How should an applicant respond to an Office Action?
When responding to an Office Action, applicants should: Include the application number, 4-digit art unit number, and examiner’s name Include the 4-digit confirmation number on every paper filed Address all rejections and objections raised in the Office Action Provide arguments for allowability as required by 37 CFR 1.111 The MPEP section 707 states: Replies to…
Read MoreWhat happens if an incorrect citation of a reference is discovered in a patent application?
When an incorrect citation of a reference is discovered in a patent application, the action taken depends on who discovers the error: If discovered by the applicant: The applicant should notify the Office. As stated in MPEP 707.05(g), “Where an error in citation of a reference is brought to the attention of the Office by…
Read MoreIs a daytime telephone number required for patent applications filed before September 16, 2012?
While not strictly required, the USPTO recommends providing a daytime telephone number for patent applications filed before September 16, 2012. According to MPEP 403.01(b): Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written…
Read MoreWhat should be included in an Examiner’s Letter or Action?
According to MPEP 707, an Examiner’s Letter or Action should include: The Office Action Summary Form PTOL-326 Period set for reply Any attachments A ‘Summary of Action’ on all claims Notice of References Cited (PTO-892) Reasons for rejections or objections Useful information for judging the propriety of continuing prosecution The MPEP states, Information useful in…
Read MoreHow can an applicant schedule an interview with a patent examiner?
Applicants can schedule interviews with patent examiners through various methods, including telephone, in-person, and video conferencing. The USPTO encourages the use of the Automated Interview Request (AIR) Form for scheduling interviews. According to MPEP 707: Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an…
Read MoreHow do applicants receive a copy of the processed IDS from the USPTO?
Applicants receive a copy of the processed Information Disclosure Statement (IDS) as part of an Office action from the USPTO. The MPEP 609.08 states: a copy will be provided to applicant as part of an Office action. This means that after the examiner has reviewed and processed the IDS, the applicant will receive a copy…
Read MoreWhat is the purpose of an Examiner’s Letter or Action?
An Examiner’s Letter or Action, as described in MPEP 707, serves to communicate the examiner’s findings and decisions regarding a patent application. It includes: Information about the period set for reply Any attachments A ‘Summary of Action’ detailing the position taken on all claims Reasons for rejection or objection Useful information for judging the propriety…
Read MoreWhat are the different work schedules for patent examiners and how are they communicated?
Patent examiners may have different work schedules, which are communicated in their office actions to help applicants understand their availability. The MPEP provides two main form paragraphs for this purpose: Form Paragraph 7.101 for non-5/4/9 schedules Form Paragraph 7.102 for 5/4/9 schedules For example, Form Paragraph 7.102 states: “The examiner can normally be reached on…
Read MoreHow is an examiner’s contact information provided in a patent office action?
In every patent office action, the examiner’s contact information is provided for applicants to reach out with inquiries or to arrange interviews. According to MPEP 707.08, “The full surname of the examiner who prepares the Office action will, in all cases, be typed at the end of the action. The name and telephone number of…
Read MoreHow are amendments containing objectionable remarks handled by the USPTO?
Amendments containing objectionable remarks are handled with special care by the USPTO. According to MPEP 714.19: “An amendatory paper containing objectionable remarks that, in the opinion of the examiner, brings it within the condemnation of 37 CFR 1.3, will be submitted to the Deputy Commissioner for Patents who oversees the Office of Petitions. See MPEP…
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