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Editing MPEP 706
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If there is not enough information on which to base | If there is not enough information on which to base | ||
a public use or on sale rejection, the examiner should | a public use or on sale rejection, the examiner should | ||
make a requirement for more information. | make a requirement for more information. Form paragraph | ||
7.104 can be used. | |||
¶ 7.104 Requirement for Information, Public Use or Sale | |||
An issue of public use or on sale activity has been raised in this | |||
application. In order for the examiner to properly consider patentability | |||
of the claimed invention under 35 U.S.C. 102(b), additional | |||
information regarding this issue is required as follows: [1] | |||
Applicant is reminded that failure to fully reply to this requirement | |||
for information will result in a holding of abandonment. | |||
Examiner Note: | |||
1.Information sought should be restricted to that which is reasonably | |||
necessary for the examiner to render a decision on patentability. | |||
See MPEP § 2133.03. | |||
2.A one or two month time period should be set by the examiner | |||
for reply to the requirement unless it is part of an Office | |||
action having an SSP, in which case the period for reply will apply | |||
also to the requirement. | |||
3.If sufficient evidence already exists to establish a prima faciecase of public use or on sale, use form paragraph 7.16 to make a | |||
rejection under 35 U.S.C. 102(b). See MPEP § 2133.03. | |||
706.02(d)Rejections Under 35 U.S.C. | |||
102(c) | |||
Under 35 U.S.C. 102(c), abandonment of the | Under 35 U.S.C. 102(c), abandonment of the | ||
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for abandonment under 35 U.S.C. 102(c). | for abandonment under 35 U.S.C. 102(c). | ||
706.02(e)Rejections Under 35 U.S.C. | |||
102(d) [R-2] | |||
35 U.S.C. 102(d) establishes four conditions which, | 35 U.S.C. 102(d) establishes four conditions which, | ||
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under 35 | under 35 | ||
U.S.C. 102(d) on the ground of statutory bar. | U.S.C. 102(d) on the ground of statutory bar. | ||
See MPEP § 2135.01 for case law which further | |||
clarifies each of the four requirements of 35 U.S.C. | |||
102(d). | |||
SEARCHING FOR 35 U.S.C. 102(d) PRIOR ART | |||
The examiner should only undertake a search for an | |||
issued foreign patent for use as 35 U.S.C. 102(d) prior | |||
art if there is a reasonable possibility that a foreign | |||
patent covering the same subject matter as the U.S. | |||
application has been granted to the same inventive | |||
entity before the U.S. effective filing date, i.e., the | |||
time period between foreign and U.S. filings is greater | |||
than the usual time it takes for a patent to issue in the | |||
foreign country. Normally, the probability of the | |||
inventor’s foreign patent issuing before the U.S. filing | |||
date is so slight as to make such a search unproductive. | |||
However, it should be kept in mind that the average | |||
pendency varies greatly between foreign | |||
countries. In Belgium, for instance, a patent may be | |||
granted in just a month after its filing, while in Japan | |||
the patent may not issue for several years. | |||
The search for a granted patent can be accomplished | |||
on an electronic database either by the examiner | |||
or by the staff of the Scientific and Technical | |||
Information Center. See MPEP § 901.06(a), paragraph | |||
IV.B., for more information on online searching. | |||
The document must be a patent or inventor’s | |||
certificate and not merely a published or laid open | |||
application. | |||
====706.02(f) Rejection Under 35 U.S.C. 102(e)==== | ====706.02(f) Rejection Under 35 U.S.C. 102(e)==== |