How does the USPTO handle “prompt action” for substantially allowable applications?
The USPTO takes “prompt action” on substantially allowable applications to expedite their processing. According to MPEP § 1301: “When an application is in condition for allowance, except as to matters of form, the application will be considered special and prompt action taken to require correction of formal matters.” This prompt action typically involves: Quickly identifying…
Read MoreHow are plant patent applications handled in the USPTO?
Plant patent applications in the USPTO are handled as follows: All plant patent applications under 35 U.S.C. 161 are assigned and examined in Art Unit (AU) 1661. If an application is accidentally routed to the wrong AU, it will be manually rerouted to the Office of Patent Application Processing (OPAP) for correct routing. The MPEP…
Read MoreWhat is the role of the United States Patent and Trademark Office as an International Preliminary Examining Authority?
The United States Patent and Trademark Office (USPTO) serves as an International Preliminary Examining Authority (IPEA) for international patent applications. According to MPEP 1862, the USPTO “will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by…
Read MoreHow does the USPTO handle significant court or Patent Trial and Appeal Board decisions?
The USPTO has a structured process for handling significant court or Patent Trial and Appeal Board (PTAB) decisions that affect patent policy or practice. According to MPEP 1721: “In the event the Patent Trial and Appeal Board (Board) or court decision is one that significantly adds to the body of law by, for example, addressing…
Read MoreHow does the USPTO handle applications with plural inventions related as both combination-subcombination and species?
When an application contains plural inventions that can be viewed as related in two ways – as combination-subcombination and as species under a claimed genus – the USPTO requires that both applicable criteria for distinctness be demonstrated to support a restriction requirement. The MPEP states: “In applications claiming plural inventions capable of being viewed as…
Read MoreWhat should an examiner do if they believe an application is improperly assigned to their docket?
If an examiner believes an application is improperly assigned to their docket, they should: Send an email to the TC 2900 docketing POC for evaluation of the application. If deemed improper, the application will be removed from the examiner’s docket and appropriately reassigned. If deemed proper after reevaluation, the case will be returned to the…
Read MoreHow does the USPTO handle applications with genus and species claims?
The United States Patent and Trademark Office (USPTO) has specific procedures for handling applications with genus and species claims. According to MPEP 806.04: “In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the…
Read MoreHow does the USPTO handle earlier search results from foreign offices in PCT applications?
The United States Patent and Trademark Office (USPTO), when acting as the International Searching Authority (ISA/US), handles earlier search results from foreign offices in PCT applications as follows: If the applicant has requested the ISA/US to consider earlier foreign search results. If a copy of the earlier search results and an English translation (if necessary)…
Read MoreHow does the USPTO handle elections made by canceling claims?
The United States Patent and Trademark Office (USPTO) treats elections made by canceling claims as a valid form of election. According to MPEP 818.02(c): “Where applicant claims two or more independent or distinct inventions and as a result of amendment to the claims, he or she cancels the claims to one or more of such…
Read MoreHow does the USPTO handle citation of foreign language documents?
The USPTO has specific guidelines for citing foreign language documents. The MPEP 901.05(d) provides clear instructions: “When citing a foreign language document that has an English language equivalent, the U.S. examiner should additionally cite the English language equivalent.” This practice ensures clarity and accessibility of the cited references. Furthermore, the MPEP states: “When citing a…
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