37 CFR § 1.129 — Transitional procedures for limited examination (MPEP Index) – BlueIron IP
37 CFR § 1.129 Transitional procedures for limited examination
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.129, including 57 rules 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.
Summary
37 CFR 1.129 provides specialized examination procedures for patent applications pending for 3 years or longer as of June 8, 1995, allowing flexible handling of multiple independent and distinct inventions.
What this section covers
- Special examination rules for patent applications pending for 3 years or longer as of June 8, 1995.
- Unique procedural considerations for examining multiple independent and distinct inventions in older applications.
Key obligations
- Comply with specific examination guidelines for applications filed before the June 8, 1995 reference date.
- Follow prescribed procedures for handling multiple invention claims in transitional applications.
Conditions and exceptions
- Understand special fee considerations for transitional examination procedures.
Practice notes
- Carefully review application filing dates to determine eligibility for transitional examination procedures.
- Be prepared for potential unique examination approaches for older pending applications.
Official MPEP § 1.129 — Transitional procedures for limited examination
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.129 Transitional procedures for limited examination after final rejection and restriction practice.
- (a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120 , 121 and 365(c) , is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r) . If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r) . Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116 . A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
- (b)
- (1) In an application, other than for reissue
or a design patent, that has been pending for at least three
years as of June 8, 1995; taking into account any reference
made in the application to any earlier filed application
under
35 U.S.C.
120
,
121
and
365(c)
, no requirement for restriction
or for the filing of divisional applications shall be made or
maintained in the application after June 8, 1995, except
where:
- (i) The requirement was first made in the application or any earlier filed application under 35 U.S.C. 120 , 121 , and 365(c) prior to April 8, 1995;
- (ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
- (iii) The required fee for examination of each additional invention was not paid.
- (2) If the application contains more than one
independent and distinct invention and a requirement for
restriction or for the filing of divisional applications
cannot be made or maintained pursuant to this paragraph,
applicant will be so notified and given a time period to:
- (i) Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
- (ii) Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
- (iii) File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
- (3) The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b) . An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121 .
- (1) In an application, other than for reissue
or a design patent, that has been pending for at least three
years as of June 8, 1995; taking into account any reference
made in the application to any earlier filed application
under
35 U.S.C.
120
,
121
and
365(c)
, no requirement for restriction
or for the filing of divisional applications shall be made or
maintained in the application after June 8, 1995, except
where:
- (c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]
- Abandonment
- Appeals
- Appeal Notice
- Design Patents
- Design Priority Benefit
- Examination Procedure
- Examiner Action
-
- Form Paragraphs
-
- Final Rejection
- After Final Practice
- Rce Practice
- Rejection Of Claims
- Fees
-
-
- Patent Term
- Term Basics
- Pct
- Pct Filing
- Reissue
- Reissue Amendments
- Amendment No New Matter
-
- Divisional Applications
- Election Requirement
-
- Section 112
- Section 112A
- New Matter
| MPEP Section | Rules |
|---|---|
| MPEP § 1002.02(c) | |
| MPEP § 706.07(g) | |
| MPEP § 711.03(c) | |
| MPEP § 803.03 |