What is the importance of STIC resources in determining patentability?
STIC resources play a crucial role in determining patentability by providing examiners with comprehensive access to prior art and technical information. The importance of these resources is highlighted in MPEP 901.06(a): “These resources provide material which must be known or searched to determine whether claims of applications are directly anticipated and, therefore, unpatentable under the…
Read MoreWhat is the significance of searching in analogous arts during patent examination?
Searching in analogous arts is a crucial aspect of patent examination, as it helps identify relevant prior art that may not be in the exact field of the invention. MPEP 904.03 states: “In all continuing applications, the parent applications should be reviewed for pertinent prior art.” This guidance extends to searching in analogous arts, which…
Read MoreHow are IBM Technical Disclosure Bulletins used in patent examination?
How are IBM Technical Disclosure Bulletins used in patent examination? IBM Technical Disclosure Bulletins are important publications used in patent examination as prior art. According to MPEP 901.06(d): “IBM Technical Disclosure Bulletins are available in the Technology Center libraries and in the Scientific and Technical Information Center (STIC). These bulletins, published from 1958 to 1998,…
Read MoreHow can patent examiners use A.P.C. published applications in patent examination?
Patent examiners can use A.P.C. published applications as prior art in patent examination, but with specific limitations. According to the MPEP: An A.P.C. published application may be used by the examiner as a basis for rejection only as a printed publication effective from the date of publication, which is printed on each copy. This means…
Read MoreHow does an examiner determine the field of search in patent examination?
An examiner determines the field of search in patent examination by considering several factors: The claimed invention’s subject matter Disclosed features that might be claimed Related fields of technology Prior art references cited in the application MPEP 904.02 states: “The examiner’s field of search should be broad enough to cover all subject matter which the…
Read MoreHow should examiners handle non-patent literature from the internet?
Examiners should handle non-patent literature (NPL) from the internet as follows: Treat internet sources as non-patent literature Include them in the list of references cited (PTO-892 form) Provide copies for the applicant’s use The MPEP states: “Internet sources … are to be treated in the same manner as other non-patent literature.” (MPEP 904.02(c)) This ensures…
Read MoreWhat are the guidelines for Internet searching in patent examination?
The USPTO has established guidelines for Internet searching during patent examination, as outlined in the Manual of Patent Examining Procedure (MPEP). Key points include: The Internet is an approved search tool for patent examiners. Searches for unpublished applications must be limited to the general state of the art to protect confidential information. For published applications,…
Read MoreHow does foreign priority affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications?
Foreign priority can significantly affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications, especially when the conditions of 35 U.S.C. 120 are not met: If the CIP application doesn’t meet the conditions of 35 U.S.C. 120 (e.g., insufficient disclosure), it’s not entitled to the benefit of the parent application’s filing date. In…
Read MoreWhat are the main sources of foreign patent documents for USPTO examiners?
USPTO examiners have access to various sources of foreign patent documents, including: Digests of foreign patent documents Abstracts of foreign patent documents Photographic and photostatic copies of entire foreign patent documents The MPEP states: “In general, these foreign patent documents provide a source of technological teachings and prior art accessible to the examiner.” (Source: MPEP…
Read MoreHow are foreign language publications handled in patent examinations?
The MPEP 901.06 addresses the handling of foreign language publications in patent examinations: “Abstracts of foreign language publications are kept as separate abstract publications. These abstracts are in the English language and are arranged in chronological order.” This means that for foreign language publications, English language abstracts are used to facilitate the examiner’s search and…
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