How does the USPTO approach searching for non-patent literature in prior art searches?
The USPTO recognizes the importance of non-patent literature (NPL) in prior art searches. According to MPEP 904.02: “The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. The search should not be limited to the examples or embodiments given in the specification.”…
Read MoreAre type fonts eligible for design patent protection?
Yes, type fonts are eligible for design patent protection. The MPEP addresses this specifically: “Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts.” Moreover, the MPEP clarifies that modern methods of typesetting, including computer generation,…
Read MoreHow are twice-reissued patents formatted?
Twice-reissued patents have a specific formatting to distinguish changes made in the first and second reissue. The MPEP 1411 provides guidance on this: “Examples of the form for a twice-reissued patent are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and…
Read MoreHow should trademarks be used in design patent applications?
The use of trademarks in design patent applications is permitted under limited circumstances. Here are the key guidelines: In the specification: Limited use is allowed. Refer to MPEP § 608.01(v) for specific guidelines. In the title: It is improper to use a trademark alone or with the word “type” in the title of a design.…
Read MoreWhat is the MPEP’s stance on “sounding out” interviews with patent examiners?
The MPEP explicitly prohibits interviews that are solely for the purpose of “sounding out” the examiner. According to MPEP 713.03: “Interviews that are solely for the purpose of ‘sounding out’ the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent that any agreement that would…
Read MoreWhat is the significance of MPEP 1302.04(c) in patent examination?
MPEP 1302.04(c) is a crucial section in the Manual of Patent Examining Procedure that addresses the cancellation of claims to nonelected invention. Its significance lies in providing guidance to patent examiners and applicants on how to handle claims that were not chosen for examination due to a restriction requirement. The section states: “See MPEP §…
Read MoreWhat is the relationship between MPEP 901.06(b) and MPEP 901.06(a)?
MPEP 901.06(b) directly references MPEP 901.06(a) for information on borrowed publications. The section states: “See MPEP § 901.06(a) , STIC Services – Interlibrary Loans.” This indicates that MPEP 901.06(a) contains more detailed information about STIC Services and interlibrary loans, which are the primary means of accessing borrowed publications. Essentially, 901.06(b) serves as a pointer to…
Read MoreWhy does the USPTO prohibit “sounding out” interviews with patent examiners?
The USPTO prohibits “sounding out” interviews to ensure efficient use of examiner time and resources, and to promote substantive, binding discussions. According to MPEP 713.03: “Interviews that are solely for the purpose of ‘sounding out’ the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent…
Read MoreHow should the title be worded for a design patent application involving computer-generated icons?
The title in a design patent application for computer-generated icons should clearly refer to the claimed subject matter and adequately describe a design for an article of manufacture under 35 U.S.C. 171. The MPEP provides specific guidance on appropriate and inappropriate titles: “The following titles do not adequately describe a design for an article of…
Read MoreWhat constitutes a prohibited “sounding out” interview according to the MPEP?
According to MPEP 713.03, a prohibited “sounding out” interview is characterized by the following: The sole purpose is to gauge the examiner’s position or opinion Any agreement reached would be conditional upon approval by a principal attorney Often involves a local attorney acting on behalf of an out-of-town attorney The MPEP states: “Interviews that are…
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