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…

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How 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…

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What 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…

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What 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…

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How 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…

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What 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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