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…
Read MoreHow 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…
Read MoreWhat is the time limit for filing a petition in patent prosecution?
The time limit for filing a petition in patent prosecution is generally two months from the action being contested. MPEP 1201 refers to the relevant regulation: “As 37 CFR 1.181(f) states that any petition not filed within 2 months from the action complained of may be dismissed as untimely” However, for petitions regarding restriction requirements,…
Read MoreWhat 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…
Read MoreWhat 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):…
Read MoreCan 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…
Read MoreWhat 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.…
Read MoreWhat is the MPEP’s stance on “sounding out” interviews with patent examiners?
The MPEP explicitly prohibits interviews that are solely for the purpose of “sounding out” the examiner. According to MPEP 713.03: “Interviews that are solely for the purpose of ‘sounding out’ the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent that any agreement that would…
Read MoreWhen should a restriction requirement be made in patent examination?
According to MPEP 811, a restriction requirement should be made as early as possible in the prosecution process, ideally in the first action. The MPEP states: “This means the examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, otherwise, as soon as the need for…
Read MoreDoes 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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