How does the USPTO handle a situation where a reexamination certificate is to be issued while a reissue application is pending?
When a reexamination certificate is to be issued for a patent while a reissue application for the same patent is pending, the USPTO follows a specific procedure: The examiner will not act on the reissue application until the certificate issues and publishes. After the certificate is published, the Office will resume examination of the reissue…
Read MoreWhy does the USPTO prohibit “sounding out” interviews with patent examiners?
The USPTO prohibits “sounding out” interviews to ensure efficient use of examiner time and resources, and to promote substantive, binding discussions. According to MPEP 713.03: “Interviews that are solely for the purpose of ‘sounding out’ the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent…
Read MoreWhat are the reasons for insisting on restriction in combination-subcombination cases?
What are the reasons for insisting on restriction in combination-subcombination cases? According to MPEP 806.05(c), examiners must provide reasons for insisting on restriction in combination-subcombination cases. These reasons typically include: Separate classification: The combination and subcombination belong to different subclasses or different search areas. Separate status in the art: The inventions have attained recognition as…
Read MoreWhat are the reasons for insisting upon restriction in a patent application?
According to MPEP 817, examiners must provide reasons for insisting upon restriction in a patent application. The main reasons include: Separate status in the art Different classification Same classification but recognition of divergent subject matter Divergent fields of search Search required for one group not required for the other These reasons are used to demonstrate…
Read MoreWhat is the purpose of conducting a thorough search during patent examination?
The purpose of conducting a thorough search during patent examination is to enable a speedy and just determination of the issues involved. According to MPEP 904.03, It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a thorough and complete search, commensurate with the…
Read MoreWhat is the purpose of the reissue pending form paragraph in MPEP 1456?
The reissue pending form paragraph mentioned in MPEP 1456 serves a specific purpose in the patent examination process. According to the manual: “The examiner should use the following form paragraph to notify applicant that the application is in condition for allowance, and that the application will be forwarded to OPLA for review:” The form paragraph…
Read MoreWhat is the purpose of announcing reissue application filings in the Official Gazette?
The announcement of reissue application filings in the Official Gazette serves an important purpose, as explained in MPEP 1470: “This announcement will give interested members of the public an opportunity to submit to the examiner information pertinent to patentability of the reissue application.“ By publicizing these filings, the USPTO allows the public to contribute relevant…
Read MoreWhat is the purpose of requiring a provisional election when traversing a restriction?
The requirement for a provisional election, even when traversing a restriction, serves several purposes: It allows examination to proceed on at least one set of claims while the restriction requirement is under review. It helps streamline the examination process by ensuring that some substantive examination can occur regardless of the outcome of the traversal. It…
Read MoreWhat is the purpose of the patent classification system?
The purpose of the patent classification system, as defined in MPEP 903.01 and 35 U.S.C. 8, is: “for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed.” In other words, the classification system is designed to: Organize patents and other relevant publications by subject matter…
Read MoreWhat is the purpose of using both original and new claim numbers in an examiner’s amendment?
The purpose of using both original and new claim numbers in an examiner’s amendment is to maintain clarity and traceability throughout the patent examination process. MPEP 1302.04(g) 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.”…
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