When is a Patentability Report not appropriate in patent examination?
Patentability Reports are not always the most efficient or appropriate method for patent examination. MPEP 705.01(e) outlines situations where Patentability Reports are ordinarily not proper: “Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.” Additionally, Patentability Reports are generally not appropriate in…
Read MoreHow are interviews conducted in cases involving Patentability Reports?
When interviews are held for applications involving Patentability Reports, special considerations apply. According to MPEP 705.01(f): “In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting Technology Center may be called on for assistance at the interview when it concerns claims treated by them.” Key…
Read MoreHow are Patentability Reports counted and recorded by the USPTO?
The USPTO has specific procedures for counting and recording Patentability Reports (P.R.s). According to MPEP 705.01(c): “The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R. is completed and the application is ready for return to the forwarding TC,…
Read MoreHow are patented and abandoned patent files stored and accessed by USPTO examiners?
The USPTO has specific procedures for storing and accessing patented and abandoned patent files: Recent Files: Recently patented and abandoned paper files are stored at the Files Repository. Older Files: These are housed in off-site warehouses. Image File Wrapper (IFW) Applications: These are stored electronically. The MPEP states, Image File Wrapper (IFW) applications are stored…
Read MoreWhat is the process for delivering requested patent files to examiners?
The process for delivering requested patent files to examiners involves several steps, as outlined in MPEP 711.04(b): Files Repository personnel regularly perform a FOS print transaction to produce a list of accepted requests. The printed record of each request is detached from the list when its associated file is found. The printed record is stapled…
Read MoreWhen is the mailing date added to a USPTO Office action?
The mailing date for a USPTO Office action is not typed when the action is initially written. According to MPEP 707.11, “The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the action after it has been signed by the authorized signatory…
Read MoreCan the mailing date on a USPTO Office action be different from the date it was written?
Yes, the mailing date on a USPTO Office action can be, and often is, different from the date it was written. This is evident from the procedure described in MPEP 707.11: “The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the…
Read MoreWhat are the restrictions on recording interviews with USPTO examiners?
What are the restrictions on recording interviews with USPTO examiners? The USPTO has specific guidelines regarding the recording of interviews with patent examiners. According to MPEP 713.08: ‘Recording of interviews is prohibited except as authorized by the Director of the USPTO upon a showing of good cause.’ This means that, in general, recording of interviews…
Read MoreCan the USPTO suspend action on its own initiative?
Yes, the USPTO can suspend action on its own initiative, but it is generally avoided if possible. According to MPEP 709, “Suspension of action at the initiative of the Office should be avoided, if possible, because such suspension will cause delays in examination, will increase pendency of the application, and may lead to a shortening…
Read MoreHow does the USPTO handle rejections based on lack of utility?
The USPTO has specific procedures for handling rejections based on lack of utility. As indicated in MPEP 716.08: “See MPEP ยง 2107.02, for guidance on when it is proper to require evidence of utility or operativeness, and how to evaluate any evidence which is submitted to overcome a rejection under 35 U.S.C. 101 for lack…
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