What are the benefits of requesting a Supplementary International Search?
Requesting a Supplementary International Search (SIS) offers several benefits to PCT applicants: Reduced risk of new prior art: As stated in the MPEP, Requesting supplementary international search reduces the risk of new prior art being cited in the national phase. Expanded linguistic and technical scope: The MPEP notes, Requesting one or more supplementary international searches,…
Read MoreWhat are the benefits of using internet searching in patent examination?
Internet searching offers several benefits to patent examiners during the examination process. According to MPEP 904.02(c), some key advantages include: Access to Non-Patent Literature (NPL): The internet provides a vast repository of technical and scientific information that may not be available in traditional patent databases. Up-to-date Information: Internet sources often contain the most recent developments…
Read MoreWhat are analogous arts in patent examination?
Analogous arts in patent examination refer to fields of invention that are related to the claimed invention, even if they are not directly within the same classification. The Manual of Patent Examining Procedure (MPEP) states: Not only must the art be searched within which the invention claimed is classifiable, but also all analogous arts must…
Read MoreHow can patent examiners access borrowed publications?
Patent examiners can access borrowed publications through the Scientific and Technical Information Center (STIC) Services, specifically through interlibrary loans. The MPEP 901.06(b) directs readers to “See MPEP § 901.06(a) , STIC Services – Interlibrary Loans.” This suggests that examiners should refer to MPEP 901.06(a) for detailed information on how to request and access publications that…
Read MoreHow can abandoned applications be accessed for prior art searches?
Abandoned applications can be accessed for prior art searches through various means. The MPEP 901.02 states: “Abandoned applications are available on microfilm in the Patent Search Room.” Additionally, many abandoned applications are now available electronically through the USPTO’s public databases. Patent examiners and the public can access these applications to conduct thorough prior art searches.…
Read MoreHow should an examiner handle information about areas of search submitted by an applicant?
When an applicant submits information about areas of search, the examiner must consider this information and clearly indicate which areas were used and which were not used in performing the search. The MPEP provides specific guidance: “Information constituting identification of areas of search must be considered and the examiner must indicate which areas were used…
Read MoreCan a patent examiner request information about related applications or patents?
Yes, a patent examiner can request information about related applications or patents. According to MPEP 704.11(a), this includes: Copies of related applications Copies of other pending U.S. applications Copies of foreign patent documents cited in the specification Dates of public use or sale Information regarding inventorship The MPEP specifically states: ‘Information reasonably necessary for finding…
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 MoreWhat is the primary purpose of a search during patent examination?
The primary purpose of a search during patent examination is to identify relevant prior art after the examiner has read and understood the specification and claims. As stated in MPEP 704.01: “After reading the specification and claims, the examiner searches the prior art.” This search helps determine the novelty and non-obviousness of the claimed invention.…
Read MoreHow should patent examiners approach the examination process?
Patent examiners should approach the examination process with a thorough and balanced perspective. The MPEP provides the following guidance: Read and understand the claimed invention Conduct a prior art search Review and analyze the application in conjunction with the state of the prior art Determine if the claims meet all patentability requirements Clearly articulate any…
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