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8 Types of Special Applications

Special application include:
1) made special by petition
2) reissued applications
3) transferred to different examiner
4) interference
5) ready for allowance
6) ready for final rejection
7) pending more than 5 years
8) reexaminations

35 USC 102 (a)

Prior to invention:

Public Knowledge, US only
Use by others, US only
Publication, Anywhere
Patent obtained, Anywhere

35 USC 102 (b)

More than one year before filing:

Patent obtained, anywhere
Publication, anywhere
Public use, US only
On Sale, US only

35 USC 102 (d)

35 USC 102 (d) bars anyone from obtaining a US patent on a given invention only is all of the following has happened:

1. filed in a foreign country
2. filing in the foreign county was 12 months prior to US application filing
3. foreign patent issued before the US patent filed.

35 USC 102 (e)

1. US patents or published applications and PCT applications (having an international Application date after Nov 29, 2000) designating the US which are published in English, all have 102(e) dates once they publish

2. The prior art date is the earliest effective US filing date or International filing date once the US application or International Application has published.

35 USC 102 (f)

bar patenting subject matter which the applicant did not invent.

35 USC 102 (g)

- prior invention made in US (except in interference, then NAFTA or WTO country activity counts as well)
- prior invention must not be abandoned, suppressed, or concealed (ASC)
- a partial exception is made for commonly owned inventions.

35 USC 102 sets forth 7 acts and documents under which a patent cannot be obtained.

1. a prior publication
2. a prior patent
3. an abandonment of invention
4. prior sale or offer for sale
5. prior use
6. prior public and general knowledge
7. a prior invention

103 stuff skipped.


Abandonment of an application

1) Failure to Reply
2) Express Abandonment
3) Termination of Proceedings

Actual infringement (w/ statement alleging)

1) infringing product/method is on the market/in use
2) comparison to claims made
3) search of prior art or good knowledge

Affidavit Practice Under CFR

CFR 1.131 and 1.132

After a First Official Action, the ball is returned to the Examiner, so is an extension required if Examiner amends?


After applicant's reply

1) Examiner must respond within 2 MONTHS of receipt
2) Examiner may not make next action a final rejection if it relies on the new material

After Final Rejection, what is an Examiners Answer treated like?

Like an amendment from the applicant so extensions are necessary.

Amendment is received in PTO before NOA is mailed, but does not get to examiner until after NOA is mailed

It has same standing as if NOA was not mailed

Amendments after final?

Amendments after final rejection may be entered which means that the Patent Office will proceed on the assumption that they never existed. Amendments sought after Final Rejection and after allowance are subject to special rules. Second and supplemental amendment after final may be refused entry if they unduly interfere with preparation of office action.

Amendments After Notice of Allowance

You have no right to have amendment entered after mailing of Notice of Allowance - it's a matter of grace, good and sufficient reason in petition and fee

Another way to overcome a 35 USC 102 rejection is to:

amend the claims by adding another limitation or step or element to patentably distinguish from the prior art.

Any new (not previously examined) application require a fee if

1) claims are to a single invention
2) a search was made
3) provides copies of closest references
4) provide detailed discussion of references and why claims are patentable over them. If not met applicant gets second chance to meet them

Any request for reconsideration of a decision on a revival petition must be filed:

within two months from the date of the decision

Any second or Final Rejection can be appealed but no first action can be appealed except in a

continuation application


An applicant can appeal after two or more actions on the merits, and after any final rejection

An applicant for a patent can now establish a date of invention by acts in a NAFTA country after ____ or in a WTO country after ____.

NAFTA country after Dec 8, 1993

WTO country after Jan 1, 1996

An applicant who is rejected based upon the conclusions of the Proceeding CAN

appeal the resulting rejection to the Board of Patent Appeals and Interferences.

Applications filed on or after August 25th, 2006

an applicant may be granted accelerated examination status.

Are amendments after allowance a matter of right?


Are amendments allowed after an issue fee has been paid?

No, except in conjunctions with a withdrawal from issue. 37 CFR 1.313

Automatic extensions are available for what kind of time periods?

1 month
2 month
3 month
4 month
5 month

That IS IT! A total automatic extension greater than 5 months is NOT POSSIBLE!

Automatic extensions cannot be obtained in six circumstances:

1. where the Office Action so states
2. A Reply Brief (responsive to an Examiners Answer in an Appeal to the Board of Patent Appeals and Interferences)
3. A request for an oral hearing in an Appeal
4. Responding to a decision of the Board
5. Anything in an interferences
6. Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must filed before that due date

Before the issue fee is paid, amendments may be entered IF

they are needed for proper disclosure and require no substantial work on the part of the examiner.

Can amendments or briefs be amended?


Can an extension for cause be obtained retroactively?

NO! Must be filed in advance of the established due date.

Can a petition for a Public Use Proceeding be filed by a party in an interference?


Rather, the issues must be raised by a motion in the interference

Can a preliminary amendment be submitted with an application?


Can automatic extensions be obtained retroactively?

Yes, lets say you have a shortened statutory period of three months, you can get your extension after three months

Can interviews be held without obtaining extensions in time?


Can oaths be amended?

No, they just be supplemented or replaced. They cannot be amended except for information disclosed in ADS, ie address and bibliographic information.

Can prosecution be suspended in a reexamination?


Can prosecution be suspended to allow submission of an IDS?

No, except in the "no cause" suspension used in CPA or RCE filing. (suspension is no longer than 3 months)

Can Public Use Proceedings be requested for reexaminations?


but yes for reissue application

Can you appeal a restriction requirement?

No, after asking for a reconsideration by examiner, it must be petitioned to the Commissioner.

Can you obtain an extension of time to pay the issue fee?

No but you can pay late upon proper showing (unavoidable, unintentional)

Can you petition for suspension of action while there is an action outstanding?


Can you respond to some rejection or objections and defere others until some future time?

Not allowed! Each response must be complete and respond fully to each rejection and objection.

The deadline for filing an Appeal Brief is calculated from:

the date the Notice of Appeal is actually received by the Patent Office.

"discloses but does not claim" can be sworn back BUT "claims the same invention"...

that CANNOT be sworn back.

Do small entities get a discount on extension fees?

yes, 50%

Drawings may be amended by:

submitted a "clean" version of the drawing to be amended. A "marked-up" version may optionally submitted

Due dates for the following cannot be extended even for cause:

1. IDS
2. Any due date set by statute (such as 6 month absolute deadline set for response to Office Action)
3. The issue fee can now, by statute, be paid late upon a proper showing, but cannot be extended
4. The deadline for responding to a Notice of Omitted Items (2)
5. The three month deadline to obtain a refund for a fee paid as a large entity.
6. Filing Formal Drawings at time Issue Fee is paid.

Every response by an applicant must

1) Reply to every rejection and objection in OA
2) Be a bona fide attempt to advance case to final action
3) Be in writing, typed or written in permanent ink and proper size paper
4) Be properly signed

Express abandonment after receipt of Notice of Allowance

Applicant should submit declaration along with a petition to withdraw the application from issue and fee.

Failure to Reply

1) If there is failure to reply it will be automatically become abandoned
2) If applicant replies within the time period but the reply is not fully responsive, the application still may be abandoned (EOT may be given if response appears to be a bona fide attempt to respond)

Filing a response to a Final Rejection in a re-examination automatically extends the deadline for response by how long?


Final Rejection

A final rejection is any second or later rejection, unless: new rejection of claim that was not added or substantively amended; rejection is based on newly cited art other than info submitted and IDS.

For an amendment after allowance to be entered, the remarks accompanying the proposed amendment must state the four "whys"

1. Why the amendment is needed
2. Why no new search or consideration is required
3. Why any amended or new claims are patentable
4. Why the amendments where not earlier presented
Think- to be patentable, we need a new search earlier.

Foreign Filing Liscense

US application will be rejected if applicant files in another country before receiving a foreign license (if the invention was made in US).

For something to be prior art under 102 (b), the invention has to be what during the offer for sale?

"ready for patenting" therefore capable of enablement

How are changes to the specification made?

Changes in the specification are made by submitted a "marked up" version of what needs to be changed and directing the PTO as to where the changes are being made. Paragraph numbering does help.

How can you get a suspension of action?

with good and sufficient cause and with fee

can suspend prosecution for 6 months

How can you respond to an Official Action?

By making an amendment or if no changes are made, then Request for Reconsideration

How does the exception to 103 rejections under 102 (e) (f) and (g) work?

A prior invention which would otherwise be prior art under either of these sections is not prior art to determine obviousness if the prior invention and the claimed invention were both, AT THE TIME THE CLAIMED OR LATER INVENTION WAS MADE, owned by the same entity or subject to an obligation to assign to the same entity.

How do you change claim wording?

- cancel the claims and replace with changed wording.
- amend the claims already in the application by submitted a re-written "marked-up" copy of the claims you wish to amend.

How is a Public Use Proceeding initiated?

by filing a petition requesting that a proceeding be instituted together with the fee. Evidence must be established in the form of affidavits or declarations.

How is express abandonment done?

By filing a written declaration identifying the application; however, express abandonment of the application may not be recognized by the Office unless it is actually received in time to act before date of issue or publication.

How long does an applicant generally have to reply to a requirement for information?

Applicant generally has 3 months if it comes with an OA and 3 months if it comes separately
2) EOT's are available
3) if no reply--abandoned

How will any reply that states the information required to be submitted is unknown or is not readily available be treated?

It will be accepted as a complete reply--safe harbor

How will authorization to charge all required fees be to a deposit account be treated?

As a constructive petition for extension of time

If a claim is amended, you need status indicators in front. Exclusive:

- cancelled
- previously presented
- withdrawn
- currently amended
- original
- not entered
- new

If amendment is filed after NOA what must be submitted?

1) Why it's neccessary
2) Why it requires no additional search or examination;
3) why claims are patentable;
4) why claims were not presented earlier

If an application is filed before August 25th, 2006, under which categories will special status be granted for free?

- illness
- environment
- energy
- age (over 65)
- counter terrorism

If an application is filed before August 25th, 2006, under which categories will special status be granted with a fee?

- prospective manufacture
- infringement
- safer DNA
- HIV / AIDS and cancer
- Superconductivity materials
- biotech applications filed by a small entity
- For the asking
--claims to a single invention are presented or the inventor agrees to accept any restriction
--the results of a ptentability search are presented
a copy of each reference located is submitted
a detailed dicussion of those references is provided
--the procedure contemplates an interview during the initial three month response period following a first action to resolve

If a prima facie showing has been made,

the Commissioner institutes the proceeding with both the applicant and the petitioner submitting briefs and testimony on the issued of public use and sale.

If a response to a Final Rejection is filed, the examiner may or may not

"enter" the amendment because it raises new issues, or does not place the application in better condition for appeal.

If new limitations are added through amendment (but were in the original spec) does a supplemental oath or declaration required?


If rejection is based on prior art...

prior art is the set of circumstances set forth in 35 USC 102 ONLY.

If the filing dates are within six months of each other (three months for simple subject matter),

an interference may be proper if they are claiming the same invention. Otherwise, the Patent Office will issue the one having the earliest filing date and then reject the other under 102 (e)

If the form of the claim, spec, or drawing (as distinguished from its substance) is improper, an

objection is made

If two applications are commonly owned or have a common inventor, what can the patent office do?

Provisionally reject one application citing the other which would be prior art if issued. Such a provisional rejection can be overcome by abandoning one application

In a continuation application, the first action can be made final IF

the rejection is the same as made in the parent

In an interview, if the examiner does not record in writing the substance of each telephone or personal communication THEN

the applicant has the obligation to do so.

In an official action, an examiner can do three things:



In any application, what can you do about concurrent or future reply requiring a petition for an extension of time as incorporating a petition for that extension?

A written request may be submitted

An International Bureau Publication of an IA is prior art under 102(e) as of its international filing date IF

it designates the US, and was published in English

An interview after first action is a matter of


Interviews after an Appeal brief

are normally not granted.

Is an interview before filing permitted?


Is it true that in responding to any action, each and every rejection and objection must be addressed?

Yes! Otherwise, the response is incomplete.

Is knowledge by the public considered "use" by the public under 102 (b)?


Is offering the application or the patent rights prior art?

No, because it is not officially an "offer for sale" under 102 (b)

Is preliminary amendment considered part of the original disclosure?

Not considered part of original disclosure unless filed with original app and later filed oath refers to it

June 8, 1995

- Any application filed on or before June 8, 1995 and has an effective filing date of June 8, 1993 or earlier can use the Transitional Final Rejection practice

- Any application filed on or after June 8, 1995 are eligible for RCE

Most rejections are based on 35 USC 101

35 USC 101 (patentable subject matter, lack of utility)

Most rejections are based on 35 USC 102

35 USC 102 (anticipation)

Most rejections are based on 35 USC 103

35 USC 103 (obviousness)

Most rejections are based on 35 USC 112 first para

112 first para (written description, enablement and best mode)

Most rejections are based on 35 USC 112 second para

35 USC 112 second para (particularly pointing out and distinctly claiming.

Non-responsive reply

1) If intentional, must remedy within statutory period to avoid abandonment
2) If unintentional, examiner can either accept it or require reply within remaining period or set a new 1 month time limit (extendable); new time limit cannot be given after final OA

Notice of Allowability

time is not extendable for: submitting an oath or declaration and submitting formal drawings

Only two procedures are available to challenge whether a pending application should issue:

a protest or a Public Use Proceeding.

Protests are covered in chapter 1900

Order of Examination

Application are examined in order in which they are filed in the US. (Applications are examined on a first come, first served basis)

Patentable subject matter is defined in 35 USC 101 as any new and useful:

1. process
2. machine
3. manufacture
4. composition of matter

A patent application published in the US resulting from an international application entering the national stage is prior art under 102(e) as of its international filing date ONLY IF

the IA was published in English.

Period for Reply

1) Due dates are calculated from PTO mailing date
2) EOT cannot exceed the 6 month statutory period for Office actions

The period to complete a bona fide but incomplete reply to a non-final action can now be

extended with an automatic extension of time

Petitions for automatic extensions of time can now be provided by:

- previous general authorization for extensions of time
- mere payment of the extension of time fee without a specific request
- general authorization to pay an additional fee

Petitions to make special

Petitions to make special need to be in writing and identify the application by number and filing date

A petition to revive an abandoned application which had an outstanding Official Action pending at the time it was abandoned must be accompanied by either an

amendment, request for reconsideration, or filing of a continuation.

A preliminary amendment will generally not be disapproved if it filed no later than:

1) 3 months from filing date;
2) filing date of CPA;
3) OR 3 months from date the national stage is entered.

NOT extendable time periods

Prospective manufacture

1) sufficient capital facilities
2) will not manufacture w/o granted patent
3) will manufacture if patent is granted
4) made a prior art search or has good knowledge of prior art

Provisional applications can still be revived BUT

still expire at 12 months.

The PTO is prepared to pick up the cost of any extension they cause IF

the applicant activates by responding to a Final Rejection within two months of the mailing date of the Final Rejection. There is a "free period" of 3 months from the mailing date of the Final Action or on the mailing date of the Advisory Action, whichever is later.
Further extensions are calculated from the end of the "free" period. In NO EVENT can an applicant extend past SIX months.

Rejection of Claims

Rejection of claims is based on subject matter (substance) and is subject to appeal. Note: objections are based on form and may be reviewed only by petition to the director.

Request for Continued Examination (RCE)

A RCE provides a way for an applicant to obtain continued examination of an application after prosecution has closed by filing a submission and paying a fee. If a subsequent action is made final, an applicant can get continued examination again by filing submission and fee.

Requirements for Information

Examiner may require the submission of information that is reasonably necessary to properly examine or treat the matter (including: reissues, patents, reexams)

Resort to extensions for cause can only be done when

the automatic extensions are used up.

Revival of Abandoned Applications

Can occur...sometimes

Rules for Timeliness of Response

All dates are calculated from:

the mailing date from the Patent Office which is stamped on the action. The date of receipt is irrelevant

A second action can always be made Final even though a new rejection is advanced by the examiner, but only IF

the new rejection was necessitated by some action of the applicant, such as amending the claims.

Shortened Statutory Period:

for responding to a restriction requirement?

for responding to Ex Parte Quayle actions (action in which all the rejection and objections are formal)

for responding to all other official actions?

Shortened Statutory Period:

for responding to a restriction requirement? 1 month

for responding to Ex Parte Quayle actions (action in which all the rejection and objections are formal) 2 month

for responding to all other official actions? 3 months

Skipping 700-42 to 700-45.


Submission with a RCE if a reply to an OA is outstanding

1) submission must meet requirement of section 1.111 in order to continue prosecution.
Payment of the fee for an RCE does NOT toll the running of any time period set for reply.

Suspension for public safety or defense by PTO if

1) application is owned by US
2) Publication may be detrimental to public safety
3) appropriate agency requests suspension

Suspension for Statutory Invention Registration (SIR) if:

PTO accepts a request to publish an SIR in the application

Suspension of action may by an APPLICANT by request if [1.103(b)]

1) filed along with a request for CPA
2) must specify time of requested suspension (no more than 3 months)
3) fee

Suspension of action may by an APPLICANT (new) [1.103(d)]

1) Deferral of examination of application
2) max of 3 years from earliest filing date from which benefit is claimed
3) fees
4) won't be granted after mailing of office action or notice of allowance
5) must be in condition for publication
6) no non-publication request
7) regular (utility) and plant apps or international app that entered national stage--on or after Nov. 29, 2000

Suspension of action may by an APPLICANT on petition if [1.103(a)]

1) Good and sufficient cause
2) Applicant must specify time of requested suspension (not to exceed 6 months)
3) must pay fee (unless PTO's fault)
4) no response can be due from applicant (i.e., no outstanding Office Actions)

Suspension of action may by an APPLICANT on petition if [1.103(c)]

1) filed along with a request for continued examination RCE
2) must specify time of requested suspension (3 months)
3) fee

Swearing back RULE

Rule 1.131

There are two distinct procedures for extending due dates (under what section?)

1.136 (a) automatic extensions

1.136 (b) extensions for cause

There is no unrestricted right to entry of amendments after final rejection unless what five conditions occur?

1) Amendment cancels claims or complies with objections as to form
2) Places case in condition for allowance or better form for appeal
3) Adopts suggestions by examiner
4) Period for reply cannot be extended more than 6 months from the date of the final action
5) If applicant replies within 2 months from date of mailing of final rejection, and the PTO does not issues an advisory action until after the end of the 3 month shortened period for reply, any extension fee will be calculated from the mailing date of the advisory action

Thus, if there is an appeal, what happens to the information that was not "entered" into the amendment?

The claims appealed are considered without the amendments which were sought in the non-entered response

To avoid an application becoming abandoned in response to a Final Rejection, 1 of 3 things must happen

1. a response must be filed for allowance
2. A notice of appeal must be filed
3. the examiner, either on his or her own initiative or in response to a request by the applicant, converts the action to a non-final one (CPA or RCE)

To be a 102 (a) prior act, the acts must be made by "another". What about 102 (b)?

The acts can be either of the inventor or another

To overcome a proper rejection under 35 USC 102 or 103,

an amendment can be made with further limitations, but there must be remarks which explain how each and every rejection and objection are overcome.

To revive an application as unavoidably abandoned:

- the required reply
- fee
- a showing that the entire delay was unavoidable
- any necessary terminal disclaimer/fee

To revive an application as unintentional revival:

- the required reply
- fee
- a statement that the entire delay was unintentional
- any necessary terminal disclaimer/fee

To test an objection

-ask for a reconsideration
- then, a petition filed to the commissioner.

To test a rejection

- ask for a reconsideration
- then appeal to the Board of Patent Appeals and Interferences

Two routes exist for reviving an application depending on whether the abandonment was

unavoidable OR unintentional.

An untimely response in prosecuting an application results in abandonment. What about reexamination?

A reexamination is NOT a patent application, and a reexamination request can neither be abandoned nor withdrawn.

What 6 applications is a RCE not available for?

1) Adding new matter to an application (must use a CIP for that)
2) Provisionals
3) Design applications
4) Patents under reexaminations (reissues are fine)
5) Patents and international application filed before June 8, 1995
6) Application after the filing of notice of appeal or civil suit unless appeal or suit is terminated while application is still pending

What about a response to a notice of missing parts?

Can be extended to 5 months as well.

What about in filing a second response or a Notice of Appeal after filing a first response to a Final Rejection?

This may require a further automatic extension of time.

What are the requirements to filed an RCE?

- a submission
- fee

prior to the earliest of
-the payment of the issue fee ( unless a 37 CFR 1.313 petition is granted)
- the filing of a court action (unless that action is terminated)

What does it mean when the question says the the rejection is "proper"

Means you cannot argue against it. You can however, amend the claims

What does RCE do?

1) PTO will withdraw the finality of any OA
2) Will be treated as request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision
3) If filed after a decision but before filing an appeal, it will serve to reopen prosecution. However, applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board should be removed

What does swearing back do?

If the applicant wishes to overcome a rejection based on prior art by establishing that the invention date is before the date of the prior art reference. This is done by submitted an affidavit evidence of the invention date.

What factors should be considered in whether a preliminary amendment "unduly interferes" with preparation of first OA?

1) nature of changes to claims or spec that would result from entry of amendment;
2)state of preparation of first OA as of date of receipt or pre. Amendment

See more

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