210 terms

MPEP 700 Part 1

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.
Is it true that in responding to any action, each and every rejection and objection must be addressed?
Yes! Otherwise, the response is incomplete.
The written refusal to grant claims because the subject matter as claimed is considered unpatentable is a
If the form of the claim, spec, or drawing (as distinguished from its substance) is improper, an
objection is made
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
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 101
35 USC 101 (patentable subject matter, lack of utility)
Most rejections are based on 35 USC 112 second para
35 USC 112 second para (particularly pointing out and distinctly claiming.
Can you appeal a restriction requirement?
No, after asking for a reconsideration by examiner, it must be petitioned to the Commissioner.
In an official action, an examiner can do three things:

If rejection is based on prior art...
prior art is the set of circumstances set forth in 35 USC 102 ONLY.
What Rule is swearing back?
37 CFR 1.131
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.
When swearing back, do you handle the claims separately?
Yes! Handle on a claim by claim basis because various claims have different dates of invention.
What is an anticipation?
An anticipation is a reference or set of facts which teaches every aspect of the claimed invention either directly or indirectly.
When responding to a 35 USC 102 rejection, you can only say that the examiner was wrong only is two ways:
1. The claim is entitled to an earlier date.
2. The prior art does not actually teach each and every element and limitation of the invention.
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.
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
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
What is a big difference between the acts and the documents which restrict obtaining a patent?
The acts have to be done in the US. The documents can be from anywhere!
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
What is the purpose of these dates?
To establish the applicants own right to a patent, and also move back the date of the applicant invention as prior art under 35 USC 102 (g) during an interference preceding.
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
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
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
Is offering the application or the patent rights prior art?
No, because it is not officially an "offer for sale" under 102 (b)
Is knowledge by the public considered "use" by the public under 102 (b)?
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.
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.
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
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
When there is no common inventor, can the patent office do this?
No, because that would violate the law requiring applications to be maintained in confidence.
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)
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.
Where is an exception to 35 USC 102 (e) (f) and (g) described:
third paragraph of 35 USC 103
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.
103 stuff skipped.
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.
If new limitations are added through amendment (but were in the original spec) does a supplemental oath or declaration required?
Patentable subject matter is defined in 35 USC 101 as any new and useful:
1. process
2. machine
3. manufacture
4. composition of matter
Which categories are not patentable?
- scientific principles and mathematical discoveries
- atomic weapons
- devices useful for only illegal purposes
- a method of doing business
- thing which are naturally occurring
- a method which is purely mental
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.
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)
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.
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
Any second or Final Rejection can be appealed but no first action can be appealed except in a
continuation application
In a continuation application, the first action can be made final IF
the rejection is the same as made in the parent
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.
What is an Advisory Action?
sent in response to an After Final Amendment that was filed by the applicant within two months.
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
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 is a submission?
If a reply to an action is outstanding, the submission must meet reply requirements (37 CFR 1.111). Otherwise, the submission may be
- an IDS
- an amendment
- new arguments
- or new evidence
Which statute governs RCE?
35 USC 132 (b)
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
Applications filed on or after August 25th, 2006
an applicant may be granted accelerated examination status.
Skipping 700-42 to 700-45.
How can you get a suspension of action?
with good and sufficient cause and with fee

can suspend prosecution for 6 months
Can you petition for suspension of action while there is an action outstanding?
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)
There are two distinct procedures for extending due dates (under what section?)
1.136 (a) automatic extensions

1.136 (b) extensions for cause
Resort to extensions for cause can only be done when
the automatic extensions are used up.
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!
What is the statutory time limit to respond to Office Actions? And can it be extended?
6 months and NO! A response to every Office Action MUST be filed within six months to avoid abandonment.
What is the deadline for filing an appeal brief?
Two months but this is not statutory; therefore, it can be extended to 5 months
What about a response to a notice of missing parts?
Can be extended to 5 months as well.
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
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.
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
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
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
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 an extension for cause be obtained retroactively?
NO! Must be filed in advance of the established due date.
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 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 is the "two month rule"
If a response to a Final Rejection is filed within two months from the mailing date AND the Office does not mail an Advisory Action until after the end of the three month period set for response. In that instance, the date before which action must be taken to avoid abandonment is automatically extended until the date the Office mails the Advisory Action or the six month period expires, whichever happens first.
Can you obtain an extension of time to pay the issue fee?
No but you can pay late upon proper showing (unavoidable, unintentional)
When obtaining an extension of time in order to file a continuation and have the parent and continuation copending, is response to the outstanding action necessary?
When an application is filed with missing parts, what happens?
Missing parts: oath/declaration, translation, filing fee

the applicant has two months from the filing date (if no correspondence address is included), two month from the date the Notice of Missing Part is mailed, to file the required paper. The deadline can be extended automatically up to five month. THERE IS NO SIX MONTH RULE.
Do small entities get a discount on extension fees?
yes, 50%
The deadline for filing an Appeal Brief is calculated from:
the date the Notice of Appeal is actually received by the Patent Office.
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
What is an examiners amendment?
After final rejection or after the applicant has filed a response to a non-official action, the examiner can, if authorized by agent, cause amendments to be made which will place the application in condition for allowance.
After a First Official Action, the ball is returned to the Examiner, so is an extension required if Examiner amends?
After Final Rejection, what is an Examiners Answer treated like?
Like an amendment from the applicant so extensions are necessary.
Filing a response to a Final Rejection in a re-examination automatically extends the deadline for response by how long?
What is the deadline on appeals?
What is a revival?
Bringing an abandoned application back to life.
Two routes exist for reviving an application depending on whether the abandonment was
unavoidable OR unintentional.
Whether unavoidable or unintentional, what is required for revival?
-a proposed response when an action was outstanding as the time of abandonment or the filing of a continuation
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
What is a terminal disclaimer?
Terminal disclaimers are required whenever the term of the patent is calculated from the issue date and not the filing date. These are all design patents, utility applications issuing from application filed before June 8, 1995. and plant patents issuing from applications filed before June 8, 1995.
Any request for reconsideration of a decision on a revival petition must be filed:
within two months from the date of the decision
Provisional applications can still be revived BUT
still expire at 12 months.
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.
Is an interview before filing permitted?
An interview after first action is a matter of
Interviews after an Appeal brief
are normally not granted.
Can interviews be held without obtaining extensions in time?
What is an amendment?
Any change which is made in the specification, claims, or drawings after or at the same time the application is filed.
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.
Drawings may be amended by:
submitted a "clean" version of the drawing to be amended. A "marked-up" version may optionally submitted
How can you respond to an Official Action?
By making an amendment or if no changes are made, then Request for Reconsideration
Can amendments or briefs be amended?
Can a preliminary amendment be submitted with an application?
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.
What is a preliminary amendment?
One made after, or at the time of filing, but before an action is issued.
Why might a preliminary amendment be refused entry?
If they unduly interfere with the preparation of an Office Action and were not filed within three months of filing date (this period is not extendable)
What is a supplemental reply?
A reply filed in follow up to an initially filed reply
When will a supplemental reply be considered as a matter of right?
- cancellation of claims
- adoption of Examiner suggestions
- placing application in condition for allowance
- replying of office requirement made after First reply
- correct informalities
- simplify issues on Appeal
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.
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.
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.
If a claim is amended, you need status indicators in front. Exclusive:
- cancelled
- previously presented
- withdrawn
- currently amended
- original
- not entered
- new
Are amendments after allowance a matter of right?
Which rule deals with amendments after allowance?
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.
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.
What happens in the amendments after allowance are refused?
Then the only option is to file a continuation and make the amendments (preferably in a Preliminary Amendment)
Are amendments allowed after an issue fee has been paid?
No, except in conjunctions with a withdrawal from issue. 37 CFR 1.313
What is swearing back?
establishing a date of invention to remove prior art arising under 102(a) and 102(e) BUT NOT 102(b)
You can swear back by submission of an affidavit or declaration an earlier date of invention based upon:
- an actual reduction to practice OR
- conception and diligence to actual reduction to practice
"discloses but does not claim" can be sworn back BUT "claims the same invention"...
that CANNOT be sworn back.
Swearing back RULE
Rule 1.131
Affidavit Practice Under CFR
CFR 1.131 and 1.132
What is a secondary consideration?
describes objective indications that the invention is not obvious. These are indications that the real world puts a high value on the invention, and include unexpected results, commercial success, failure of others, copying by others, licensing, and skepticism of experts.
What is Rule 131 used for? Rule 132?
131: used to swear back or antedate
132: used to submit facts to rebut prima facie showing of obviousness, to establish utility or to establish enablement
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
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.
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.
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.
Can Public Use Proceedings be requested for reexaminations?

but yes for reissue application
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
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.
What is the proper response to a rejection?
What is the proper response to objection?
Petition to director
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).
When are foreign licenses obtained
Licenses are obtained automatically 6 months after the filing date. They can also be obtained retroactively with a petition (countries filed, dates, not secret, license was diligently sought, filing was in error w/o deceptive intent) and fee.
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.
When can a final rejection take place?
A final rejection can be the first action in a continuing or substitute application, if all claims are to the same invention as the parent application and could have been finally rejected in parent.
When is a final rejection improper?
A final rejection is not proper if it is:
1) the first office action in a CIP at least one claim includes subject matter not present in parent;
2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter
An applicant can appeal after two or more actions on the merits, and after any final rejection
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)
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
Petitions to make special
Petitions to make special need to be in writing and identify the application by number and filing date
Which petitions to make special DO NOT require a fee?
1) Applicant's health (w/ doctor's certificate)
2) Applicant is 65 or over
3) invention will materially enhance the quality of the environment
4) invention will materially contribute to energy resource development or conservation
Which petitions do require a fee?
1) safety of recombinant DNA research
2) superconductivity
3) HIV/AIDS or cancer
4) counter-terrorism
5) biotechnology (small entities)
6) Prospective manufacture
7) Actual infringement
8) Any new application
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
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
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
Which three entities can suspension of action be performed by?
1) Applicant
2) the PTO
3) overlapping applications by same applicant or assignee
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 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 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
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
What is the max period suspension of action by PTO
The max period is 6 MONTHS; office will notify applicant
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
Period for Reply
1) Due dates are calculated from PTO mailing date
2) EOT cannot exceed the 6 month statutory period for Office actions
What happens if a timely reply is not filed?
It is considered abandoned
How will authorization to charge all required fees be to a deposit account be treated?
As a constructive petition for extension of time
Notice of Allowability
time is not extendable for: submitting an oath or declaration and submitting formal drawings
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)
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 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
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
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.
What is the limit for a Request for Continued Examination (RCE)?
No limit as long as done before aboandoned
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 is needed to get RCE?
1) Prosecution must be CLOSED
2) Applicant must request RCE by filing submission and fee PRIOR TO the earliest of payment, abandonment, and filing notice of appeal
3) RCE is entitled to benefit of a certificate of mailing (CPAs are not)
4) A request for a CPA filed in an app having a filing date on or after May 29, 2000 for which CPA practice is not available (utility) will be treated as RCE
When is an application recognized as being closed?
1) application is under appeal
2) last office action is final
3) notice of allowance
4) Another action that closes prosecution
What submissions are allowed with a RCE?
1) IDS
2) amendments
3) arguments in a previously filed appeal or reply brief submitted in reply to a final rejection
What submissions are not allowed with a RCE?
1) Appeal briefs under section 1.192
2) Reply briefs under 193(b)
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.
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
Abandonment of an application
1) Failure to Reply
2) Express Abandonment
3) Termination of Proceedings
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)
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.
Express abandonment after receipt of Notice of Allowance
Applicant should submit declaration along with a petition to withdraw the application from issue and fee.
Who can perform express abandonment?
1) Applicant with assignee's consent
2) Owner/Assignee
3) Attorney/Agent of record
4) Attorney/Agent not of record, who acts in a representative capacity when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application
What three ways can a proceeding by terminated?
1) Issue fee is not paid when due (can be revived if fee is accepted with petition)
2) Application in a interference where all claims corresponding to the count lose
3) After decision by Board or court
Revival of Abandoned Applications
Can occur...sometimes
Where can interviews occur?
1) Interviews in conference room
2) Videoconferencing are okay (amended)
When do interviews occur?
Interviews do not occur before a first office action unless it's a continuation (or CPA) or substitute application
2) No right to an interview after a final rejection
3) Not normally allowed after filing an appeal brief
What happens after an interview?
Applicant must be ensure the substance of the interview is made of record in the app--often the examined agrees to do it. Full response to OA is still required.
What if examiner thinks applicant's statement is not complete?
Examiner may give the applicant 1 month time period to complete the reply
Who can interview?
1) Inventor/applicant
2) Registered attorney/agent: of record, or using his file, or known by examiner to be local representative of record attorney
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
Who can properly sign a response?
1) Applicant(s)
2) Owner(s)
3) Attorney of record
4) Attorney not of record but acting in representative capacity
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
When is a preliminary amendment received by PTO?
received by PTO before first OA is mailed
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
When should preliminary amendment be filed?
1) Should be filed after app gets app number and filing date if not filed with original app
2) Should be filed with original app if claims are canceled to reduce the filing fee
3) For CPA's, preliminary amendments must be filed on the filing date of the CPA
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
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
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
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
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
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
What is the difference in the treatment of a supplemental oath or declaration and a supplemental reissue oath or declaration?
A supplemental oath or declaration is NOT treated as an amendment, but a supplemental reissue oath or decl. is so treated
What is the purpose of an affidavit or declaration of prior invention?
Purpose is to prove that applicant was the first inventor when faced with a reference dated earlier than the application filing date