What should patent examiners include in their request for a rewritten specification?
When requesting a rewritten specification, patent examiners should provide specific details about the sections that need to be rewritten. The MPEP 1302.02 provides guidance in the Examiner Note: “Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.” This means examiners should clearly identify and explain which…
Read MoreWho is responsible for notifying the applicant about rejoined claims?
The responsibility for notifying the applicant about rejoined claims lies with the patent examiner. According to MPEP 1302.04(h): “The examiner should notify the applicant of the rejoinder.” This notification is an important step in the patent examination process, as it informs the applicant that previously withdrawn claims are now being considered and allowed. The examiner’s…
Read MoreHow should an examiner present species from which an applicant may elect?
When presenting species for election, an examiner should follow specific guidelines as outlined in MPEP 809.02(a): “The species are preferably identified as the species of figures 1, 2, and 3 or the species of examples I, II, and III, respectively. In the absence of distinct figures or examples to identify the several species, the mechanical…
Read MoreWhat are the exceptions to partial signatory authority for patent examiners?
Patent examiners with partial signatory authority are generally expected to sign their own actions. However, there are several exceptions that require the signature of a primary examiner, Technology Center Director, or practice specialist. These exceptions include: Allowances Examiner’s amendments Quayle actions Final rejections Withdrawal of final rejection Actions on amendments submitted after final rejection Examiner’s…
Read MoreWhat is the examiner’s responsibility regarding cancelled claims after a Board decision?
After a Board decision in a patent appeal, the examiner has specific responsibilities regarding cancelled claims. According to MPEP 1214.05, “It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims.” This means that if claims are considered withdrawn and subsequently cancelled due to the appellant not presenting them…
Read MoreWhat should an examiner do if they disagree with the preliminary CPC classification of a patent application?
If an examiner disagrees with the preliminary CPC classification of a patent application, they should take the following steps: Carefully review the application’s subject matter and claims. Compare the invention with the definitions of the assigned CPC groups and subgroups. Consult the CPC scheme and relevant classification definitions. If necessary, conduct additional searches to determine…
Read MoreWhat should an examiner do if species cannot be conveniently identified?
In cases where species cannot be conveniently identified, the examiner should take specific actions as described in MPEP 809.02(a): “If the species cannot be conveniently identified, the examiner may request the applicant to make a proper identification. Care should be exercised to avoid misleading or confusing language in specifying the species.” This guidance ensures that…
Read MoreCan a patent examiner change the title of my invention?
Yes, a patent examiner can change the title of your invention if it’s not specific to the claimed invention. The MPEP § 1302.04(a) implies this by stating: “Where the title of the invention is not specific to the invention as claimed, see MPEP § 606.01.” This reference to MPEP § 606.01 indicates that examiners are…
Read MoreHow does an examiner evaluate affidavits or declarations under 37 CFR 1.132?
The primary examiner is responsible for evaluating affidavits or declarations under 37 CFR 1.132. According to the MPEP: It is the responsibility of the primary examiner to personally review and decide whether affidavits or declarations under 37 CFR 1.132 and other evidence submitted for the purpose of traversing grounds of rejection are responsive to the…
Read MoreHow are amendments concerning formal matters handled under 37 CFR 1.312?
Amendments concerning formal matters under 37 CFR 1.312 are handled as follows: The examiner can approve entry without supervisory patent examiner submission The examiner writes ‘Enter’ on the amendment using the stamper tool in Adobe Acrobat A Response to Rule 312 Communication form PTO-271 is date stamped and mailed by the Technology Center The MPEP…
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