Can Rospatent act as an International Preliminary Examining Authority?
Can Rospatent act as an International Preliminary Examining Authority? Yes, Rospatent can act as an International Preliminary Examining Authority (IPEA). The MPEP 1840.04 states: “The Federal Service for Intellectual Property (Rospatent) (Russian Federation) will act as an International Preliminary Examining Authority for the same range of international applications for which it acts as an International…
Read MoreWhat role do search tools play in patent examination?
Search tools play a crucial role in patent examination by enabling examiners to efficiently and effectively search for relevant prior art. The MPEP 904 emphasizes the importance of using various search tools: “In addition to the specialized tools described below, Internet search tools may also be useful during examination.“ Key search tools used in patent…
Read MoreHow does the review process for a reissue oath or declaration work?
The review process for a reissue oath or declaration involves the following steps: The primary examiner personally reviews and decides on the sufficiency of the reissue oath/declaration. If the oath/declaration fails to comply with 37 CFR 1.175(a), the examiner notifies the applicant in an Office action, rejecting the claims under 35 U.S.C. 251. The applicant…
Read MoreDo I need to resubmit all ‘References Cited’ from the original patent in a reissue application?
No, you are not required to resubmit all ‘References Cited’ from the original patent in a reissue application. The MPEP clearly states: “Note that the Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the ‘References Cited’ in the patent for which reissue is sought.” However, it’s important to…
Read MoreWhen can a restriction requirement be made between subcombinations?
A restriction requirement between subcombinations can be made when: The subcombinations do not overlap in scope They are not obvious variants At least one subcombination has separate utility There would be a serious search and/or examination burden if restriction were not required As stated in MPEP 806.05(d): “To support a restriction requirement where applicant separately…
Read MoreCan restriction be required in a reissue application?
Yes, restriction can be required in a reissue application, but with some limitations. According to MPEP 1440: “37 CFR 1.176(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required).” This means that the…
Read MoreCan species that are obvious over each other be subject to a restriction requirement?
Generally, species that are considered clearly unpatentable (obvious) over each other should not be subject to a restriction requirement. The MPEP provides specific guidance on this matter: As stated in MPEP 808.01(a): “Election of species should not be required between claimed species that are considered clearly unpatentable (obvious) over each other. In making a requirement…
Read MoreCan a restriction requirement be made after the first Office action in a patent application?
Yes, a restriction requirement can be made after the first Office action in a patent application, although it’s generally preferred to make it earlier. The MPEP 811 states: “While it is held that an examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, it is…
Read MoreWhen should a restriction requirement be made in patent examination?
According to MPEP 811, a restriction requirement should be made as early as possible in the prosecution process, ideally in the first action. The MPEP states: “This means the examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, otherwise, as soon as the need for…
Read MoreCan a restriction requirement be made after an action on the merits?
Yes, a restriction requirement can be made after an action on the merits, but certain conditions apply. According to MPEP 811: “Before requiring restriction of claims previously examined on the merits, the examiner must consider whether there will be a serious search and/or examination burden if restriction is not required.” This means that while it’s…
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