How does the USPTO handle significant court or Patent Trial and Appeal Board decisions?
The USPTO has a structured process for handling significant court or Patent Trial and Appeal Board (PTAB) decisions that affect patent policy or practice. According to MPEP 1721: “In the event the Patent Trial and Appeal Board (Board) or court decision is one that significantly adds to the body of law by, for example, addressing…
Read MoreHow does the USPTO handle design patent applications with offensive content?
The United States Patent and Trademark Office (USPTO) rejects design patent applications containing offensive content as nonstatutory subject matter. This rejection is based on the requirements of 35 U.S.C. 171 and the principles outlined in 37 CFR 1.3. MPEP 1504.01(e) states: “The disclosure, and therefore the claim in this application, is rejected as being offensive…
Read MoreHow does the USPTO handle the receipt of international preliminary examination reports?
According to MPEP 1881, the USPTO handles the receipt of international preliminary examination reports as follows: “The international preliminary examination report received by the USPTO will also be included in the national stage file.“ This means that when an application enters the national stage at the USPTO, the international preliminary examination report becomes part of…
Read MoreWhat should an examiner do if they believe an application is improperly assigned to their docket?
If an examiner believes an application is improperly assigned to their docket, they should: Send an email to the TC 2900 docketing POC for evaluation of the application. If deemed improper, the application will be removed from the examiner’s docket and appropriately reassigned. If deemed proper after reevaluation, the case will be returned to the…
Read MoreHow does the USPTO handle applications with genus and species claims?
The United States Patent and Trademark Office (USPTO) has specific procedures for handling applications with genus and species claims. According to MPEP 806.04: “In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the…
Read MoreHow does the USPTO handle earlier search results from foreign offices in PCT applications?
The United States Patent and Trademark Office (USPTO), when acting as the International Searching Authority (ISA/US), handles earlier search results from foreign offices in PCT applications as follows: If the applicant has requested the ISA/US to consider earlier foreign search results. If a copy of the earlier search results and an English translation (if necessary)…
Read MoreHow does the USPTO handle elections made by canceling claims?
The United States Patent and Trademark Office (USPTO) treats elections made by canceling claims as a valid form of election. According to MPEP 818.02(c): “Where applicant claims two or more independent or distinct inventions and as a result of amendment to the claims, he or she cancels the claims to one or more of such…
Read MoreWhat matters are decided by the General Counsel of the USPTO?
The General Counsel of the USPTO is responsible for deciding several important matters, including: Requests for confidentiality waiver under 35 U.S.C. 122 Certain petitions for time extensions related to appeals Petitions regarding enrollment, recognition, and disciplinary matters Appeals and reconsideration requests in practitioner disciplinary proceedings Contested decisions involving the Office of Enrollment and Discipline As…
Read MoreHow does the USPTO determine the field of search for a patent application?
The USPTO determines the field of search for a patent application based on the claimed subject matter and its classification. MPEP 904.02(a) states: “The field of search should extend to all probable areas relevant to the claimed subject matter and should cover the disclosed features which might reasonably be expected to be claimed.” This means…
Read MoreHow does the USPTO report examiner time and activity?
The USPTO reports examiner time and activity on a biweekly basis using an integrated system. The MPEP states: “All reporting of examiner time and activity is performed on a biweekly basis. Each examiner’s examining and non-examining time, as entered in the USPTO’s time and attendance system, is used by the integrated examination tools in the…
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