Question 1

When should I inquire about the status of my amended patent application?

Accepted Answer

For amended patent applications, it's important to understand the expected timelines and when it's appropriate to make a status inquiry:

Examiners are expected to act on amended applications within two months of receiving them.
A status inquiry is generally not necessary until 5-6 months have passed without a response from the USPTO.
If six months elapse without a response, you should inquire to avoid potential abandonment.

The MPEP advises: Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. (MPEP 203.08)

It further states: However, in the event that a six month period has elapsed, and no response from the Office is received, applicant should inquire as to the status of the application to avoid potential abandonment.

For making inquiries, the MPEP recommends: Applicants are encouraged to use Patent Center or Private PAIR to make status inquiries.

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Question 2

When does an application's status as 'allowed' begin and end?

Accepted Answer

The status of an application as 'allowed' has a specific timeframe. According to the MPEP:

"Its status as an 'allowed' application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue ( 37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 )."

In other words, the 'allowed' status begins when the notice of allowance is sent and typically ends when the patent is issued. However, this status can be terminated if the application is withdrawn from issue or becomes abandoned due to non-payment of required fees.

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Question 3

What is the impact of filing a Continued Prosecution Application (CPA) on abandonment?

Accepted Answer

Filing a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) is considered a special situation involving abandonment. According to MPEP 711.02(b):

Where a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed.

The MPEP directs readers to §§ 201.06(d) and 711.01 for more information on this topic. Generally, filing a CPA results in the abandonment of the prior application as of the filing date of the CPA. It's important for applicants to understand that while the CPA continues examination, it technically creates a new application, and the previous one is considered abandoned.

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Question 4

What is the difference between abandonment of an invention and abandonment of a patent application?

Accepted Answer

The MPEP 711 makes an important distinction between abandonment of an invention and abandonment of a patent application. As stated in the MPEP:

"Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent."

Here's the difference:

Abandonment of an invention: This refers to actions that may cause an inventor to lose their right to patent an invention, such as public disclosure or sale beyond the grace period.
Abandonment of a patent application: This refers to the procedural abandonment of a specific patent application, either through failure to respond to USPTO communications or through express abandonment. It doesn't necessarily mean the invention itself is abandoned.

The MPEP 711 focuses on the procedural aspects of application abandonment, not on abandonment of the underlying invention.

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Question 5

What is abandonment of a patent application?

Accepted Answer

Abandonment of a patent application refers to the removal of an application from the Office docket of pending applications. According to MPEP 711, abandonment can occur in two ways:

Under 37 CFR 1.135, for failure to reply within the specified time period
Under 37 CFR 1.138, through express abandonment

It's important to note that this refers to abandonment of the application, not the invention itself. As stated in MPEP 711, "Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent."

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Question 6

What happens to the prior application when a CPA is filed?

Accepted Answer

What happens to the prior application when a CPA is filed?

When a Continued Prosecution Application (CPA) is filed, the prior application is automatically abandoned. According to MPEP 201.06(d):

The filing of a CPA is not a filing of a new application. Rather, a CPA is a continuation of the prior application and maintains the same application number as the prior application, i.e., a "streeting" of the prior application.

This means that:

The prior application is considered abandoned as of the filing date of the CPA.
The CPA is not assigned a new application number but continues under the number of the prior application.
All correspondence for the CPA should refer to the original application number.

It's important to note that this automatic abandonment of the prior application is a key feature of CPA practice, distinguishing it from other types of continuing applications.

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Question 7

What happens if the required translation or statement is missing for a non-English provisional application?

Accepted Answer

If the required translation or statement is missing for a non-English provisional application, the following consequences apply:

The USPTO will issue a notice stating that the required documents are missing.
The applicant must supply the missing translation and/or statement in the provisional application.
The applicant must provide confirmation in the present application that the translation and statement were filed in the provisional application.
If these requirements are not met within the time period set by the USPTO, the present application will be abandoned.

As stated in the MPEP, If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.

For more information on application abandonment, visit: application abandonment.

For more information on missing documents, visit: missing documents.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

Question 8

What happens if the required translation and statement are not filed for a non-English provisional application?

Accepted Answer

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

"If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned."

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It's crucial to comply with these requirements within the specified time frame to maintain your application's active status.

For more information on application abandonment, visit: application abandonment.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Question 9

What happens if the basic national fee is not paid on time for US national stage entry?

Accepted Answer

What happens if the basic national fee is not paid on time for US national stage entry?

If the basic national fee is not paid on time for US national stage entry, the application will be considered abandoned. However, the MPEP provides guidance on potential remedies:

If the basic national fee is not paid on time, the Designated (or Elected) Office will declare that the application is considered withdrawn under PCT Article 24(1) or 39(2). However, if the basic national fee is paid later, accompanied by a petition for revival, the Designated (or Elected) Office may excuse the late payment of the basic national fee.

This means that while timely payment is crucial, there may be options to revive the application if the fee is paid late. Applicants should be aware that such petitions typically involve additional fees and are subject to specific requirements and time limits.

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Question 10

What happens if I file a provisional application and don't file a nonprovisional within 12 months?

Accepted Answer

What happens if I file a provisional application and don't file a nonprovisional within 12 months?

If you file a provisional application but do not file a corresponding nonprovisional application within 12 months, the provisional application will automatically be abandoned. As stated in the MPEP 201.04: "A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter." This means you lose the benefit of the provisional filing date and cannot claim priority to it in future applications. To maintain the priority benefit, you must file a nonprovisional application claiming benefit of the provisional within the 12-month period.

For more information on application abandonment, visit: application abandonment.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

Question 11

What happens if I don't provide the required translation for a non-English provisional application?

Accepted Answer

If you fail to provide the required English translation and statement of accuracy for a non-English provisional application, your current application may be abandoned. The MPEP states:

"If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78."

This means you must either provide the required documents or withdraw the benefit claim to avoid abandonment of your application.

For more information on application abandonment, visit: application abandonment.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

Question 12

What happens if I don't pay the issue fee for my patent application?

Accepted Answer

If you don't pay the issue fee for your patent application, it will be considered abandoned. According to MPEP 203.05, one of the ways an application can become abandoned is:

"for failure to pay the issue fee"

The MPEP refers to sections 711 to 711.05 for more details on this topic. It's crucial to pay the issue fee on time to prevent your application from being abandoned after all the effort put into the patent prosecution process.

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Question 13

What happens if drawings are not timely filed in response to a USPTO notice?

Accepted Answer

If drawings are not timely filed in response to a notice from the USPTO or a letter from the examiner requiring a drawing, the consequences are severe:

The application becomes abandoned for failure to reply.

The MPEP clearly states: If a drawing is not timely received in reply to a notice from the Office or a letter from the examiner who requires a drawing, the application becomes abandoned for failure to reply.

This underscores the importance of promptly responding to USPTO notices and examiner requirements regarding drawings. For information on handling replacement drawings, refer to MPEP § 608.02(h).

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Question 14

What happens if an applicant submits a non-responsive reply to an Office action?

Accepted Answer

If an applicant submits a non-responsive reply to an Office action, the examiner may take specific actions. According to MPEP 714.02:

'The examiner should not simply return or mail the papers to applicants as nonresponsive.'

Instead, the following steps may occur:

The examiner may issue a notice of non-responsive amendment
The applicant will be given a time period (usually 1 month or 30 days) to supply a complete reply
If no proper reply is received within the time period, the application may be abandoned
In some cases, the examiner may contact the applicant to clarify the response or request a supplemental reply

It's crucial for applicants to ensure their replies are fully responsive to avoid delays or potential abandonment of their application.

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Question 15

What happens if an applicant fails to submit required application components within the specified time period?

Accepted Answer

If an applicant fails to submit required application components within the specified time period, the following consequences may occur:

The application may be considered abandoned.
If abandoned, the application will be treated as though it had never been filed.
The applicant may lose the benefit of the original filing date.

The MPEP states: Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.

However, it may be possible to revive an abandoned application under certain circumstances:

The applicant can file a petition to revive under 37 CFR 1.137.
The petition must be accompanied by the required reply, the petition fee, and a statement that the entire delay was unintentional.

It's crucial to respond to any notices from the USPTO promptly and to submit all required components within the specified timeframes to avoid these issues.

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Question 16

What happens if an applicant fails to respond to a non-responsive amendment notice?

Accepted Answer

What happens if an applicant fails to respond to a non-responsive amendment notice?

If an applicant fails to respond to a notice of non-responsive amendment within the given two-month period, the consequences can be severe. According to MPEP 714.03:

"Failure to take any action within the TWO-MONTH period will result in abandonment of the application."

This means that:

The application will be considered abandoned if no response is received
The applicant loses the right to continue prosecution of the application
To revive the application, the applicant would need to file a petition for revival, which may incur additional fees and delay

It's crucial for applicants to respond promptly to non-responsive amendment notices to avoid abandonment and maintain their patent rights. If unable to fully address the issues within the two-month period, applicants should consider filing an extension of time request or contacting the examiner for guidance.

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Question 17

What happens if an applicant fails to reply within the statutory period?

Accepted Answer

If an applicant fails to reply within the statutory period, the application becomes abandoned. According to MPEP 711.03(b):

An application becomes abandoned if applicant 'fails to reply' to an Office action within the fixed statutory period.

This means the application is no longer pending and will not be examined further unless revived.

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Question 18

What happens if a patent application is filed without a correspondence address?

Accepted Answer

If a patent application is filed without a correspondence address:

The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
The applicant has 2 months from the filing date to complete the application before it is abandoned.

According to MPEP 403: "If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. ... If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs."

Question 19

What happens if a nonprovisional patent application is filed without all required fees?

Accepted Answer

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the... required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))... In such cases, a notice is mailed by OPAP requiring the appropriate fees... accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

Question 20

What fees are required to maintain an allowed application's status?

Accepted Answer

To maintain an allowed application's status and proceed to patent issuance, certain fees must be paid. The MPEP mentions two specific fees:

Issue fee: This is the fee required for the USPTO to issue the patent.
Publication fee: If applicable, this fee covers the cost of publishing the patent application.

The MPEP states that an application becomes abandoned "for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 )." Therefore, timely payment of these fees is crucial to maintain the allowed status and proceed to patent issuance.

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Question 21

What can cause an allowed application to lose its status?

Accepted Answer

An allowed application can lose its status under certain circumstances. The MPEP outlines two main scenarios:

Withdrawal from issue: This is governed by 37 CFR 1.313. The applicant or the USPTO may initiate this process for various reasons, such as the need for further examination or the discovery of new prior art.
Abandonment due to non-payment: As stated in the MPEP, an application becomes abandoned "for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 )."

In either case, the application loses its 'allowed' status and may require further action or payments to proceed towards patent issuance.

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Question 22

What are the two main ways a patent application can be abandoned?

Accepted Answer

According to MPEP 711, there are two primary ways a patent application can be abandoned:

Failure to reply within the time period: This is governed by 37 CFR 1.135. If an applicant fails to respond to an Office action or other USPTO communication within the specified timeframe, the application may be considered abandoned.
Express abandonment: This is covered by 37 CFR 1.138. An applicant can voluntarily abandon their application by filing an express abandonment request.

The MPEP states: "An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through:" followed by these two methods.

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Question 23

What are the potential consequences of relying on late amendments in patent prosecution?

Accepted Answer

Relying on late amendments in patent prosecution can have several negative consequences:

Application abandonment: As stated in MPEP 714.17, late amendments are not entered, potentially leading to abandonment.
Loss of patent rights: Abandonment can result in the loss of patent rights if not addressed promptly.
Increased costs: Reviving an abandoned application or filing an RCE can be more expensive than timely prosecution.
Delayed issuance: Late amendments and subsequent revival procedures can significantly delay patent issuance.
Intervening prior art: Delays may allow for new prior art to emerge, potentially affecting patentability.
Reduced patent term: Certain types of patent term adjustments may be affected by delays caused by late amendments.

To avoid these issues, it's crucial to respond to Office actions within the specified time frame or request extensions when necessary. If a late amendment is unavoidable, promptly consider options like petitions to revive or RCEs to mitigate potential negative impacts.

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Question 24

What are the potential consequences of attaching an oath or declaration to a cover letter referencing the wrong application?

Accepted Answer

The MPEP 602.08(c) warns about a serious potential consequence of misidentifying an application:

Further an oath or declaration attached to a cover letter referencing an incorrect application may not become associated with the correct application and, therefore, could result in the abandonment of the correct application.

This means that if you submit an oath or declaration with a cover letter that references the wrong application number or details, it might not be properly associated with the intended application. As a result, the correct application could be considered abandoned due to lack of a proper oath or declaration.

To avoid this issue, it's crucial to double-check all application identifiers and ensure that cover letters, oaths, and declarations accurately reference the intended application. If you discover such an error, you should contact the USPTO promptly to rectify the situation and prevent unintended abandonment.

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Question 25

What are the consequences of submitting a non-responsive patent amendment?

Accepted Answer

Submitting a non-responsive patent amendment can lead to delays in the examination process and potential abandonment of your application if not addressed promptly. According to MPEP 714.04:

An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired

The consequences of a non-responsive amendment may include:

The examiner setting a new time period for a proper reply
Potential abandonment of the application if a proper response is not filed within the set time period
Delays in the overall examination process

To avoid these issues, always ensure your amendments clearly address all rejections and objections while pointing out the patentable novelty of your claims.

To learn more:

MPEP 714.04

Question 26

What are the consequences of omitting an inventor's oath or declaration in a nonprovisional application?

Accepted Answer

What are the consequences of omitting an inventor's oath or declaration in a nonprovisional application?

Omitting an inventor's oath or declaration in a nonprovisional application can have significant consequences. According to MPEP 601.01(a):

If the application is filed without an inventor's oath or declaration by any inventor, the Office will send a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing oath or declaration and to pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment.

The key points to note are:

The USPTO will send a Notice to File Missing Parts.
A time period (usually two months) is given to file the missing oath or declaration.
A surcharge under 37 CFR 1.16(f) must be paid.
Failure to comply may result in abandonment of the application.

It's important to note that while the application can be filed without the oath or declaration, it must be submitted before the application is allowed to avoid potential issues.

For more information, refer to MPEP 601.01(a) and MPEP 602 on inventor's oath or declaration.

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Question 27

What are the consequences of not submitting an inventor's oath or declaration before the issue fee is paid?

Accepted Answer

Failing to submit an inventor's oath or declaration before the issue fee is paid can have serious consequences for a patent application. According to MPEP 602.01(a):

If an application does not include an oath or declaration by the inventor or a substitute statement, the Office will issue a notice requiring the applicant to file the inventor's oath or declaration no later than the date on which the issue fee is paid.

The consequences of not complying with this requirement include:

Application Abandonment: If the oath or declaration is not submitted by the time the issue fee is paid, the application will be regarded as abandoned.
Additional Fees: To revive an abandoned application, the applicant must pay additional fees and file a petition for revival.
Delay in Patent Grant: The patent will not be granted until the proper oath or declaration is submitted and the application is revived.
Potential Loss of Patent Rights: In extreme cases, failure to timely submit the oath or declaration could result in a loss of patent rights if statutory deadlines are missed.

To avoid these issues, applicants should ensure that a proper inventor's oath or declaration is submitted well before the issue fee payment deadline.

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Question 28

What are the consequences of not replying to a Requirement for Information?

Accepted Answer

What are the consequences of not replying to a Requirement for Information?

Failing to reply to a Requirement for Information can have serious consequences for a patent application. According to MPEP 704.14(a):

'The consequences of failure to reply are governed by 37 CFR 1.135.'

These consequences may include:

The application being deemed abandoned
Termination of proceedings
Potential loss of patent rights

It's crucial for applicants to understand that a Requirement for Information is an official USPTO action that requires a timely and complete response. If an applicant cannot provide the requested information, they should explain why it is unavailable or submit a good faith attempt to gather the information. Ignoring the requirement or providing an incomplete response can jeopardize the patent application.

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Question 29

What are the consequences of not addressing drawing objections?

Accepted Answer

Failing to address drawing objections can have serious consequences for a patent application. According to MPEP 608.02(e), the primary consequence is the potential abandonment of the application. The MPEP states:

Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application.

Additionally, it's important to note that drawing objections cannot be held in abeyance. The MPEP clarifies:

Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action.

This means that failing to address drawing objections can prevent the application from progressing, potentially leading to delays or even abandonment.

To learn more:

patent drawings
drawing objections
application abandonment
patent prosecution

Question 30

What are the consequences of failing to respond to an OPAP notice regarding missing drawings?

Accepted Answer

Failing to respond to an Office of Patent Application Processing (OPAP) notice regarding missing drawings can have serious consequences for a patent application. The outcomes differ depending on whether the application is nonprovisional or provisional:

For Nonprovisional Applications:

The MPEP clearly states: Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application.

This means:

The application will be considered abandoned
The applicant will lose their filing date
To continue pursuing patent protection, the applicant would need to file a new application or petition to revive the abandoned application

For Provisional Applications:

The consequences are less severe for provisional applications. The MPEP notes: For provisional applications in which applicant accepts the application as deposited by failing to timely file a petition in response to an OPAP notice regarding omitted items, if the provisional application is complete under 37 CFR 1.51(c), it will be held in the Office's Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period.

This means:

The provisional application remains on file for its 12-month pendency period
It can still serve as a priority document for a later-filed nonprovisional application
However, the missing drawings will not be part of the application's disclosure

It's crucial for applicants to carefully review and respond to any OPAP notices to avoid potential loss of rights or limited disclosure in their patent applications.

To learn more:

Question 31

What are the consequences of failing to respond to a 37 CFR 1.251 notice?

Accepted Answer

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): "With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application."
For granted patents: While the patent won't expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: "While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent)."

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.

Question 32

What are the consequences of copying claims from a patent without USPTO suggestion?

Accepted Answer

Copying claims from a patent without suggestion from the USPTO does not constitute a valid reply to the last Office action and may lead to abandonment of the application. According to MPEP 711.02(b):

Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the last Office action and will not save the application from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action.

This means that applicants should be cautious about copying claims without proper guidance, as it may not be considered a sufficient response to prevent abandonment.

To learn more:

Question 33

How long do applicants have to respond after being notified of a patent practitioner's death?

Accepted Answer

According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner's death, the applicant is given a specific timeframe to respond. The MPEP states:

"The period for reply to such a notice is normally set at 3 months."

During this 3-month period, the applicant must take one of the following actions:

Appoint a new registered patent practitioner
File a change of correspondence address

It's crucial to respond within this timeframe to prevent the application from being deemed abandoned.

For more information on application abandonment, visit: application abandonment.

For more information on patent practitioner death, visit: patent practitioner death.

For more information on response time, visit: response time.

For more information on USPTO notification, visit: USPTO notification.

Question 34

How does the USPTO handle applications abandoned due to failure to timely reply?

Accepted Answer

The USPTO has specific procedures for handling applications abandoned due to failure to timely reply. According to MPEP 711.04(c):

Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee.

This means that if an applicant believes their application was incorrectly deemed abandoned, they can file a petition to contest the decision without incurring additional fees. It's important for applicants to understand this option if they disagree with an abandonment decision.

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Question 35

How does filing a CPA affect the prior application?

Accepted Answer

Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to the MPEP, A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. This means that when you file a CPA, the previous application is automatically abandoned in favor of the new CPA. The CPA will use the file wrapper and contents of the prior application, including the specification, drawings, and oath or declaration, and will be assigned the same application number as the prior application.

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Question 36

How can filing a Request for Continued Examination (RCE) lead to application abandonment?

Accepted Answer

Filing a Request for Continued Examination (RCE) can lead to application abandonment in several scenarios:

Appeals with no allowed claims: MPEP 711.02(b) states, 'Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission (37 CFR 1.114(d)) in the application.'
Improper RCE with outstanding final Office action: The MPEP notes, 'When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111.'
Improper RCE before issue fee payment: 'Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application.'

In all these cases, an improper RCE filing does not toll the time period for reply or fee payment, potentially resulting in abandonment. Applicants should ensure proper RCE filings to avoid unintentional abandonment.

To learn more:

Question 37

How can an application become abandoned through an appeal process?

Accepted Answer

An application can become abandoned through the appeal process in two main ways:

Withdrawal or failure to prosecute an appeal: According to MPEP 711.02(b), 'An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board.' For more details, refer to MPEP §§ 1215.01 to 1215.04.
Dismissal of an appeal: The MPEP states, 'An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board's decision.' This situation is further explained in MPEP §§ 1215.04 and 1216.01.

It's crucial for applicants to carefully manage their appeals and respond appropriately to avoid unintentional abandonment.

To learn more:

Patent Appeals
Application Abandonment
Patent Trial and Appeal Board
Court of Appeals for the Federal Circuit

Question 38

How are provisional patent applications handled when drawings are missing?

Accepted Answer

The handling of provisional patent applications with missing drawings differs from nonprovisional applications. For provisional applications:

The USPTO does not grant petitions under 37 CFR 1.182 to accept omitted drawings and accord a later filing date
Applicants are advised to file a new, complete provisional application instead
Upon receiving an OPAP notice about missing drawings, applicants have two options:

File a petition under 37 CFR 1.53(e) with evidence to establish prior receipt of the drawings
Accept the application as deposited by not responding to the notice

The MPEP states: The USPTO will not grant petitions under 37 CFR 1.182 to accept omitted drawing(s) and accord an application filing date as of the date of such submission in provisional applications. The applicant should simply file a new completed provisional application.

If the applicant doesn't respond to the OPAP notice and the provisional application is otherwise complete under 37 CFR 1.51(c), it will be held in the USPTO's Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period.

To learn more:

Question 39

Can a patent application be returned or withdrawn after filing?

Accepted Answer

Once a patent application is filed and given a filing date, it generally cannot be returned or withdrawn. According to MPEP 503:

"Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested."

This policy is in place to maintain the integrity of the filing process and prevent potential abuse. Applicants should be careful not to file applications that are not intended to be filed, such as duplicates of already filed applications.

Furthermore, the MPEP cites 37 CFR 1.26(a), which states that a change of purpose after payment of a fee, such as when a party desires to withdraw a patent application for which a fee was paid, does not entitle the party to a refund of such fee.

If an applicant realizes they have filed an application in error or no longer wish to pursue it, they may choose to abandon the application. However, the application will remain on file with the USPTO and any fees paid will not be refunded.

For more information on application abandonment, visit: application abandonment.

For more information on application return, visit: application return.

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (11)

When should I inquire about the status of my amended patent application?

When does an application’s status as ‘allowed’ begin and end?

What happens to the prior application when a CPA is filed?

What happens to the prior application when a CPA is filed?

What happens if the required translation or statement is missing for a non-English provisional application?

What happens if the required translation and statement are not filed for a non-English provisional application?

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

What happens if I don’t provide the required translation for a non-English provisional application?

What happens if I don’t pay the issue fee for my patent application?

What fees are required to maintain an allowed application’s status?

What can cause an allowed application to lose its status?

How does filing a CPA affect the prior application?

MPEP 201 - Types of Applications (1)

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (3)

What happens if the required translation or statement is missing for a non-English provisional application?

What happens if the required translation and statement are not filed for a non-English provisional application?

What happens if I don’t provide the required translation for a non-English provisional application?

MPEP 400 - Representative of Applicant or Owner (2)

What happens if a patent application is filed without a correspondence address?

How long do applicants have to respond after being notified of a patent practitioner’s death?

MPEP 403 - Correspondence — With Whom Held; Customer Number Practice (1)

What happens if a patent application is filed without a correspondence address?

MPEP 406 - Death of Patent Practitioner (1)

How long do applicants have to respond after being notified of a patent practitioner’s death?

MPEP 500 - Receipt and Handling of Mail and Papers (3)

What happens if a nonprovisional patent application is filed without all required fees?

What are the consequences of failing to respond to a 37 CFR 1.251 notice?

Can a patent application be returned or withdrawn after filing?

MPEP 503 - Application Number and Filing Receipt (1)

Can a patent application be returned or withdrawn after filing?

MPEP 506 - Completeness of Original Application (1)

What happens if a nonprovisional patent application is filed without all required fees?

MPEP 508 - Distribution (1)

What are the consequences of failing to respond to a 37 CFR 1.251 notice?

Patent Law (25)

When should I inquire about the status of my amended patent application?

When does an application’s status as ‘allowed’ begin and end?

What happens to the prior application when a CPA is filed?

What happens to the prior application when a CPA is filed?

What happens if the required translation or statement is missing for a non-English provisional application?

What happens if the required translation and statement are not filed for a non-English provisional application?

What happens if the basic national fee is not paid on time for US national stage entry?

What happens if the basic national fee is not paid on time for US national stage entry?

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

What happens if I don’t provide the required translation for a non-English provisional application?

What happens if I don’t pay the issue fee for my patent application?

What happens if drawings are not timely filed in response to a USPTO notice?

What happens if an applicant fails to submit required application components within the specified time period?

What happens if a patent application is filed without a correspondence address?

What happens if a nonprovisional patent application is filed without all required fees?

What fees are required to maintain an allowed application’s status?

What can cause an allowed application to lose its status?

What are the potential consequences of attaching an oath or declaration to a cover letter referencing the wrong application?

What are the consequences of omitting an inventor’s oath or declaration in a nonprovisional application?

What are the consequences of omitting an inventor’s oath or declaration in a nonprovisional application?

What are the consequences of not submitting an inventor’s oath or declaration before the issue fee is paid?

What are the consequences of not addressing drawing objections?

What are the consequences of failing to respond to an OPAP notice regarding missing drawings?

For Nonprovisional Applications:

For Provisional Applications:

What are the consequences of failing to respond to a 37 CFR 1.251 notice?

How long do applicants have to respond after being notified of a patent practitioner’s death?

How does filing a CPA affect the prior application?

How are provisional patent applications handled when drawings are missing?

Can a patent application be returned or withdrawn after filing?

Patent Procedure (25)

When should I inquire about the status of my amended patent application?

When does an application’s status as ‘allowed’ begin and end?

What happens to the prior application when a CPA is filed?

What happens to the prior application when a CPA is filed?

What happens if the required translation or statement is missing for a non-English provisional application?

What happens if the required translation and statement are not filed for a non-English provisional application?

What happens if the basic national fee is not paid on time for US national stage entry?

What happens if the basic national fee is not paid on time for US national stage entry?