What should examiners do when they identify patentable subject matter that hasn’t been claimed?
When examiners identify patentable subject matter that hasn’t been claimed, they should take a constructive approach. The MPEP advises: “If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note…
Read MoreWhat is the definition of ‘process’ in patent law?
The term ‘process’ is defined in 35 U.S.C. 100(b) as follows: The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. This definition is broad and encompasses various types of procedures or methods. Importantly, it also includes new uses of known…
Read MoreWhat should patent examiners do when they find patentable subject matter in a pro se application?
When a patent examiner finds patentable subject matter in a pro se application (filed by an inventor without legal representation), they should take proactive steps to assist the applicant. According to MPEP 707.07(j): When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed…
Read MoreHow should examiners handle claims that are allowable except for formal issues?
When examining patent applications with claims that are intended to cover patentable subject matter but have formal defects, examiners should provide constructive feedback. The MPEP 707.07(j) states: When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable…
Read MoreWhat is the scope of a Secrecy Order?
A Secrecy Order applies to the subject matter of the invention, not just the patent application itself. It restricts disclosure or publication of the invention in any form. Other related patent applications which contain any significant part of the subject matter also fall under the scope of the order and must be brought to the…
Read MoreWhen can a patent examiner suggest hiring a patent practitioner?
A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401: “If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant…
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