What is the primary guidance for search tool selection in patent examination?
The Manual of Patent Examining Procedure (MPEP) provides general guidance on search tool selection for patent examiners. According to MPEP 904.02(b), Detailed guidance on the choice and use of specific search tools can be established only within the context of the special requirements of each Technology Center (TC). This means that while there are general…
Read MoreWhat is the procedure for withdrawing a patent application from issue?
The procedure for withdrawing a patent application from issue involves several steps, as outlined in MPEP 1308.01: The examiner notifies the Office of Patent Application Processing (OPAP) to withdraw the application from issue. OPAP then forwards the application to the Technology Center (TC) for processing. The TC Technical Support Staff (TSS) processes the withdrawal and…
Read MoreCan examiners other than supervisory patent examiners assign applications?
Yes, examiners other than supervisory patent examiners can be given the responsibility of assigning applications. The MPEP 909.02(b) provides guidance on this: “If an examiner other than the supervisory patent examiner is given the responsibility of assigning applications, time so spent may, at the TC Director’s discretion, be charged to ‘Other Time- Classify (non-PGPub) and…
Read MoreCan a primary examiner refuse to prepare a Patentability Report?
Yes, a primary examiner can refuse to prepare a Patentability Report. According to MPEP 705.01(a): ‘If the primary examiner in a reporting TC is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding TC.’ This means that if the examiner believes…
Read MoreHow can an applicant challenge a requirement under 37 CFR 1.105?
An applicant can challenge a requirement under 37 CFR 1.105 by submitting a petition under 37 CFR 1.181. The MPEP states: “Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181…
Read MoreHow are appeals handled when a Patentability Report is involved?
When an appeal is taken from the rejection of claims involving a Patentability Report, MPEP 705.01(a) states: ‘When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal.’ This means: The…
Read MoreWhat is the process for handling amendments under 37 CFR 1.312?
Amendments under 37 CFR 1.312 are handled as follows: Sent to the Office of Patent Application Processing (OPAP) for scanning and uploading into the IFW. OPAP messages the Office of Data Management, which reviews and forwards to the Technology Center (TC) that allowed the application. TC completes the action and messages the Office of Data…
Read MoreWho signs a Patentability Report in the USPTO examination process?
According to MPEP § 705, a Patentability Report (P.R.) is signed by a specific individual in the examination process. The MPEP states: This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC. This means that the primary examiner in the Technology Center (TC) that is…
Read MoreWho prepares patentability reports?
Patentability reports are typically prepared by examiners with specialized knowledge in different technical fields. The MPEP 705 states: “Patentability reports are prepared by examiners in the Technology Center (TC) to which the application is assigned and by examiners in one or more other TCs.” This collaborative approach ensures that all aspects of complex or multi-invention…
Read MoreWhen is a Patentability Report used in the patent examination process?
A Patentability Report is used in specific circumstances during the patent examination process. According to MPEP § 705, it’s used: When an application is properly assigned to one Technology Center (TC) The application contains one or more claims classifiable in one or more other TCs These claims are not divisible from each other or from…
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