How can examiners search for foreign patents for pre-AIA 35 U.S.C. 102(d) rejections?
Examiners have several methods to search for foreign patents that could be used for pre-AIA 35 U.S.C. 102(d) rejections. The MPEP outlines the following approaches: Electronic database search: “The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information…
Read MoreHow should an applicant respond to a requirement for information?
How should an applicant respond to a requirement for information? When responding to a requirement for information, applicants should follow these guidelines based on MPEP 704.14: Be timely: Respond within the set time limit, typically one month or 30 days. Be complete: Address all points raised in the requirement. Be accurate: Provide truthful and precise…
Read MoreHow should an applicant respond to a requirement for information?
When responding to a requirement for information under 37 CFR 1.105, an applicant should: Provide the requested information within the specified time period Ensure the response is made with candor and good faith as required by 37 CFR 1.56 If an item of information is unknown or cannot be readily obtained, state this in the…
Read MoreHow should an examiner phrase a Requirement for Information?
How should an examiner phrase a Requirement for Information? When phrasing a Requirement for Information, examiners should follow specific guidelines to ensure clarity and compliance with USPTO regulations. The MPEP 704.14(a) provides guidance on this matter: ‘The requirement should clearly indicate that the requirement is being made under 37 CFR 1.105 and that the consequences…
Read MoreWhat is Form Paragraph 7.104 in patent examination requirements?
Form Paragraph 7.104 is a standardized warning statement used in patent examination requirements for information. According to MPEP 704.14(a), this paragraph should be included in every requirement for information. The exact text of Form Paragraph 7.104 is: The reply to this requirement must be submitted within the time period set forth in the requirement. Failure…
Read MoreWhat factors are considered for making a requirement for information prior to the first action on the merits?
According to MPEP 704.11(b), several factors are considered when determining the appropriateness of a separate requirement for information prior to the first action on the merits. These include: Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool Whether the applicant submitted an Information Disclosure Statement…
Read MoreCan the time period for replying to a requirement for information be extended?
Yes, the time period for replying to a requirement for information under 37 CFR 1.105 can be extended. MPEP § 704.13 provides guidance on this: Applicant may extend the time period for reply up to six months in accordance with 37 CFR 1.136(a). This means that while the initial period set for reply might be…
Read MoreCan the time limit for filing a petition to a requirement for information be extended?
No, the time limit for filing a petition to a requirement for information cannot be extended. The MPEP 704.14(c) explicitly states: ‘Extensions of time under 37 CFR 1.136 to file a petition under 37 CFR 1.181 to a requirement for information are not permitted.’ This means that the two-month deadline is strict and cannot be…
Read MoreHow should an examiner explain the reasons for requiring information?
According to MPEP 704.14(a), an examiner should provide a clear explanation for requiring information: ‘The examiner should also specify why the required information is needed and how it can be applied to the patentability determination.’ This explanation serves several purposes: It justifies the requirement to the applicant It helps the applicant understand the relevance of…
Read MoreWhat is the examiner’s obligation after receiving a reply to a requirement for information?
After receiving a reply to a requirement for information under 37 CFR 1.105, the examiner has several obligations: Consider the information submitted in the applicant’s reply Apply the information as deemed appropriate to the examination For search-related information, indicate which areas were used and which were not in performing a search For answers to queries,…
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