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705    Patentability Reports [R-08.2012]

Where an application, properly assigned to one Technology Center (TC), is found to contain one or more claims, per se, classifiable in one or more other TCs, which claims are not divisible inter se or from the claims which govern classification of the application in the first TC, the application may be referred to the other TC(s) concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.

Note that the Patentability Report practice is only to be used in extraordinary circumstances. See MPEP § 705.01(e).

705.01   Instructions re Patentability Reports [R-08.2012]

When an application comes up for any action and the primary examiners involved (i.e., from both the requesting and the requested Technology Center (TC)) agree that a Patentability Report is necessary, and if the TC Director of the requesting TC approves, the application is forwarded to the proper TC with a memorandum attached, for instance, “For Patentability Report from TC -- as to claims --.” For Image File Wrapper (IFW) processing, see IFW Manual.

705.01(a)   Nature of P.R., Its Use and Disposal

The primary examiner in the Technology Center (TC) from which the Patentability Report is requested, if he or she approves the request, will direct the preparation of the Patentability Report. This Patentability Report is in memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered must be recorded in the appropriate section of the OACS "Search Notes" page. When an examiner to whom an application has been forwarded for a Patentability Report is of the opinion that final action is in order as to the referred claims, he or she should so state. The Patentability Report when signed by the primary examiner in the reporting TC will be returned to the TC to which the application is regularly assigned and placed in the file wrapper.

The examiner preparing the Patentability Report will be entitled to receive an explanation of the disclosure from the examiner to whom the case is assigned to avoid duplication of work.

If the primary examiner in a reporting TC is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding TC.

I.   DISAGREEMENT AS TO CLASSIFICATION

Conflict of opinion as to classification may be referred to a classification dispute TC representative panel for decision.

If the primary examiner in the TC having jurisdiction of the application agrees with the Patentability Report, he or she should incorporate the substance thereof in his or her action, which action will be complete as to all claims. The Patentability Report in such a case is not given a paper number but is allowed to remain in the file until the application is finally disposed of by allowance or abandonment, at which time it should be removed. For Image File Wrapper (IFW) processing, see IFW Manual.

II.   DISAGREEMENT ON PATENTABILITY REPORT

If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot be reached, the primary examiner having jurisdiction of the application need not rely on the Patentability Report but may make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file.

III.    APPEAL TAKEN

When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal. The receiving TC will take jurisdiction of the application and prepare the examiner’s answer. If allowed, the application may be sent to issue by said TC with its classification determined by the controlling claims remaining in the application.

705.01(b)   Sequence of Examination

In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the application will direct that a complete search be made of the art relevant to his or her claims prior to referring the application to another TC for report. The TC to which the application is referred will be advised of the results of this search.

If the supervisory patent examiners are of the opinion that a different sequence of search is expedient, the order of search should be correspondingly modified.

705.01(c)   Counting and Recording P.R.s

The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R. is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent.

The date status of the application in the reporting TC will be determined on the basis of the dates in the TC of original jurisdiction. To ensure orderly progress in the reported dates, a timely reminder should be furnished to the TC making the P.R.

705.01(d)   [Reserved]

705.01(e)   Limitation as to Use

The above outlined Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge. A saving of total examiner time that is required to give a complete examination of an application is of primary importance. Patentability Report practice is based on the proposition that when plural, indivisible inventions are claimed, in some instances either less time is required for examination, or the results are of better quality, when specialists on each character of the claimed invention treat the claims directed to their specialty. However, in many instances a single examiner can give a complete examination of as good quality on all claims, and in less total examiner time than would be consumed by the use of the Patentability Report practice.

Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.

Exemplary situation where Patentability Reports are ordinarily not proper are as follows:

  • (A) Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.
  • (B) Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.
  • (C) Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.

Where it can be shown that a Patentability Report will save total examiner time, one is permitted with the approval of the Director of the Technology Center to which the application is assigned. The “Approved” stamp should be impressed on the memorandum requesting the Patentability Report. For Image File Wrapper (IFW) processing, see IFW Manual.

705.01(f)   Interviews With Applicants

In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting Technology Center may be called on for assistance at the interview when it concerns claims treated by them. See MPEP § 713 to § 713.10 regarding interviews in general.

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Last Modified: 03/27/2014 10:10:36