What is the International Preliminary Examination Report (IPER)?
The International Preliminary Examination Report (IPER), also known as the International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty), is a document established on Form PCT/IPEA/409. As stated in the MPEP, “The international preliminary examination report contains, among other things, a statement (in the form of simple “yes” or “no”), in relation…
Read MoreHow does the USPTO determine if a combination does not require the particulars of the subcombination?
How does the USPTO determine if a combination does not require the particulars of the subcombination? The USPTO determines if a combination does not require the particulars of the subcombination by examining whether the combination’s patentability is independent of the specific details of the subcombination. MPEP 806.05(a) states: “The combination as claimed does not require…
Read MoreWhat is the purpose of a patent search?
What is the purpose of a patent search? The primary purpose of a patent search is to determine the state of the prior art in a particular field of technology. According to MPEP 904.02, “The purpose of a search is to discover the most relevant prior art.” This involves: Identifying existing patents and published applications…
Read MoreWhat is the purpose of Form PCT/ISA/237?
Form PCT/ISA/237 is used for preparing the Written Opinion of the International Searching Authority. The Written Opinion provides an initial, non-binding opinion on the patentability of the claimed invention. As stated in the MPEP, Box No. V is the main purpose of the written opinion. All claims without fatal defects are treated on the merits…
Read MoreWhat is the duty to disclose information in reexamination or supplemental examination proceedings?
In reexamination or supplemental examination proceedings, there is a duty to disclose information material to patentability. According to MPEP 1418: “The duty to disclose information material to patentability in reexamination proceedings … is based on 37 CFR 1.555(a) and (b). In addition, for supplemental examination proceedings, 37 CFR 1.620(c) imposes a duty on the patent…
Read MoreWhat are the criteria for establishing distinctness between a combination and subcombination?
What are the criteria for establishing distinctness between a combination and subcombination? To establish distinctness between a combination and subcombination, two criteria must be met: 1. The combination as claimed does not require the particulars of the subcombination as claimed for patentability (e.g., to show novelty and unobviousness). 2. The subcombination has utility by itself…
Read MoreWhat are the main conditions for granting a patent?
The main conditions precedent to the grant of a patent are set forth in 35 U.S.C. 101, 102, 103, and 112. These sections outline the requirements for: Patentable subject matter (§101) Novelty (§102) Non-obviousness (§103) Specification and claims (§112) An invention must meet all these conditions to be granted a patent. To learn more: patent…
Read MoreWhat are the potential grounds for rejecting claims copied from a patent?
According to MPEP 706.06, claims copied from a patent can be rejected on various grounds. The section states: “When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc.”…
Read MoreCan information favorable to patentability be submitted under MPEP § 724.02?
No, information favorable to patentability should not be submitted under MPEP § 724.02. The MPEP clearly states: Neither 37 CFR 1.56 nor 1.555 require the disclosure of information favorable to patentability, e.g., evidence of commercial success of the invention (see 42 FR 5590). Such information should not be submitted in accordance with MPEP § 724.02.…
Read MoreWhat is the difference between factual evidence and opinion evidence in patent examination?
What is the difference between factual evidence and opinion evidence in patent examination? In patent examination, the distinction between factual evidence and opinion evidence is crucial. The MPEP 716.01(c) provides guidance on this matter: The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145…
Read More