Can a requirement for information be made after the first Office action in a patent application?
Can a requirement for information be made after the first Office action in a patent application? Yes, a requirement for information can be made after the first Office action in a patent application. The MPEP 704.11(b) states: A requirement for information may be made at any time once the necessity for it is recognized and…
Read MoreHow are amendments after notice of allowance processed by the USPTO?
Amendments after notice of allowance are processed through several steps at the USPTO. According to MPEP 714.16(d): Amendments are sent to the Office of Patent Application Processing (OPAP) for scanning and uploading into the IFW. OPAP messages the Office of Data Management, which reviews the message. The message is forwarded to the Technology Center (TC)…
Read MoreHow does the USPTO handle situations where the requirements for the AIA 35 U.S.C. 102(b)(2)(C) exception are not fully met?
How does the USPTO handle situations where the requirements for the AIA 35 U.S.C. 102(b)(2)(C) exception are not fully met? When the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception are not fully met, the USPTO follows a specific procedure. According to MPEP 717.02(b): “If the requirements have not been met, the examiner will…
Read MoreHow does the USPTO handle amendments signed by applicants when there’s an attorney of record?
When an applicant signs an amendment in a patent application with an attorney of record, the USPTO follows a specific procedure: The amendment is entered and acted upon. Two copies of the action are prepared. One copy is sent to the attorney of record. The other copy is sent directly to the applicant. The MPEP…
Read MoreHow is a Patentability Report prepared and what does it include?
A Patentability Report is prepared by the primary examiner in the requested Technology Center (TC) after approving the request. According to MPEP 705.01(a): “This Patentability Report is in memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered must be recorded…
Read MoreHow is the sequence of examination determined in Patentability Report cases?
The sequence of examination in Patentability Report (P.R.) cases is determined through collaboration between supervisory patent examiners. According to MPEP 705.01(b): “In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the…
Read MoreHow are Patentability Reports counted and recorded by the USPTO?
The USPTO has specific procedures for counting and recording Patentability Reports (P.R.s). According to MPEP 705.01(c): “The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R. is completed and the application is ready for return to the forwarding TC,…
Read MoreHow are appeals handled in cases involving Patentability Reports?
When an appeal is taken from the rejection of claims in a case involving a Patentability Report, specific procedures are followed. According to MPEP 705.01(a): “When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC…
Read MoreWhen is the mailing date added to a USPTO Office action?
The mailing date for a USPTO Office action is not typed when the action is initially written. According to MPEP 707.11, “The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the action after it has been signed by the authorized signatory…
Read MoreCan the mailing date on a USPTO Office action be different from the date it was written?
Yes, the mailing date on a USPTO Office action can be, and often is, different from the date it was written. This is evident from the procedure described in MPEP 707.11: “The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the…
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