What is the “decision tree” process mentioned in MPEP 904.02(b)?
The MPEP 904.02(b) mentions a “decision tree” process as a general methodology for making broad decisions in search tool selection. Specifically, it states: a general methodology following a “decision tree” process, set forth below, for making broad decisions in search tool selection is suggested. While the MPEP doesn’t provide the detailed decision tree in this…
Read MoreHow does the USPTO count second or subsequent First Actions on the Merits (FAOM)?
The USPTO has a specific system for counting second or subsequent First Actions on the Merits (FAOM). According to MPEP 1705: “A second/subsequent FAOM usually occurs when the first action is a mailed restriction/election action and the second action is an action on the merits. The USPTO’s automated data management system will automatically determine if…
Read MoreHow does the USPTO define a combination in patent applications?
The United States Patent and Trademark Office (USPTO) defines a combination in patent applications according to the Manual of Patent Examining Procedure (MPEP) 806.05(a). The MPEP states: “A combination is an organization of which a subcombination or element is a part.” This definition emphasizes that a combination in a patent application refers to a larger…
Read MoreHow does the USPTO handle the classification of continuation and divisional applications?
The USPTO’s automated routing system takes into account the status of applications as continuations or divisionals when assigning them to examiners. According to MPEP 909.01(b): “Additional factors, such as […] the application’s status as a continuation or divisional application are weighted by the automated system prior to assignment of the application.” This consideration is important…
Read MoreWhat is the balance between general and specific guidance for search tool selection in patent examination?
The USPTO maintains a balance between providing general guidance and allowing for specific, technology-focused approaches in search tool selection for patent examination. This balance is evident in MPEP 904.02(b), which states: Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each…
Read MoreWhat factors does the USPTO’s automated routing system consider when assigning patent applications to examiners?
The USPTO’s automated routing system considers several factors when assigning patent applications to examiners, as described in MPEP 909.01(b). These factors include: CPC classifications of the application Examiner portfolios (classification areas assigned to the examiner) Size of an examiner’s docket Case backlogs within a particular classification area Application’s status as a continuation or divisional application…
Read MoreHow does the USPTO use the Agricultural Research Service (ARS) in examining plant patent applications?
The USPTO may utilize the Agricultural Research Service (ARS) of the U.S. Department of Agriculture during the examination of plant patent applications. According to MPEP 1609: “Where the examiner considers it necessary to the examination of the plant patent application, a copy of the file and drawing of the application are forwarded to the National…
Read MoreHow is the U.S. Department of Agriculture (USDA) involved in plant patent examinations?
The U.S. Department of Agriculture (USDA) plays a role in plant patent examinations through its Agricultural Research Service (ARS). According to MPEP 1610: “The Office action may include so much of any report of the ARS as the examiner deems necessary, or may embody no part of it. In the event of an interview, the…
Read MoreWhat happens if rejoined claims are found unpatentable after rejoinder?
If rejoined claims are found unpatentable after rejoinder, the examiner will take appropriate action based on the patentability determination. The MPEP 821.04 provides guidance on this situation: “Rejoined claims must be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including…
Read MoreWhat is unity of invention in the context of international patent applications?
Unity of invention is a requirement in international patent applications that ensures all claims in an application are related to a single inventive concept. According to MPEP 1875, “Unity of invention is defined by 37 CFR 1.475 which describes the circumstances in which the requirement of unity of invention is considered fulfilled.” This requirement is…
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