How does one make a timely election to proceed under pre-AIA 35 U.S.C. 103(b)?

Making a timely election to proceed under pre-AIA 35 U.S.C. 103(b) is crucial for applicants seeking to benefit from this provision. The MPEP provides guidance on what is considered timely:

An election will normally be considered timely if it is made no later than the earlier of either the payment of the issue fee or the filing of an appeal brief in an application which contains a composition of matter claim which has not been rejected under pre-AIA 35 U.S.C. 102 or 103.

The election process involves:

• Submitting a petition under 37 CFR 1.182
• Establishing that all requirements of pre-AIA 35 U.S.C. 103(b) are satisfied
• In some cases, submitting an amendment to enter process claims corresponding to the composition of matter claim

It’s important to note that there are special provisions for applications pending on or after November 1, 1995, where the issue fee was paid prior to March 26, 1996.

To learn more:

• pre-AIA 35 U.S.C. 103(b)
• election
• patent procedure
• biotechnology patents