Can applicants request a patentability report for their patent application?
No, applicants cannot directly request a patentability report for their patent application. The decision to request a patentability report is made internally by the USPTO examiners. As stated in MPEP 705, “A patentability report is an internal USPTO memorandum, prepared by one examiner, expressing that examiner’s opinion as to the patentability of claims in a patent application assigned to another examiner.”
The primary examiner assigned to the application determines whether a patentability report is necessary based on the complexity of the subject matter or the presence of multiple inventions. Applicants can, however, ensure their application is clear and well-organized to facilitate a thorough examination, which may indirectly lead to a patentability report if the examiner deems it necessary.
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