What is a Patentability Report in patent examination?
A Patentability Report (P.R.) is a specialized examination process used by the United States Patent and Trademark Office (USPTO) when an application contains claims that require expertise from different Technology Centers (TCs). According to MPEP 705.01: “When an application comes up for any action and the primary examiners involved (i.e., from both the requesting and…
Read MoreWhat is a Patentability Report (P.R.) in patent examination?
A Patentability Report (P.R.) is a process in patent examination where an application is forwarded from one Technology Center (TC) to another for additional review. According to MPEP 705.01(c), The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). This means that…
Read MoreHow is a Patentability Report prepared and what does it include?
A Patentability Report is prepared by the primary examiner in the requested Technology Center (TC) after approving the request. According to MPEP 705.01(a): “This Patentability Report is in memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered must be recorded…
Read MoreWhen is a Patentability Report not appropriate in patent examination?
Patentability Reports are not always the most efficient or appropriate method for patent examination. MPEP 705.01(e) outlines situations where Patentability Reports are ordinarily not proper: “Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.” Additionally, Patentability Reports are generally not appropriate in…
Read MoreHow are interviews conducted in cases involving Patentability Reports?
When interviews are held for applications involving Patentability Reports, special considerations apply. According to MPEP 705.01(f): “In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting Technology Center may be called on for assistance at the interview when it concerns claims treated by them.” Key…
Read MoreHow is the sequence of examination determined in Patentability Report cases?
The sequence of examination in Patentability Report (P.R.) cases is determined through collaboration between supervisory patent examiners. According to MPEP 705.01(b): “In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the…
Read MoreHow are Patentability Reports counted and recorded by the USPTO?
The USPTO has specific procedures for counting and recording Patentability Reports (P.R.s). According to MPEP 705.01(c): “The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R. is completed and the application is ready for return to the forwarding TC,…
Read MoreHow are appeals handled in cases involving Patentability Reports?
When an appeal is taken from the rejection of claims in a case involving a Patentability Report, specific procedures are followed. According to MPEP 705.01(a): “When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC…
Read MoreHow does the USPTO determine if a Patentability Report is appropriate?
The USPTO determines if a Patentability Report is appropriate based on two main factors: saving total examiner time and improving examination quality. According to MPEP 705.01(e): Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized…
Read MoreHow does the USPTO count and record Patentability Reports?
The USPTO has specific procedures for counting and recording Patentability Reports (P.R.s). According to MPEP 705.01(c): When the P.R. is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent. This means that…
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