What are the key components of an examiner’s action in patent examination?
What are the key components of an examiner’s action in patent examination? An examiner’s action in patent examination typically includes several key components: Heading: Identifies the application number, filing date, applicant, and other administrative details. Summary of Invention: A brief description of the claimed invention. Claim Analysis: Detailed examination of each claim, including rejections and…
Read MoreCan interviews be conducted after the expiration of the shortened statutory period?
Yes, interviews can be conducted after the expiration of the shortened statutory period (SSP) for reply to a final Office action, but there are specific conditions: According to MPEP 706.07(f), “Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period…
Read MoreCan interference testimony be used to antedate a reference?
Yes, interference testimony can sometimes be used to antedate a reference in place of a 37 CFR 1.131(a) affidavit or declaration. As stated in MPEP 715.07(b): In place of an affidavit or declaration the testimony in an interference may be sometimes used to antedate a reference in lieu of a 37 CFR 1.131(a) affidavit or…
Read MoreWhat are ‘inter partes questions’ in patent examination?
‘Inter partes questions’ in patent examination refer to issues or matters that involve multiple parties or have the potential to affect multiple parties’ interests. These questions typically arise in proceedings where there are opposing parties, such as in patent interferences or inter partes reexaminations. The MPEP 713.06 prohibits examiners from discussing such questions ex parte:…
Read MoreWhen might a reply stating information is unknown or not readily available be insufficient?
While generally sufficient, a reply stating that the required information is unknown or not readily available might be considered insufficient in certain circumstances. These include: When it’s clear the applicant didn’t understand the requirement When the reply is ambiguous and a more specific answer is possible MPEP 704.12(b) explains: “A reply stating that the information…
Read MoreWhen is it necessary to inspect previously patented or abandoned application papers?
Inspecting previously patented or abandoned application papers is necessary in certain situations during patent examination. According to MPEP 711.04(b): “In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application.” This…
Read MoreWhat effect do inoperative features have on a patent’s validity as prior art?
Inoperative features in a patent do not necessarily invalidate its use as prior art. MPEP 716.07 clarifies this point: ‘Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative.’ This means that even if certain…
Read MoreWhat types of information can the USPTO require under 37 CFR 1.105?
The USPTO can require a wide range of information under 37 CFR 1.105. According to MPEP 704.10, this may include: Commercial databases relevant to the invention Search history of prior art Related non-patent literature, published applications, or patents Information used to draft the application Information used in the invention process Identification of improvements Known uses…
Read MoreWhat types of information can a patent examiner reasonably require from an applicant?
A patent examiner can reasonably require various types of information from an applicant during the examination process. According to MPEP 704.11(a), some examples include: Citations of relevant journals or treatises Trade names of goods or services related to the claimed subject matter Advertising and promotional literature for goods or services embodying the claimed subject matter…
Read MoreWhat information can be required under 37 CFR 1.105?
Under 37 CFR 1.105, the examiner can require information that is reasonably necessary to properly examine or treat a matter in a pending or abandoned application. This includes: Applications filed under 35 U.S.C. 111 (including reissue applications) Applications that have entered the national stage under 35 U.S.C. 371 Patents Reexamination proceedings The MPEP states, There…
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