PART
9 THE
EXAMINATION
OF THE APPLICATION; NATURE
OF PROCEEDINGS
IN THE EXAMINATION OF AN
APPLICATION
FOR A PATENT; GENERAL
CONSIDERATIONS
Rule 900. Applications
prosecuted ex parte. An application is prosecuted ex parte
by the applicant; that is, the proceedings are like a lawsuit in which
there is a plaintiff, but no defendant, the court itself acting as the
adverse party.
Rule
901.
Proceedings a contest between the Examiner and the applicant.
An ex parte proceeding in the Bureau is a law contest between
the
Examiner, representing the public and trying to give the inventor the
least
possible monopoly in return for his disclosure, and the applicant or
his
attorney trying to get as much monopoly as possible.
Rule
902.
Applicant supposed to look after his interest. The
Bureau,
represented by the Examiner, is not supposed to look after the
interests
of an applicant. The Examiners are charged with the
protection
of the interest of the public, and hence must be vigilant to see that
no
patent issues for subject matter which is not patentable, and is
already
disclosed in prior inventions and accessible to the public at
large.
Rule 903. Preliminary
adverse actions of the Examiner valuable to applicant.
The positive value of preliminary adverse actions of the Examiner
should
be fully appreciated by the applicant and his attorney. A
hard-fought
application will produce a patent much more likely to stand in court
than
a patent which has slid through the Bureau easily. This is so for
two reasons: first, the rejections have given the applicant or his
attorney
suggestions of strengthening amendments so that his claims have been
made
infinitely less vulnerable than would be otherwise possible;
secondly,
every point raised by the Examiner and finally decided by the Bureau in
favor of the applicant will give him a prima facie standing on that
point
in court. The Office is empowered by law to pass upon
applications
for patents and, because of the authority vested in it, its decisions
with
respect to the granting of an application or on any point connected
with
it will be presumed to be correct by the courts.
Rule 904. A
preliminary
rejection should not be taken literally; Examiner is only trying
to be helpful. A rejection by the Examiner is never to
be taken literally. An applicant should remember that the
Examiner
may not be actually rejecting his invention. The Examiner may in
fact be quite prepared to admit the invention over the references to
the
prior art. He may be merely rejecting the applicant’s claims,
that
is, the way in which the applicant has expressed his invention.
An Examiner will
frequently make a blanket rejection on some reference to the prior art
just to be helpful to the applicant - just to give the applicant
a chance to explain away some reference and make a change in his claims
to avoid it, rather than to wait until the patent is granted and is
involved
in a litigation, when it may be too late to make the explanation.
Rule 905. The
Examiners shall have original jurisdiction over all applications;
appeal
to the Director. The examination of all
applications
for the grant of invention patents shall be under the original
jurisdiction
of the several Examiners; their decisions, when final, shall be
subject
to petition, or appeal to the Director within four (4) months from the
mailing date of the notice of the decision. As regards
information
on any specific technical or scientific matter pending final action by
the Bureau, the applicant may, upon payment of a fee, request in
writing
for a conference with the Examiner specifying the query he would want
to
propound to the Examiner but in respect of which the Examiner has the
discretion
to grant the request or choose to reply to the query in writing.
Rule 906. Order
of examination. Applications filed in the Bureau and
accepted
as complete applications are assigned for examination to the respective
Examiners handling the classes of invention to which the applications
relate.
Applications shall be taken up for examination by the Examiner in the
order
in which they have been filed.
Applications which
have been acted upon by the Examiner, and which have been placed by the
applicant in condition for further action by the said Examiner (amended
application) shall be taken up for such action in the order in which
they
have been placed in such condition (date of amendment).
Rule 907. Nature
of examination, Examiner’s action. (a) On taking
up an application for examination, the Examiner shall make a thorough
study
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the invention sought to be
patented.
The examination shall be complete with respect both to compliance of
the
application with the statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form,
unless
otherwise indicated.
(b) The applicant
will be notified of the Examiner’s action. The reasons for any
adverse
action or any objection or requirement will be stated and such
information
or references will be given as may be useful in aiding the applicant to
judge the propriety of continuing the prosecution of his
application.
Rule 908.
Completeness
of Examiner’s action. The Examiner’s action will
be complete as to all matters, except that in appropriate
circumstances,
such as restriction requirement, fundamental defects in the
application,
and the like, the action of the Examiner may be limited to such matters
before further action is made. However, matters of form need not
be raised by the Examiner until a claim is found allowable.
Rule 909.
Rejection
of claims. (a) If the invention is not considered patentable,
in any manner, all the claims will be rejected by the Examiner.
If
the invention is considered patentable as claimed in certain of
the
claims, but unpatentable as claimed in other claims, the latter claims
will be rejected but will not result in the refusal to grant a patent
provided
it is limited only to claims that have not been rejected.
(b) In rejecting
claims for want of novelty or for want of inventive step, the Examiner
must cite the references most relevant to the invention. When a
reference
is complex or shows or describes inventions other than that claimed by
the applicant, the particular part relied on must be designated as
nearly
as practicable. The pertinence of each reference, if not obvious,
must be clearly explained and each rejected claim specified.
(c) Claims
may be rejected for non-compliance with Sec. 35.1 and Sec. 36.1, IP
Code.
Rule 910. Unpublished,
withdrawn and forfeited applications not cited. Unpublished,
withdrawn and forfeited applications as such will not be cited as
references.
Rule 911. Reply
by applicant. (a) After the action of the Examiner, if the
same
be adverse in any respect, the applicant, if he persists in his
application
for a patent, must reply thereto and may request re-examination or
reconsideration,
with or without amendment.
(b) In order to be
entitled to re-examination or reconsideration, the applicant must make
a request therefor in writing, and he must distinctly and specifically
point out the supposed errors in the Examiner’s action; the applicant
must
respond to every ground of objection and rejection in the prior
Examiner’s
action (except that request may be made that objections or requirements
as to form, not necessary to further consideration of the claims, be
held
in abeyance until a claim is allowed), and the applicant’s action must
appear throughout to be a bona fide attempt to advance the case
to
final action. The mere allegation that the Examiner has erred will not
be received as a proper reason for such reexamination or
reconsideration.
(c) In amending an
application in response to a rejection, the applicant must clearly
point
out the patentable inventiveness and novelty which he thinks the claims
present, in view of the state of the art disclosed by the references
cited
or the objections made. He must also show how the amendments
avoid
such references or objections.
Rule 912. Re-examination
and reconsideration. After response by applicant, the
application
will be re-examined and reconsidered, and the applicant will be
notified
if claims are rejected, or objections or requirements made, in the same
manner as after the first examination. Applicant may respond to such
Examiner’s
action, in the same manner provided in these Regulations, with or
without
amendment, but any amendments after the second Examiner’s action must
ordinarily
be restricted to the rejection or to the objections or requirements
made,
and the application will be again considered.
Rule 913. Final
rejection or action. (a) On the second or any subsequent
examination
or consideration, the rejection or other action may be made final,
where
upon applicant’s response is limited to appeal, in the case of
rejection
of any claim or to amendment as specified in these Regulations.
Petition
may be taken to the Director in the case of objections or requirements
not involved in the rejection of any claim as provided in these
Regulations.
Response to a final rejection or action must include cancellation of,
or
appeal from the rejection of, each claim so rejected; and, if any claim
stands allowable, compliance with any requirement or objection as to
form.
(b) In making such
final rejection, the Examiner shall repeat all grounds of
rejection
then considered applicable to the claims in the case, clearly stating
the
reasons therefor. The Examiner may not cite grounds that have not been
raised in the earlier communications to the applicant.
Rule
914.
Conversion of patent applications or applications for utility
model.
(a) At any time before the grant or refusal of a patent, an
applicant
for a patent, may, upon payment of the prescribed fee convert his
application
into an application for registration of a utility model, which shall be
accorded the filing date of the initial application. An
application
may be converted only once. [Sec. 110, IP
Code]
(b) At any
time before the grant or refusal of a utility model registration, an
applicant
for a utility model registration may, upon payment of the prescribed
fee,
convert his application into a patent application, which shall be
accorded
the filing date of the initial application. [Sec.
110, IP Code]
Rule
915.
Prohibition against filing of parallel
applications.
An applicant may not file two (2) applications for the same subject,
one
for utility model registration and the other for the grant of a patent
whether simultaneously or consecutively. [Sec.
111,
IP Code]
AMENDMENTS
BY
THE APPLICANT
Rule
916.
Amendment by the applicant. An applicant may amend
the patent
application during examination: Provided, That such amendment shall not
include new matter outside the scope of the disclosure contained in the
application as filed. [Sec. 49, IP Code]
Rule 917. Amendments
after final action of the Examiner. (a) After final rejection
or action, amendments may be made canceling claims or complying with
any
requirement of form which has been made, and amendments presenting
rejected
claims in better form for consideration on appeal may be admitted; but
any proceedings relative thereto, shall not operate to relieve the
application
from its condition as subject to appeal or to save it from being
considered
withdrawn.
(b) Should amendments
touching the merits of the application be presented after final
rejection,
or after appeal has been taken, or when such amendment might not
otherwise
be proper, they may be admitted upon a showing of good and sufficient
reasons
why they are necessary and were not earlier presented.
Rule
918.
Amendment and revision required. The
specification,
claims and drawing must be amended and revised when required, to
correct
inaccuracies of description and definition or unnecessary prolixity,
and
to secure correspondence between the claims, the specification and the
drawing.
Rule 919.
Amendment of disclosure. No deletion or addition
shall broaden the disclosure of an application to include new matter
after
the filing date of the application. All amendments to the
specification,
claims or drawing, and all additions thereto made after the filing date
of the application must conform to at least one of them as it was as of
the filing date. Matter not found in either, involving a
departure
from or an addition to the original disclosure, cannot be added to the
application even though supported by a supplemental oath, and can be
shown
or claimed only in a separate application.
Rule 920.
Amendment of claims. The claims may be amended by canceling
particular
claims, by presenting new claims or by amending the language of
particular
new claims (such amended claims being in effect new claims). In
presenting
new or amended claims, the applicant must point out how they avoid any
reference or ground of rejection of record which may be pertinent.
Furthermore,
in order to facilitate the processing of the examination of the
application
, the applicant shall indicate in his response which form part in the
original
disclosure constitutes the basis of the amendments.
Rule 921.
Manner of making amendments. Erasures, additions,
insertions,
or alterations of the papers and records must not be made by the
applicant.
Amendments by the applicant are made by filing a paper in accordance
with
these Regulations, directing or requesting that specified amendments be
made. The exact word or words to be stricken out or inserted in
the
application must be specified and the precise point indicated where the
deletion or insertion is to be made. The basis of the proposed
amendments
in the original application as filed shall be indicated.
Rule
922.
Entry and consideration of amendments. (a)
Amendments
are entered by the Bureau by making the proposed deletions by drawing a
line in red ink through the word or words cancelled, and by making the
proposed substitutions or insertions in red ink, small insertions being
written in at the designated place and larger insertions being
indicated
by reference.
(b) Ordinarily all
amendments presented in a paper filed while the application is open to
amendment are entered and considered provided that amendments that do
not
comply with this rule may not be accepted. Untimely amendatory
papers
may be refused entry and consideration in whole or in part.
Rule
923.
Amendments to the drawing. (a) No
change
in the drawing may be made except by permission of the Bureau.
Request
for changes in the construction shown in any drawing may be made
only upon payment of the required fee. A sketch in permanent ink
showing proposed changes to become part of the record must be filed
together
with the search request. The paper requesting amendments to the
drawing
should be separate from other papers. The drawing may not be
withdrawn
from the Bureau except for signature. Substitute drawings will not
ordinarily
be admitted in any case unless required by the Bureau.
Rule 924. Amendment
of amendments. When an amendatory clause is to be amended, it
should be wholly rewritten and the original insertion cancelled, so
that
no interlineations or deletions shall appear in the clause as finally
presented.
Matter cancelled by amendment can be reinstated only by a subsequent
amendment
presenting the cancelled matter as a new insertion.
Rule
925.
Substitute specification. If the number or nature of
the amendments
shall render it difficult to consider the case, or to arrange the
papers
for printing or copying, the Examiner may require the entire
specification
or claims, or any part thereof, to be rewritten. A substitute
specification
will ordinarily not be accepted unless it has been required by the
Examiner.
A substitute specification may be required within two (2) months
from grant of the patent prior to publication of the patent in the IPO
Gazette.
Rule
926.
Numbering of claims. The original numbering of the
claims
must be preserved through the prosecution. When claims are
cancelled,
the remaining claims must not be renumbered. When claims are
added
by amendment or substituted for cancelled claims, they must be numbered
by the applicant consecutively beginning with the number next following
the highest numbered claim previously presented (whether entered or
not).
When the application is ready for allowance, the Examiner, if
necessary,
will renumber the claims consecutively in the order in which they
appear
or in such order as may have been requested by applicant.
Rule
927.
Petition from refusal to admit amendment. From
the refusal of the Examiner to admit an amendment, in whole or in part,
a petition will lie to the Director under these Regulations.
Rule 928. Interviews
with the Examiners: when no interview is permitted.
Interviews
with the Examiner concerning an application pending before the Bureau
can
be held only upon written request specifying the query the applicant
would
want to propound and after payment of the required fee, but in respect
of which the Examiner has the jurisdiction to grant interview or
instead
reply to the query in writing. The interview shall take place within
the
premises of the Bureau and during regular office hours as specified by
the Examiner. All interviews or conferences with Examiners shall be
reduced
to writing and signed by the Examiner and the applicant immediately
after
the conference. Such writing shall form part of the records of the
Bureau.
Interviews for the discussion of pending applications shall not be held
prior to the first official action thereon.
TIME
FOR RESPONSE
BY APPLICANT; WITHDRAWAL
OF
APPLICATION
Rule 929.
Withdrawal of application for failure to respond within time
limit.
(a) If an
applicant
fails to prosecute his application within the required time as provided
in these Regulations, the application shall be deemed withdrawn.
(b) The time for
reply may be extended only for good and sufficient cause, and for a
reasonable
time specified. Any request for such extension must be filed on
or
before the day on which action by the applicant is due. The Examiner
may
grant a maximum of two (2) extensions, provided that the
aggregate
period granted inclusive of the initial period allowed to file the
response,
shall not exceed six (6) months from mailing date of the official
action
requiring such response.
(c) Prosecution of
an application to save it from withdrawal must include such complete
and
proper action as the condition of the case may require. Any
amendment
not responsive to the last official action shall not operate to save
the
application from being deemed withdrawn.
(d) When action
by the applicant is a bona fide attempt to advance the case to final
action,
and is substantially a complete response to the Examiner’s action, but
consideration of some matter or compliance with some requirements has
been
inadvertently omitted, opportunity to explain and supply the omission
may
be given before the question of withdrawal is considered.
(e) Prompt ratification
or filing of a correctly signed copy may be accepted in case of an
unsigned
or improperly signed paper.
Rule
930.
Revival of application. An application deemed
withdrawn for
failure to prosecute may be revived as a pending application within a
period
of four (4) months from the mailing date of the notice of withdrawal if
it is shown to the satisfaction of the Director that the failure was
due
to fraud, accident, mistake or excusable negligence.
A petition to revive
an application deemed withdrawn must be accompanied by (1) a showing of
the cause of the failure to prosecute, (2) a complete proposed
response,
and (3) the required fee.
An application not
revived in accordance with this rule shall be deemed forfeited.
Rule 931. Express
withdrawal of application. An application may be expressly
withdrawn
by filing in the Bureau a written declaration of withdrawal, signed by
the applicant himself and the assignee of record, if any, and
identifying
the application.
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