What is the impact of a ‘blocking patent’ on evidence of commercial success?
A ‘blocking patent’ can affect the evaluation of evidence of commercial success or long-felt need in patent examination. The MPEP states: “Objective evidence of commercial success or long felt need and failure of others may be given less weight if the record shows that the applicant or patent owner has a strong market power or…
Read MoreHow does paragraph numbering in office actions benefit patent prosecution?
Paragraph numbering in office actions provides significant benefits to the patent prosecution process. According to MPEP 707.07(k): This facilitates their identification in the future prosecution of the application. The benefits of this practice include: Easier referencing of specific parts of the office action in subsequent communications Improved clarity in discussions between examiners and applicants Enhanced…
Read MoreWhat are the benefits of using standardized form paragraphs in patent Office actions?
The use of standardized form paragraphs in patent Office actions, as mandated by MPEP 707, offers several benefits to the patent examination process: Consistency: Ensures uniform language across different examiners and applications Clarity: Provides clear and concise explanations for common rejections or objections Efficiency: Streamlines the examination process by reducing the time needed to draft…
Read MoreWhat is piecemeal examination and how should it be avoided?
Piecemeal examination refers to the practice of addressing only certain issues or grounds of rejection in an Office action while leaving others unaddressed. According to MPEP 707.07(g), piecemeal examination should be avoided as much as possible: The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references. To…
Read MoreWhat is the significance of avoiding ‘undue multiplication of references’ in patent examination?
The concept of avoiding ‘undue multiplication of references’ in patent examination is mentioned in MPEP 707.07(g). The MPEP states: “The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references.” This guideline is significant because it aims to balance thoroughness with efficiency in patent examination. It means that…
Read MoreCan arguments of patent attorneys replace evidence in patent examination?
Can arguments of patent attorneys replace evidence in patent examination? No, the arguments of patent attorneys cannot replace actual evidence in patent examination. This principle is clearly stated in MPEP 716.01(c) II: The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716,…
Read MoreWhat is the usual procedure for an assistant examiner to present their findings to a primary examiner?
The usual procedure for an assistant examiner to present their findings to a primary examiner is outlined in MPEP 707.01. The process typically involves: “The usual procedure is for the assistant examiner to explain the invention and discuss the references which he or she regards as most pertinent.” This procedure includes: Providing a clear explanation…
Read MoreHow is the mailing date applied to USPTO Office actions?
According to MPEP 707.11, the mailing date for USPTO Office actions is applied through a specific process: The mailing date is not typed when the Office action is initially written. Instead, it is “stamped or printed on all copies of the action”. This stamping or printing occurs after the action has been signed by the…
Read MoreUnder what circumstances will an application not be withdrawn from issue for an amendment entry?
An application will not be withdrawn from issue for the entry of an amendment in certain circumstances. The MPEP specifies: “The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment.”…
Read MoreWhat happens if an applicant submits a statement to invoke the AIA 35 U.S.C. 102(b)(2)(C) exception?
When an applicant submits a statement to invoke the AIA 35 U.S.C. 102(b)(2)(C) exception, the examiner must carefully consider the statement and its implications. The MPEP provides specific guidance: ‘If the applicant disqualifies the subject matter relied upon by the examiner in accordance with AIA 35 U.S.C. 102(b)(2)(C) and the procedures in MPEP ยง 717.02(b),…
Read More