How does the USPTO determine if a Patentability Report is appropriate?
The USPTO determines if a Patentability Report is appropriate based on two main factors: saving total examiner time and improving examination quality. According to MPEP 705.01(e):
Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge.
The decision to use a Patentability Report involves considering:
- The nature of the claimed inventions
- The potential time savings from involving specialists
- The potential improvement in examination quality due to specialized knowledge
- The relationship between the claims (e.g., same character but different scope, manufacturing process and product, etc.)
If it can be demonstrated that a Patentability Report will save total examiner time, it may be approved by the Director of the Technology Center to which the application is assigned.
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