Can an applicant traverse a species requirement?

Yes, an applicant can traverse (i.e., dispute or argue against) a species requirement. The MPEP 808.01(a) does not explicitly discuss traversal, but it is a standard right in patent prosecution. To traverse a species requirement, an applicant should: Respond to the Office Action containing the requirement within the given time frame Provide arguments explaining why…

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How do patent attorneys and inventors keep track of claim changes during prosecution?

Patent attorneys and inventors can keep track of claim changes during prosecution by following the guidance provided in MPEP 1302.04(g). The MPEP 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.” This practice helps in tracking…

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What types of petitions can Technology Center Directors decide?

Technology Center Directors have the authority to decide various petitions and requests related to patent applications and examination procedures. Some key examples include: Petitions to reopen prosecution after a Patent Trial and Appeal Board decision Petitions against final decisions requiring restriction Petitions invoking supervisory authority under 37 CFR 1.181 Requests for extensions of shortened statutory…

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What is the significance of the “surrender generating limitation” in patent reissue recapture?

What is the significance of the “surrender generating limitation” in patent reissue recapture? The “surrender generating limitation” (SGL) is a critical concept in patent reissue recapture analysis. It refers to the claim limitation(s) or features that were added to the claims or argued during original prosecution to overcome prior art rejections. According to MPEP 1412.02(I)(B)(1)(A):…

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Can Supervisory Patent Examiners decide on requests for deferral of examination?

Yes, Supervisory Patent Examiners have the authority to decide on requests for deferral of examination. The MPEP explicitly states: “Requests for deferral of examination under 37 CFR 1.103(d), MPEP § 709.” This means that when an applicant requests to defer examination of their patent application, the Supervisory Patent Examiner is responsible for evaluating and deciding…

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What is the impact of a species restriction on patent prosecution?

A species restriction in patent prosecution can significantly impact the examination process and the scope of patent protection. The MPEP 806.04 outlines the following effects: The applicant must elect a single species for initial examination. Non-elected species are withdrawn from consideration. If a generic claim is later found allowable, withdrawn species claims may be rejoined.…

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Does a restriction requirement in a parent application carry over to a continuation application?

No, a restriction requirement made in a parent application does not automatically carry over to a continuation, continuation-in-part (CIP), or divisional application. The MPEP 819 cites a Federal Circuit decision: “See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier…

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