What constitutes ‘actions by the applicant’ under 37 CFR 1.129(b)(1)?
Under 37 CFR 1.129(b)(1), certain actions by the applicant can prevent the application of transitional application provisions. The MPEP provides examples of what constitute “actions by the applicant”:
- Abandoning the application and continuing to refile it such that no Office action could be issued
- Requesting suspension of prosecution under 37 CFR 1.103(a) such that no Office action could be issued
- Delaying the presentation of claims to multiple independent and distinct inventions in the present or parent application
- Combining several applications, each claiming a different independent and distinct invention, into one large “continuing” application, but delaying its filing
The MPEP notes, “In examples (A) and (B), the fact that the present or parent application claiming independent and distinct inventions was on an examiner’s docket for at least 3 months prior to abandonment or suspension, or in examples (C) and (D), the fact that the amendment claiming independent and distinct inventions was first filed, or the continuing application first claiming the additional independent and distinct inventions was on an examiner’s docket, at least 3 months prior to April 8, 1995, is prima facie evidence that applicant’s actions did not prevent the Office from making a requirement for restriction with respect to those independent and distinct inventions prior to April 8, 1995.“
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