What information can an examiner request about the invention’s utility?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. An examiner can request various types of information about an invention’s utility during the patent examination process. According to MPEP 704.11(a) , this may include: Specific utilities of the invention Actual utilities of the invention Contemplated uses of the invention Specific properties of the invention The MPEP states: ‘Information reasonably necessary for finding prior art … may include technical information, such as … specific utilities of the invention, contemplated uses of the invention, or how the invention is made or used.’ This information helps the examiner assess whether the invention meets the utility requirement and to conduct a thorough prior art search. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examples of Information Reasonably Required for Examination MPEP 704.11(a) Required Requirement for Determining Prior Art Status of Dependent Claim Elements MPEP 704.11(a) Requirement for Information from Third Party Prohibited MPEP 704.11(a) Permitted Petition to Withdraw or Modify 105 Requirement MPEP 704.14(c) Permitted Petitions Do Not Extend Reply Period for 37 CFR 1.105 Requirement MPEP 704.14(c) Trade Name of Embodied Goods/Services Required for Examination MPEP 704.11(a) Requirement for Advertising and Promotional Literature MPEP 704.11(a) Citation for Journal Articles Describing Embodied Goods or Services Must Be Provided MPEP 704.11(a) Trade Names and Providers of Competing Goods/Services Required for Examination MPEP 704.11(a) Identification of Changes Required for Reformatted Continuation Applications MPEP 704.11(a) Other Related FAQs 5 FAQs Collapse Can a patent examiner request information about competing products? What types of tec...