Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (5)
MPEP 203.02 defines a ‘rejected’ application as follows:
A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a ‘rejected’ application. Its status as a ‘rejected’ application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.
This status applies to applications that have received an Office action from the examiner but have not yet been responded to by the applicant.
A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.
MPEP 203.03 defines an ‘amended’ patent application as follows:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In simpler terms, an application becomes ‘amended’ when the applicant responds to an examiner’s Office action, whether by making changes to the application, arguing against the examiner’s rejections, or choosing between different inventions (election).
The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
MPEP 203.03 defines an ‘amended’ application as:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In essence, an application becomes ‘amended’ when the applicant responds to an examiner’s action, whether through election, traversal, or by submitting amendments to the application.
MPEP 203 - Status of Applications (4)
MPEP 203.02 defines a ‘rejected’ application as follows:
A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a ‘rejected’ application. Its status as a ‘rejected’ application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.
This status applies to applications that have received an Office action from the examiner but have not yet been responded to by the applicant.
A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.
MPEP 203.03 defines an ‘amended’ patent application as follows:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In simpler terms, an application becomes ‘amended’ when the applicant responds to an examiner’s Office action, whether by making changes to the application, arguing against the examiner’s rejections, or choosing between different inventions (election).
MPEP 203.03 defines an ‘amended’ application as:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In essence, an application becomes ‘amended’ when the applicant responds to an examiner’s action, whether through election, traversal, or by submitting amendments to the application.
MPEP 214-Formal Requirements of Claim for Foreign Priority (1)
The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
MPEP 400 - Representative of Applicant or Owner (1)
Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
MPEP 406 - Death of Patent Practitioner (1)
Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
MPEP 500 - Receipt and Handling of Mail and Papers (1)
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met:
- You must have a written authorization on file for Internet communication.
- The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web).
- The email must include all necessary information and attachments as required for the response.
MPEP 502.03 states: “Replies to Office actions may NOT be submitted by email unless specifically authorized.” This means that without proper authorization, email responses to Office actions will not be accepted.
It’s important to note that while email can be used, the USPTO recommends using EFS-Web for most communications, including responses to Office actions, as it provides a more secure and efficient method of submission.
To learn more:
Patent Law (9)
MPEP 203.02 defines a ‘rejected’ application as follows:
A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a ‘rejected’ application. Its status as a ‘rejected’ application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.
This status applies to applications that have received an Office action from the examiner but have not yet been responded to by the applicant.
If an applicant’s drawing corrections are rejected, they should carefully review the examiner’s comments in the Office action. According to MPEP 608.02(x):
“The applicant will be notified and informed of any required corrective action in the next Office action.”
Applicants should:
- Carefully read the examiner’s explanation for the rejection
- Address all issues raised by the examiner
- Ensure new submissions don’t introduce new matter
- Include all necessary corrections
- Consider consulting with a patent attorney or agent if the issues are complex
After addressing the examiner’s concerns, applicants can submit new drawing corrections for review in their response to the Office action.
To learn more:
To learn more:
A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.
Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
MPEP 203.03 defines an ‘amended’ patent application as follows:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In simpler terms, an application becomes ‘amended’ when the applicant responds to an examiner’s Office action, whether by making changes to the application, arguing against the examiner’s rejections, or choosing between different inventions (election).
The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
MPEP 203.03 defines an ‘amended’ application as:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In essence, an application becomes ‘amended’ when the applicant responds to an examiner’s action, whether through election, traversal, or by submitting amendments to the application.
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met:
- You must have a written authorization on file for Internet communication.
- The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web).
- The email must include all necessary information and attachments as required for the response.
MPEP 502.03 states: “Replies to Office actions may NOT be submitted by email unless specifically authorized.” This means that without proper authorization, email responses to Office actions will not be accepted.
It’s important to note that while email can be used, the USPTO recommends using EFS-Web for most communications, including responses to Office actions, as it provides a more secure and efficient method of submission.
To learn more:
No, drawing objections cannot typically be held in abeyance in a patent application. According to 37 CFR 1.85(a):
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 applicants must address drawing objections in their response to an Office action. Failing to do so may result in the response being considered incomplete or non-responsive.
To learn more:
Patent Procedure (9)
MPEP 203.02 defines a ‘rejected’ application as follows:
A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a ‘rejected’ application. Its status as a ‘rejected’ application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.
This status applies to applications that have received an Office action from the examiner but have not yet been responded to by the applicant.
If an applicant’s drawing corrections are rejected, they should carefully review the examiner’s comments in the Office action. According to MPEP 608.02(x):
“The applicant will be notified and informed of any required corrective action in the next Office action.”
Applicants should:
- Carefully read the examiner’s explanation for the rejection
- Address all issues raised by the examiner
- Ensure new submissions don’t introduce new matter
- Include all necessary corrections
- Consider consulting with a patent attorney or agent if the issues are complex
After addressing the examiner’s concerns, applicants can submit new drawing corrections for review in their response to the Office action.
To learn more:
To learn more:
A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.
Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:
Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.
This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.
MPEP 203.03 defines an ‘amended’ patent application as follows:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In simpler terms, an application becomes ‘amended’ when the applicant responds to an examiner’s Office action, whether by making changes to the application, arguing against the examiner’s rejections, or choosing between different inventions (election).
The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
MPEP 203.03 defines an ‘amended’ application as:
An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
In essence, an application becomes ‘amended’ when the applicant responds to an examiner’s action, whether through election, traversal, or by submitting amendments to the application.
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met:
- You must have a written authorization on file for Internet communication.
- The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web).
- The email must include all necessary information and attachments as required for the response.
MPEP 502.03 states: “Replies to Office actions may NOT be submitted by email unless specifically authorized.” This means that without proper authorization, email responses to Office actions will not be accepted.
It’s important to note that while email can be used, the USPTO recommends using EFS-Web for most communications, including responses to Office actions, as it provides a more secure and efficient method of submission.
To learn more:
No, drawing objections cannot typically be held in abeyance in a patent application. According to 37 CFR 1.85(a):
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 applicants must address drawing objections in their response to an Office action. Failing to do so may result in the response being considered incomplete or non-responsive.
To learn more: