How should patent examiners communicate rejections not based on prior art?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
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.