When should an interview be granted during patent examination?
An interview should be granted when it can contribute to the progress of the patent application. According to MPEP 713: “An interview should be granted when the nature of the case is such that the interview serves to develop or clarify outstanding issues in an application.” This means interviews are particularly useful when they can:…
Read MoreWhen can a requirement for information be made during patent examination?
A requirement for information under 37 CFR 1.105 can be made at various stages of the patent examination process. According to MPEP 704.11(b): “A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest…
Read MoreWhen must an applicant pay excess claims fees for newly added claims?
Applicants must pay excess claims fees for newly added claims before the examiner will consider them. MPEP 714.10 states: When applicant adds a new excess claim that is in excess of the number of claims that were previously paid for after taking into account claims that have been canceled, applicant must pay the required excess…
Read MoreWhen is a Patentability Report used in the patent examination process?
A Patentability Report is used in specific circumstances during the patent examination process. According to MPEP ยง 705, it’s used: When an application is properly assigned to one Technology Center (TC) The application contains one or more claims classifiable in one or more other TCs These claims are not divisible from each other or from…
Read MoreWhen does diligence become a factor in patent examination?
Diligence becomes a factor in patent examination when an inventor is attempting to establish prior invention under 37 CFR 1.131(a). The MPEP states, In determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date is clearly established, pursuant to…
Read MoreWhen can an examiner reject a previously allowed claim without SPE approval?
An examiner can reject a previously allowed claim without obtaining supervisory patent examiner (SPE) approval in one specific situation: According to MPEP 706.04: If the examiner discovers, at the time of signing the notice of allowance, or after the notice of allowance has been mailed, that the prior art or other evidence necessary to reject…
Read MoreWhen should an examiner prepare a written statement for a petition?
According to MPEP 711.03(d), an examiner should not prepare a written statement for a petition unless specifically requested. The section states: Unless requested, however, such a statement should not be prepared. This guidance emphasizes that examiners should only provide written statements when directed to do so, typically by the Director of the USPTO. To learn…
Read MoreWhen can a patent examiner make a second or subsequent action final?
A patent examiner can make a second or subsequent action final in the following circumstances: When the examiner introduces a new ground of rejection that is necessitated by the applicant’s amendment of the claims. When the examiner introduces a new ground of rejection based on information submitted in an information disclosure statement (IDS) filed during…
Read MoreWhen can an examiner withdraw the finality of a rejection?
An examiner can withdraw the finality of a rejection under the following circumstances: Upon the applicant’s request for reconsideration If the primary examiner finds the final rejection to have been premature While the application is still pending As stated in MPEP 706.07(d): “If, on request by applicant for reconsideration, the primary examiner finds the final…
Read MoreWhen can an examiner make a first action final rejection in patent examination?
An examiner can make a first action final rejection in specific circumstances, as outlined in MPEP 706.07(b). The main situations where this is permissible include: When all claims are drawn to the same invention claimed in an earlier application, and would have been properly finally rejected in the earlier application. In the case of a…
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