What are ‘extraordinary circumstances’ for using Patentability Reports?

The Manual of Patent Examining Procedure (MPEP) § 705 emphasizes that Patentability Reports should only be used in extraordinary circumstances. While the MPEP doesn’t provide an exhaustive list of what constitutes ‘extraordinary circumstances,’ we can infer from the context that these may include:

• Applications with claims spanning multiple, distinctly different technology areas
• Cases where the expertise of multiple Technology Centers is crucial for a comprehensive examination
• Situations where the claims are not clearly divisible, yet require diverse technical knowledge for proper examination

The MPEP states: Note that the Patentability Report practice is only to be used in extraordinary circumstances. This underscores the exceptional nature of using Patentability Reports in the examination process. For more detailed guidance on what might constitute extraordinary circumstances, refer to MPEP § 705.01(e).

To learn more:

• Patentability Report
• Extraordinary Circumstances
• Patent Examination
• USPTO
• MPEP