Can an examiner require the submission of a Sequence Listing XML?
Yes, an examiner can require the submission of a Sequence Listing XML under certain circumstances. MPEP 2414 states: “Additionally, the examiner can require the filing of an added initial ‘Sequence Listing XML’ if the ‘Sequence Listing XML’ or a replacement ‘Sequence Listing XML’ if an application fails to comply with 37 CFR 1.831 – 1.834.”…
Read MoreWhat information should a patent examiner be prepared to discuss in an interference suggestion?
According to MPEP 2304.04(a), when suggesting an interference, a patent examiner should be prepared to discuss several key points: Why the claims interfere Whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art Whether an applicant or patentee is entitled to claim…
Read MoreHow does a patent examiner handle new matter in a patent application?
When a patent examiner encounters new matter in a patent application, they must take specific actions as outlined in MPEP 2163.06: If new subject matter is added to the disclosure (abstract, specification, or drawings), the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 and require the applicant to…
Read MoreHow does an examiner initiate an interference proceeding?
An examiner can initiate an interference proceeding in two ways: Invite the applicant to suggest an interference pursuant to 37 CFR 41.202(a). Work with an Interference Practice Specialist (IPS) to suggest an interference to the Board. The MPEP states: “The examiner may invite the applicant to suggest an interference pursuant to 37 CFR 41.202(a). An…
Read MoreWhat is Form PTO-850 in patent interference proceedings?
Form PTO-850 is a document that the patent examiner must complete when suggesting an interference to the Board. According to MPEP 2304.04(a), “The examiner must also complete Form PTO-850.” This form likely contains essential information about the suggested interference, including details about the interfering claims and the basis for the interference. To learn more: Form…
Read MoreAre there exceptions to who conducts a reexamination?
Yes, there are exceptions to who conducts a reexamination. According to MPEP § 2255: “However, if a petition under 37 CFR 1.515(c) is granted after an examiner’s determination that found the request did not raise any SNQ, the reexamination will generally be conducted by another examiner.” This means that if a petition challenging the examiner’s…
Read MoreCan examiners use prior art not cited in the reexamination request?
Yes, examiners are not limited to the prior art cited in the reexamination request. According to MPEP 2644: “The examiner is not limited in making the determination based on the patents and printed publications relied upon in the request. The examiner can find ‘a substantial new question of patentability’ or ‘a reasonable likelihood that the…
Read MoreCan examiners consider prior art not cited in the reexamination request?
Yes, examiners are not limited to the prior art cited in the reexamination request. According to MPEP 2244: “The examiner is not limited in making the determination based on the patents and printed publications relied on in the request. The examiner can find ‘a substantial new question of patentability’ based upon the prior art patents…
Read MoreWhat is the examiner’s burden in rejecting a patent application for lack of utility?
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states: “When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the…
Read MoreCan examiners perform additional prior art searches during reexamination?
Yes, examiners can perform additional prior art searches during reexamination, but with certain limitations. MPEP 2244 states: “If the examiner believes that additional prior art patents and publications can be readily obtained by searching to supply any deficiencies in the prior art cited in the request, the examiner can perform such an additional search. Such…
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