How does copying patent claims affect the periods for reply in a patent application?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When claims are copied from a patent into an application with an unanswered rejection of record, it creates a situation with two different periods for reply. According to MPEP 710.04(a):

“Where, in an application in which there is an unanswered rejection of record, claims are copied from a patent and all of these claims are rejected there results a situation where two different periods for reply are running against the application.”

In this scenario:

• The first period is the regular statutory period of the unanswered rejection of record.
• The second period is the limited period set for reply to the rejection of the copied claims (either first or final).
• The controlling date for the statutory period is the date of the last unanswered Office action on the claims other than the copied patent claims.