconsideration before an application reaches abandoned status. To learn more: Final…
Read MoreHow are extension fees calculated after a final rejection?
The calculation of extension fees after a final rejection depends on several factors, as outlined in MPEP 706.07(f): If a complete first reply is filed within 2 months and an advisory action is issued, the shortened statutory period (SSP) expires 3 months from the date of the final rejection or on the date of the…
Read MoreWhat constitutes a bona fide attempt to respond to a patent office action?
What constitutes a bona fide attempt to respond to a patent office action? A bona fide attempt to respond to a patent office action is a genuine effort to address the issues raised by the examiner. According to MPEP 711.02(a): “Where there has been a bona fide attempt to advance the application and to respond…
Read More