What types of translations are available to patent examiners?
Patent examiners have access to various types of translations: Oral translations: For quick assistance with foreign patents or literature. Human (written) translations: For pertinent portions of references being considered for citation. Machine translations: Automated translations available through STIC’s tools. Partial human translations: Available through walk-in services at the Translations Service Center. The MPEP states: “Examiners…
Read MoreWhat are transitional applications under 37 CFR 1.129?
Transitional applications are those filed on or before June 8, 1995, with an effective U.S. filing date of June 8, 1992, or earlier. These applications are subject to special provisions under 37 CFR 1.129, which allows for examination of more than one independent and distinct invention in certain cases. According to the MPEP, “37 CFR…
Read MoreWhat options do applicants have under 37 CFR 1.129(b)(2) for transitional applications?
Under 37 CFR 1.129(b)(2), if an application contains claims to more than one independent and distinct invention, and no requirement for restriction or for filing divisional applications can be made or maintained, applicants have three options: Elect the invention(s) to be searched and examined, if no election has been made prior to the notice, and…
Read MoreHow do patent attorneys and inventors keep track of claim changes during prosecution?
Patent attorneys and inventors can keep track of claim changes during prosecution by following the guidance provided in MPEP 1302.04(g). The MPEP states: “To identify a claim, an examiner’s amendment should refer to it by the original number and, if renumbered in the allowed application, also by the new number.” This practice helps in tracking…
Read MoreWhat is the role of a TQAS in reissue application examination?
A Training Quality Assurance Specialist (TQAS) plays a crucial role in the examination of reissue applications. Their responsibilities include: Monitoring and reviewing reissue applications at various stages of prosecution Ensuring that reissue-specific practices and procedures are followed Instructing examiners on reissue-specific procedures Conducting patentability reviews on a sample of reissue applications Setting and removing status…
Read MoreAre time extensions permitted in reissue applications with related litigation?
Generally, time extensions are not permitted in reissue applications with related litigation. The MPEP provides specific language to be used in such cases: “Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.” This restriction is applied to ensure that the…
Read MoreWhat constitutes a thorough and complete search in patent examination?
A thorough and complete search in patent examination involves three key steps: Identifying the field of search Selecting the proper search tools Determining the appropriate search strategy for each tool According to MPEP 904.02, “A search is considered thorough when all areas with the highest probability of finding prior art relevant to the invention as…
Read MoreCan a terminal disclaimer be used to overcome a prior art rejection?
No, a terminal disclaimer cannot be used to overcome a prior art rejection. Terminal disclaimers are specifically designed to address nonstatutory double patenting issues, not prior art rejections under 35 U.S.C. 102 or 103. MPEP 804.02 clearly states: “It should be emphasized that a terminal disclaimer cannot be used to overcome a prior art rejection…
Read MoreCan the unity of invention requirement be addressed over the phone?
Yes, the unity of invention requirement can be addressed over the phone in certain circumstances. This is known as telephonic restriction practice. According to MPEP 1875.01, telephone practice may be used if: The applicant or their legal representative has a USPTO deposit account They orally agree to charge additional fees to the account A complete…
Read MoreHow do Technology Centers (TCs) influence search tool selection in patent examination?
Technology Centers (TCs) play a crucial role in determining the specific search tools and strategies used in patent examination. According to MPEP 904.02(b), Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each Technology Center (TC). This statement implies several important…
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