What are the limitations on examiner’s amendments for allowed applications?
Examiner’s amendments for allowed applications have certain limitations to ensure the integrity of the patent prosecution process. According to MPEP 1302.04, some key limitations include: Substantive changes to the written portions of the specification, including the abstract, require applicant’s approval. Examiners cannot cancel claims based on an amendment that argues for certain claims and alternatively…
Read MoreWhat legal authority allows the USPTO to submit plant applications to the Department of Agriculture?
The legal authority for the USPTO to submit plant patent applications to the Department of Agriculture is derived from multiple sources. According to MPEP 1609: 35 U.S.C. 164: This statute provides the general authority for the President to direct the Secretary of Agriculture to assist the USPTO in carrying out provisions related to plant patents.…
Read MoreWho can use the Korean Intellectual Property Office as an International Searching Authority for PCT applications?
The Korean Intellectual Property Office (KIPO) is available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents. This applies to applications filed in two specific receiving offices: The U.S. Patent and Trademark Office (USPTO) as receiving Office The International Bureau (IB) as receiving Office As stated in MPEP 1840.02:…
Read MoreWhat are the key regulations implementing restriction practice in patent applications?
What are the key regulations implementing restriction practice in patent applications? The key regulations implementing restriction practice in patent applications are found in 37 CFR 1.141-1.146. These regulations provide specific guidelines for applying restriction requirements. For example: 37 CFR 1.141 outlines the requirements for different types of claims in one application. 37 CFR 1.142 addresses…
Read MoreWhat is the role of the Japan Patent Office (JPO) as an International Searching Authority?
The Japan Patent Office (JPO) has been available as an International Searching Authority (ISA) for certain PCT applications since July 1, 2015. Specifically, the JPO can serve as an ISA for: PCT applications filed by U.S. nationals or residents Applications filed with the U.S. Patent and Trademark Office (USPTO) as receiving Office Applications filed with…
Read MoreHow should examiners interpret functional claim language?
Examiners should interpret functional claim language by focusing on the underlying structure or material that performs the claimed function. MPEP 904.01 states: Functional claim language must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the…
Read MoreWhat is an international-type search in U.S. patent applications?
An international-type search is a search conducted on U.S. nonprovisional patent applications that is similar in scope to an international search under the Patent Cooperation Treaty (PCT). According to MPEP 1852: “An international-type search is conducted on all U.S. nonprovisional applications filed after June 1, 1978.” This search is automatically performed for applications filed after…
Read MoreWhat is an international-type search, and how does it relate to U.S. national applications?
An international-type search is a search conducted on a national patent application that is similar in scope to an international search conducted for PCT applications. In the context of U.S. national applications, the United States Patent and Trademark Office (USPTO) automatically performs an international-type search on all U.S. national applications filed on and after June…
Read MoreWhich patent offices can act as International Searching Authorities for applications filed with the U.S. Receiving Office?
For international applications filed with the U.S. Receiving Office, several patent offices can act as competent International Searching Authorities. According to MPEP 1840, these include: United States Patent and Trademark Office (USPTO) European Patent Office (EPO) Korean Intellectual Property Office (KIPO) Australian Patent Office (IP Australia) (IPAU) Federal Service for Intellectual Property (Rospatent) (Russian Federation)…
Read MoreHow is the international search fee paid and when is it due?
According to MPEP 1840, the international search fee for the selected International Searching Authority (ISA) must be paid to the USPTO as a receiving Office. The fee is due within one month from the time of receipt of the international application. The MPEP states: “The international search fee for the selected ISA must be paid…
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