How should patent examiners communicate rejections not based on prior art?
According to MPEP 706.03, patent examiners should communicate rejections not based on prior art in a clear and thorough manner. The MPEP states:
“Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved.”
Furthermore, the MPEP emphasizes:
“Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.”
This guidance encourages examiners to:
- Provide clear explanations for rejections
- Offer specific reasons for each rejection
- Suggest potential solutions or ways to overcome the rejection
- Avoid making rejections without proper justification
By following these guidelines, examiners can help applicants better understand the issues with their applications and how to address them effectively.
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