Is an explicit statement required for election when canceling claims to all but one invention?
No, an explicit statement of election is not required when canceling claims to all but one invention. The act of canceling claims itself serves as an implicit election. MPEP 818.02(c) clarifies this: “Where applicant claims two or more independent or distinct inventions and as a result of amendment to the claims, he or she cancels…
Read MoreWhat are examples of rectifiable obvious mistakes in a PCT application?
According to MPEP 1836, examples of obvious mistakes that are rectifiable in a PCT application include: Linguistic errors Spelling errors Grammatical errors These errors can be rectified as long as the meaning of the disclosure does not change upon entry of the rectification. The MPEP states: “Examples of obvious mistakes that are rectifiable include linguistic…
Read MoreWhat authority does the examiner have when an appeal is withdrawn?
When an appeal is withdrawn, the examiner gains specific authority regarding the appealed claims. The MPEP 1215.02 states: “[T]he withdrawal of the appeal… is considered a withdrawal of the appeal as to those claims and authority to the examiner to cancel the same.” This means that upon withdrawal of the appeal, the examiner has the…
Read MoreWhat type of signature is used on the Issue Classification sheet?
The MPEP 1302.13 specifies that examiners use electronic signatures when signing the Issue Classification sheet. The relevant quote states: “The primary examiner and the assistant examiner involved in the allowance of an application will apply E-Signatures on the Issue Classification sheet.” E-Signatures, or electronic signatures, are used to streamline the process and maintain the integrity…
Read MoreWhat are the main differences between a national application filed under 35 U.S.C. 111(a) and a national stage application submitted under 35 U.S.C. 371?
The main differences between a national application filed under 35 U.S.C. 111(a) and a national stage application submitted under 35 U.S.C. 371 include: Filing Date Priority Requirements Unity of Invention Filing Fees As stated in MPEP 1896: “The differences between a national application filed under 35 U.S.C. 111(a) and a national application submitted under 35…
Read MoreWhat happens if an appellant fails to reply to a new ground of rejection?
According to MPEP 1207.03(c), if an appellant fails to timely respond to a new ground of rejection, the consequences are severe: “If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua…
Read MoreWho is the “competent authority” for authorizing rectifications in a PCT application?
The “competent authority” for authorizing rectifications in a PCT application varies depending on the part of the application where the mistake is found. According to MPEP 1836: The Receiving Office if the mistake is in the request The International Searching Authority if the mistake is in the description, claims, or drawings (unless the International Preliminary…
Read MoreHow should chemical formulas be presented in a PCT application abstract?
How should chemical formulas be presented in a PCT application abstract? Chemical formulas in PCT application abstracts require specific formatting. The MPEP 1826 provides guidance on this: “Chemical formulas and tables may be included in the abstract. The abstract may not include other drawings or flow sheets.” When including chemical formulas in your abstract: Ensure…
Read MoreCan I use a certificate of mailing for a Notice of Foreign Filing?
Yes, you can use a certificate of mailing or transmission under 37 CFR 1.8 for a Notice of Foreign Filing. This is explicitly stated in MPEP 1124. According to MPEP 1124: “Since the notice of foreign filing is required by the statute, the benefit of a certificate of mailing or transmission under 37 CFR 1.8…
Read MoreHow are amendments handled in the International Preliminary Examination Report?
The International Preliminary Examination Report (IPER) takes into account amendments made to the international application. The MPEP states: “The international preliminary examination report identifies the basis on which it is established, i.e., whether, and if so, which amendments have been taken into account.” Amendments are handled as follows: Replacement sheets containing amendments under PCT Article…
Read More