Can strong evidence of secondary considerations overcome obviousness?
While strong evidence of secondary considerations (indicia of nonobviousness) is important, it may not always be sufficient to overcome a strong case of obviousness. The MPEP 716.01(d) states: “Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the…
Read MoreHow should an applicant respond to formal requirements in a patent application?
When responding to formal requirements in a patent application, an applicant should either: Comply with the formal requirements, or Specifically traverse each requirement not complied with The MPEP states: In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated…
Read MoreWhat are the requirements for requesting a suspension of action?
To request a suspension of action under 37 CFR 1.103(a), an applicant must meet specific requirements. The MPEP states that a petition for suspension of action must: Be accompanied by the petition fee set forth in 37 CFR 1.17(g); Specify a period of suspension not exceeding 6 months; and Present good and sufficient reasons why…
Read MoreWhat are the requirements for amending claims in response to a rejection?
When amending claims in response to a rejection, an applicant must: Clearly point out the patentable novelty they believe the claims present in view of the state of the art disclosed by the cited references or objections made Show how the amendments avoid such references or objections As stated in 37 CFR 1.111(c): In amending…
Read MoreHow does the reply period differ for patent applications under appeal or court review?
The reply period for patent applications under appeal or court review may differ from the standard periods. The MPEP Section 710 states: ‘See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought.’ This reference to MPEP Chapter 1200 indicates that special rules and timeframes may apply when an application…
Read MoreWhat are rejections not based on prior art in patent examination?
Rejections not based on prior art are those that do not rely on existing patents or publications to challenge the patentability of an invention. These rejections typically focus on statutory requirements other than novelty or non-obviousness. According to MPEP 706.03, such rejections may include: Lack of adequate written description Lack of enablement Lack of utility…
Read MoreWhat is the difference between a rejection and an objection in patent examination?
The key difference between a rejection and an objection in patent examination lies in their nature and the review process: Rejection: Relates to the substance or merits of the claim. As stated in the MPEP, The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a ‘rejection.’ Rejections can…
Read MoreWhat is the purpose of interviews in patent prosecution?
Interviews play a crucial role in patent prosecution by: Improving mutual understanding of specific issues in an application Bridging the gap between examiners and applicants on substantive matters Advancing prosecution and identifying patentable subject matter As stated in MPEP 713: “Discussions between an applicant and an examiner are often indispensable to advance the prosecution of…
Read MoreWhat is the purpose of an interview summary in patent examination?
What is the purpose of an interview summary in patent examination? An interview summary serves as an official record of the discussion between the examiner and the applicant or their representative during a patent examination interview. The MPEP states: “A complete written statement as to the substance of any face-to-face, video conference, or telephone interview…
Read MoreWhat is the purpose of Form Paragraphs in patent examinations?
Form Paragraphs serve a crucial role in patent examinations. According to MPEP 707: “The manual has been issued to support the use of form paragraphs. Examiners should no longer modify the language of form paragraphs by making minor changes to the wording. If the form paragraph does not require the specific change to the language…
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