What materials are allowed to be visible during a patent interview?
During a patent interview, only materials directly related to the case under discussion should be visible. The MPEP 713.07 provides clear guidance on this matter: Prior to an interview, the examiner should ensure that all files, drawings and other papers, except those necessary in the interview, are out of view. This means that the following…
Read MoreWhat should I prepare for a patent interview with an examiner?
To prepare for a patent interview with an examiner, consider the following: Be fully prepared to discuss issues raised in the Office action. Submit an agenda indicating issues you want to discuss. Prepare a proposed amendment or argument in writing. Familiarize yourself with the status and existing issues in the application. Be prepared to keep…
Read MoreHow should examiners handle multiple dependent claims in patent applications?
How should examiners handle multiple dependent claims in patent applications? When dealing with multiple dependent claims in patent applications, examiners must follow specific guidelines. The MPEP 707.07(i) states: ‘When examining an application with multiple dependent claims, the examiner should make certain that each multiple dependent claim is proper.’ Examiners are instructed to: Ensure that multiple…
Read MoreWhat are the general guidelines for conducting interviews in patent applications?
The general guidelines for conducting interviews in patent applications are outlined in MPEP 713.01. Key points include: Interviews must be conducted on Office premises and within Office hours, as designated by examiners. Interviews for discussing patentability typically won’t occur before the first Office action, unless it’s a continuing or substitute application. Face-to-face interviews may be…
Read MoreHow should patent examiners communicate rejections not based on prior art?
According to MPEP 706.03, patent examiners should communicate rejections not based on prior art in a clear and thorough manner. The MPEP states: “Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved.”…
Read MoreWhat are the requirements for citing prior art in a patent examiner’s office action?
What are the requirements for citing prior art in a patent examiner’s office action? When citing prior art in an office action, patent examiners must follow specific requirements to ensure clarity and completeness. According to MPEP 707.05, examiners should: Cite domestic and foreign patents by document number, kind code, and date Include the name of…
Read MoreWhat are the requirements for using video conferencing for patent interviews?
Video conferencing for patent interviews must adhere to specific requirements as outlined in MPEP 713.01: All video conferences must originate or be hosted by USPTO personnel. Examiners cannot conduct interviews via video conferences hosted by applicants or third parties. The examiner assigned to the application should coordinate the video conference using USPTO web-based collaboration tools.…
Read MoreHow does the USPTO handle allegations of unexpected results for different types of inventions?
How does the USPTO handle allegations of unexpected results for different types of inventions? The USPTO’s approach to allegations of unexpected results can vary depending on the type of invention. According to MPEP 716.02: For chemical inventions: Unexpected results are often demonstrated through comparative tests. The MPEP states, Evidence of unexpected results must be weighed…
Read MoreHow does the USPTO view experimental failures in determining patent operability?
The USPTO takes a nuanced view of experimental failures when determining patent operability. According to MPEP 716.07: ‘It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker. The failures of…
Read MoreHow does the USPTO handle allegations of unexpected results for chemical compounds?
How does the USPTO handle allegations of unexpected results for chemical compounds? The USPTO has specific guidelines for evaluating allegations of unexpected results, particularly for chemical compounds. According to MPEP 716.02(a)(II): “Evidence that a compound possesses unexpected properties is not sufficient to rebut a prima facie case of obviousness if the prior art suggested that…
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