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