Can I traverse an Election of Species requirement?
Yes, you can traverse (challenge) an Election of Species requirement. The MPEP 809.02(a) states: “The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse.” To traverse the requirement: Make your species election as required. Clearly state that your election is made “with traverse.”…
Read MoreHow do I respond to an Election of Species requirement?
To respond to an Election of Species requirement, you should follow these steps: Elect a single disclosed species or a single grouping of patentably indistinct species. Identify the claims encompassing the elected species or grouping. Optionally, include arguments traversing the requirement. According to MPEP 809.02(a): “Applicant is advised that the reply to this requirement to…
Read MoreWhat is the process for deferring issuance of a patent?
To defer issuance of a patent, an applicant must follow these steps: Pay the issue fee timely. File a petition under 37 CFR 1.314. Include the fee set forth in § 1.17(h). Provide a showing of good and sufficient reasons for deferment. As stated in the MPEP, “A petition to defer issuance of a patent…
Read MoreHow should an examiner present an Election of Species requirement?
When presenting an Election of Species requirement, an examiner should follow specific guidelines outlined in the MPEP 809.02. The key steps include: Identify generic claims or indicate that no generic claims are present Clearly identify each of the disclosed species Provide reasons why the species are independent or distinct Require the applicant to elect a…
Read MoreWhat is a generic claim in the context of an Election of Species requirement?
In the context of an Election of Species requirement, a generic claim is a claim that is broad enough to cover more than one species within a genus. The MPEP 809.02(a) instructs examiners to: “Identify generic claims or indicate that no generic claims are present.” Generic claims are important because: They determine the scope of…
Read MoreWhat is the difference between a general restriction requirement and an election of species?
While both are types of restriction requirements, MPEP 818.01(b) distinguishes between general restriction requirements and election of species: General restriction requirements: These typically involve distinct inventions or independent and distinct inventions. Election of species: This involves choosing a specific embodiment when claims encompass multiple patentably distinct species of an invention. The MPEP indicates different form…
Read MoreWhat is Form Paragraph 16.13 in plant patent examination?
Form Paragraph 16.13 is a standardized text used by patent examiners to request plant specimens during the examination of plant patent applications. As mentioned in MPEP 1607, “Form Paragraph 16.13 may be used to require specimens.“ The MPEP provides the following text for Form Paragraph 16.13: “Applicant [1] required to submit [2] in accordance with…
Read MoreWhat happens if an appeal to the Federal Circuit is dismissed?
When an appeal to the Federal Circuit is dismissed, the consequences depend on the reason for dismissal. MPEP 1216.01 outlines two scenarios: Dismissal due to failure to prosecute: “After dismissal, the action taken by the examiner will be the same as set forth above under the heading ‘Office Procedure Following Decision by the U.S. Court…
Read MoreWhat happens after the Federal Circuit issues a decision on a patent appeal?
After the Federal Circuit issues a decision on a patent appeal, the following process occurs: The Clerk of the Federal Circuit forwards a certified copy of the court’s decision (the “mandate”) to the USPTO. The mandate is entered into the file of the application, reexamination, or interference that was the subject of the appeal. The…
Read MoreWhat is an examiner’s amendment in patent application allowance?
An examiner’s amendment is a tool used during the patent application allowance process to make necessary changes to the application. According to MPEP 1302.04: “Where it is necessary to amend the application in order to place it in condition for allowance, the examiner may make amendments authorized by the applicant(s) by telephone or fax transmission…
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