What is an examiner’s amendment in patent prosecution?
An examiner’s amendment is a type of amendment to a patent application that is made by the examiner, typically with the agreement of the applicant or their representative. This can be an efficient way to make minor changes that put the application in condition for allowance. According to MPEP 707: Any amendment agreed upon during…
Read MoreWhen is a decision on a petition to expunge information made?
The decision on a petition to expunge information is typically held in abeyance until certain milestones in the application process. According to MPEP 724.06: The decision on the petition to expunge should be held in abeyance until the application is allowed or an Ex parte Quayle action, or a Notice of Abandonment is mailed, at…
Read MoreWho decides on petitions to expunge information from patent applications?
The decision-maker for petitions to expunge information depends on the circumstances and stage of the application process: For pending applications that have not been allowed or received an Ex parte Quayle action, the examiner initially considers the petition but holds the decision in abeyance. For applications that have been allowed, received an Ex parte Quayle…
Read MoreWhat happens if an applicant fails to respond to a non-responsive amendment notice?
What happens if an applicant fails to respond to a non-responsive amendment notice? If an applicant fails to respond to a notice of non-responsive amendment within the given two-month period, the consequences can be severe. According to MPEP 714.03: “Failure to take any action within the TWO-MONTH period will result in abandonment of the application.”…
Read MoreWhat happens if an applicant fails to reply to a requirement for information in a patent application?
What happens if an applicant fails to reply to a requirement for information in a patent application? If an applicant fails to reply to a requirement for information in a patent application, the consequences can be severe. According to MPEP 704.11(b): Where the applicant fails to reply to a requirement for information, the results may…
Read MoreHow does the principle of compact prosecution apply to patent examination?
The principle of compact prosecution is a key aspect of patent examination at the USPTO. According to MPEP 706.03: “Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be…
Read MoreCan a preliminary amendment be disapproved by the USPTO?
Yes, a preliminary amendment can be disapproved by the USPTO under certain circumstances. According to 37 CFR 1.115(b), A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. The MPEP further explains that factors considered for disapproval include: The state of preparation…
Read MoreWho is authorized to sign amendments in patent applications?
According to MPEP 714.01(a), amendments and other papers filed in a patent application must be signed by: A patent practitioner of record A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34 The applicant (as defined in 37 CFR 1.42) It’s important to note that for…
Read MoreWhat is the usual procedure for an assistant examiner to present their findings to a primary examiner?
The usual procedure for an assistant examiner to present their findings to a primary examiner is outlined in MPEP 707.01. The process typically involves: “The usual procedure is for the assistant examiner to explain the invention and discuss the references which he or she regards as most pertinent.” This procedure includes: Providing a clear explanation…
Read MoreHow is the mailing date applied to USPTO Office actions?
According to MPEP 707.11, the mailing date for USPTO Office actions is applied through a specific process: The mailing date is not typed when the Office action is initially written. Instead, it is “stamped or printed on all copies of the action”. This stamping or printing occurs after the action has been signed by the…
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