Can a patent examiner reject claims based on improper inventorship?
Yes, a patent examiner can reject claims based on improper inventorship. MPEP 2157 provides guidance on this matter: “In the rare situation where it is clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, Office personnel should reject the…
Read MoreHow should patent examiners handle trademarks or trade names in claims?
Patent examiners should carefully analyze claims containing trademarks or trade names. The MPEP 2173.05(u) provides the following guidance: Determine if the trademark or trade name is used as a limitation to identify or describe a particular material or product. If so, consider rejecting the claim under 35 U.S.C. 112(b) for indefiniteness. If the trademark or…
Read MoreWhat should patent examiners consider instead of aggregation when evaluating claims?
While patent examiners should not reject claims based on aggregation, MPEP 2173.05(k) suggests that examiners should focus on other aspects of claim evaluation: “If a claim omits essential matter or fails to interrelate essential elements of the invention as defined by applicant(s) in the specification, see MPEP § 2172.01.” This guidance directs examiners to consider…
Read MoreWhat should examiners consider when reviewing dependent claims?
When examining dependent claims, patent examiners have specific considerations. The MPEP 2173.05(f) states: “When examining a dependent claim, the examiner should also determine whether the claim complies with 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph.” This means that examiners must ensure that dependent claims properly incorporate all limitations of the claim(s) they…
Read MoreHow do patent examiners assess compliance with the best mode requirement?
Patent examiners assess compliance with the best mode requirement through a two-step process, as outlined in MPEP 2165.03: Subjective Inquiry: Determine whether, at the time of filing, the inventor knew of a mode of practicing the claimed invention that they considered better than any other. Objective Inquiry: If the first step is affirmative, compare what…
Read MoreWhat actions must a patent examiner take when encountering indefinite claim language?
When a patent examiner encounters indefinite claim language, they are required to take specific actions. The MPEP provides clear guidance: “Therefore, claims that do not meet this standard must be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as indefinite. Such a rejection requires that the applicant respond by explaining why…
Read MoreWhen is a panel review conference required in ex parte reexamination?
A panel review conference is generally required before issuing a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) in ex parte reexamination proceedings. However, there are exceptions to this requirement. According to MPEP 2287: “A panel review conference must be held in each instance where a NIRC is about to be issued, unless…
Read MoreWhat is the role of the panel review conference in reexamination decisions?
The panel review conference plays a crucial role in the reexamination decision process. According to the MPEP: “If the examiner’s position is to deny reexamination, the examiner will prepare for and set up a panel review conference as per MPEP § 2271.01, to discuss the issuance of a decision denying reexamination.” The conference serves to:…
Read MoreWhat is the panel review conference in inter partes reexamination?
The panel review conference is a quality control measure in inter partes reexamination. According to MPEP 2660: “Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be internally notified. The examiner…
Read MoreHow can a provisional rejection under pre-AIA 35 U.S.C. 102(e) be overcome?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in several ways. The MPEP states: A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 2136.05. Additionally, The provisional rejection can also be overcome by…
Read More