How does the USPTO apply the “Mere Function of Machine” rule during patent examination?
The United States Patent and Trademark Office (USPTO) applies the “Mere Function of Machine” rule by not rejecting process or method claims solely because they describe the function of a disclosed machine. As stated in MPEP 2173.05(v): “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35…
Read MoreCan patent examiners submit prior art under 35 U.S.C. 301?
No, patent examiners are not permitted to submit prior art under 35 U.S.C. 301 on their own initiative. MPEP 2203 clearly states: Patent examiners should not, at their own initiative, create a submission under 35 U.S.C. 301 and place it in a patent file or forward it for placement in the patent file. The MPEP…
Read MoreCan patent examiners be expected to remember details of every pending file?
No, patent examiners cannot be expected to remember details of every pending file. This is emphasized in the case of Armour & Co. v. Swift & Co., as quoted in MPEP 2001.06(b): “[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that…
Read MoreHow does the AIA’s prior art definition affect patent examiners?
The AIA’s prior art definition significantly affects how patent examiners conduct their searches and evaluate patent applications. As the MPEP states: “Under AIA 35 U.S.C. 102(a)(1), there is no requirement that the prior art relied upon be by others. Thus, any prior art which falls under AIA 35 U.S.C. 102(a)(1) need not be by another…
Read MoreWho signs the Issue Classification sheet for allowed patent applications?
According to MPEP 1302.13, both the primary examiner and the assistant examiner involved in the allowance of a patent application are required to sign the Issue Classification sheet. Specifically, the MPEP states: “The primary examiner and the assistant examiner involved in the allowance of an application will apply E-Signatures on the Issue Classification sheet.” This…
Read MoreCan USPTO employees express opinions on patent validity or enforceability?
No, USPTO employees are not permitted to express opinions on patent validity or enforceability. According to MPEP 1701: “Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any…
Read MoreAre USPTO employees allowed to accept bounties for identifying prior art?
No, USPTO employees are strictly prohibited from accepting bounties for identifying prior art. The MPEP 1701 clearly states: “No USPTO employee may pursue a bounty offered by a private sector source for identifying prior art. The acceptance of payments from outside sources for prior art search activities may subject the employee to administrative disciplinary action.”…
Read MoreWhat should practitioners know about making inquiries to patent examiners?
Practitioners should be aware that certain inquiries to patent examiners are considered improper. The MPEP 1701 provides guidance on this matter: “Practitioners shall not make improper inquiries of members of the patent examining corps. Inquiries from members of the public relating to the matters discussed above must out of necessity be refused and such refusal…
Read MoreCan patent examiners discuss specific evidence considered during examination?
No, patent examiners are not allowed to discuss specific evidence considered during the examination process with individuals outside the USPTO. The MPEP 1701 states: “Employees of the USPTO, particularly patent examiners who examined an application which matured into a patent or a reissued patent or who conducted a reexamination proceeding, should not discuss or answer…
Read MoreCan examiners other than supervisory patent examiners assign applications?
Yes, examiners other than supervisory patent examiners can be given the responsibility of assigning applications. The MPEP 909.02(b) provides guidance on this: “If an examiner other than the supervisory patent examiner is given the responsibility of assigning applications, time so spent may, at the TC Director’s discretion, be charged to ‘Other Time- Classify (non-PGPub) and…
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