Q: What is the process for entering an examiner's action in a patent application?

According to MPEP 707.10 , the process for entering an examiner's action in a patent application is as follows: 1. Signing: The action is signed by the authorized examiner. 2. Scanning: The signed action is soft scanned into the Image File Wrapper (IFW). 3. Delivery: A copy of the action is either given electronically or mailed to the applicant. As stated in the MPEP: The action, signed by the authorized examiner, is soft scanned into the IFW and a copy is given electronically or mailed to applicant. This process ensures that the examiner's decision is officially recorded and communicated to the patent applicant. To learn more: Patent Examination Examiner's Action Image File Wrapper Patent Application Process

Question 1

When can a continuation application be filed?

Accepted Answer

A continuation application can be filed at various stages during the patent application process, as long as the parent application is still pending. The MPEP provides guidance on the timing:

"At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office."

It's important to note that there are some exceptions for specific types of applications, such as continued prosecution applications (CPAs) for design applications, which have additional timing requirements.

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Question 2

What types of amendments are permitted after a final rejection?

Accepted Answer

After a final rejection, certain types of amendments may still be considered. According to MPEP 706.07(e):

"An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a)."

In summary, the following types of amendments are generally permitted after a final rejection:

Amendments that put the application in condition for allowance
Amendments that put the application in better form for appeal
Amendments that comply with objections or formal requirements

It's important to note that these amendments are subject to the examiner's discretion and must comply with the relevant rules and regulations.

To learn more:

MPEP 706.07(e)

Question 3

What is the significance of MPEP 707.07(h) in the patent examination process?

Accepted Answer

MPEP 707.07(h) plays a crucial role in the patent examination process by addressing the notification of inaccuracies in amendments. While the section itself is brief, it directs readers to MPEP § 714, subsection II. G for detailed procedures.

The significance of this section lies in its emphasis on maintaining accuracy throughout the patent application process. By ensuring that inaccuracies in amendments are promptly identified and communicated, it helps prevent misunderstandings, reduces errors, and streamlines the examination process.

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Question 4

What is the purpose of the PDX program in patent applications?

Accepted Answer

The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, 'The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.' This streamlines the process, reducing both the burden on applicants and the workload for patent offices.

Question 5

What is the process for entering an examiner's action in a patent application?

Accepted Answer

According to MPEP 707.10, the process for entering an examiner's action in a patent application is as follows:

1. Signing: The action is signed by the authorized examiner.

2. Scanning: The signed action is soft scanned into the Image File Wrapper (IFW).

3. Delivery: A copy of the action is either given electronically or mailed to the applicant.

As stated in the MPEP: The action, signed by the authorized examiner, is soft scanned into the IFW and a copy is given electronically or mailed to applicant. This process ensures that the examiner's decision is officially recorded and communicated to the patent applicant.

To learn more:

Question 6

What is the difference between a holding of abandonment and a notice of abandonment?

russ.krajec@blueironip.com · Accepted Answer

What is the difference between a holding of abandonment and a notice of abandonment?

A holding of abandonment and a notice of abandonment are distinct steps in the patent application process:

Holding of Abandonment: This is an internal decision made by the USPTO when an applicant fails to reply within the statutory period. As stated in MPEP 711.03(b), "When an applicant fails to reply within the period provided, the application is held to be abandoned."
Notice of Abandonment: This is an official communication sent to the applicant after the holding of abandonment. The MPEP notes, "The Office should promptly issue a notice of abandonment once the holding is made."

The holding precedes the notice, and the notice serves to inform the applicant of the Office's decision regarding the application's status.

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Question 7

What is a Continued Prosecution Application (CPA) for design patents?

Accepted Answer

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

Question 8

What happens to a provisional application after 12 months?

Accepted Answer

What happens to a provisional application after 12 months?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP states: 'A provisional application will automatically become abandoned 12 months after its filing date pursuant to 35 U.S.C. 111(b)(5).' This means that:

The application is no longer pending
It cannot be revived
No patent will directly result from a provisional application

To benefit from the provisional application, the applicant must file a nonprovisional application claiming priority to the provisional within the 12-month period. For more details, refer to MPEP 201.04.

For more information on Patent Application Process, visit: Patent Application Process.

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

Question 9

What happens if I file a provisional application without meeting all the requirements?

Accepted Answer

What happens if I file a provisional application without meeting all the requirements?

If you file a provisional application that doesn't meet all the requirements, it may not be granted the filing date you intended. The MPEP states: If a provisional application does not contain a cover sheet identifying it as a provisional application, it will be treated as a nonprovisional application. This means:

Your application might be processed as a nonprovisional application, which has different requirements and fees.
You could lose the intended filing date, which is crucial for establishing priority.
The USPTO may send you a notice of missing parts, giving you a chance to correct the deficiencies.

It's crucial to ensure all requirements are met when filing a provisional application to avoid these complications.

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

For more information on Patent Application Process, visit: Patent Application Process.

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

For more information on USPTO, visit: USPTO.

Question 10

What happens if a provisional application is filed without a complete cover sheet?

Accepted Answer

If a provisional application is filed without a complete cover sheet, the USPTO will still treat it as a provisional application. However, the applicant will be required to submit the complete cover sheet and pay a surcharge at a later date. The MPEP explains:

A provisional application, which is identified as such, but which does not have a complete cover sheet as required by 37 CFR 1.51(c)(1) will be treated as a provisional application. However, the complete cover sheet and a surcharge will be required to be submitted at a later date in conformance with 37 CFR 1.53(g). (MPEP 601.01(b))

The USPTO will notify the applicant and provide a time period (usually two months) to submit the necessary documents and fees to avoid abandonment of the application.

To learn more:

Question 11

What happens if a patent application is missing an abstract?

Accepted Answer

If a patent application is missing an abstract, the following actions will be taken:

For applications filed under 35 U.S.C. 111(a), the Office of Patent Application Processing (OPAP) will review for compliance and require an abstract if one has not been filed.
For all other applications lacking an abstract, the examiner will require the submission of an abstract in the first Office action.

The MPEP states: The Office of Patent Application Processing (OPAP) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.

To learn more:

Question 12

What happens if a patent application is filed without claims after December 18, 2013?

Accepted Answer

For applications filed on or after December 18, 2013, the absence of claims does not prevent the assignment of a filing date. However, claims must be submitted to complete the application.

The MPEP explains: If an application (other than an application for a design patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment. An application will not be placed on an examiner's docket unless and until the application includes a specification including at least one claim. (MPEP § 702)

While it's possible to file without claims, it's still recommended to include claims at the time of filing: The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention.

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Question 13

What happens if a CPA request is not submitted on a separate paper?

Accepted Answer

If a Continued Prosecution Application (CPA) request for a design patent is not submitted on a separate paper, it will be considered non-compliant and will not be processed by the USPTO.

The MPEP clearly states: 'Because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.' This means that the CPA will not be initiated, and the applicant will need to resubmit the request properly to proceed with the continued examination.

In such cases, the USPTO will typically send a notification to the applicant informing them of the non-compliance and providing instructions for proper submission.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

Question 14

What are the filing requirements for a continuation application?

Accepted Answer

To file a continuation application, you must meet several requirements as outlined in MPEP 201.07:

Timing: The continuation must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
Disclosure: The continuation must not include any new matter beyond what was disclosed in the parent application.
Claim to Benefit: A specific reference to the prior application is required, typically in the first sentence of the specification.
Inventor: At least one inventor named in the continuation must also be named in the prior application.
Filing Requirements: The continuation must include:
- A copy of the prior application as filed (unless already submitted via the USPTO electronic filing system)
- Amendments to the specification (if any)
- New claims (if any)
- Oath or declaration

Additionally, the continuation application must satisfy all the requirements of 35 U.S.C. 112 for the claimed subject matter.

To learn more:

Question 15

How should models be handled during patent examiner interviews?

Accepted Answer

How should models be handled during patent examiner interviews?

When handling models during patent examiner interviews, applicants should follow these guidelines:

Permission: Obtain permission from the examiner before bringing models to the interview.
Size and portability: Ensure models are of reasonable size and can be easily transported.
Relevance: Models should directly relate to the claimed invention.
Documentation: Provide a written description of the model for the record.

The MPEP 713.08 states:

Models or exhibits are generally not admitted as part of the application or patent unless specifically required by the Office or if they comply with 37 CFR 1.91.

This means that while models can be useful during interviews, they are not typically retained as part of the official application file. Applicants should be prepared to remove the model after the interview unless specifically requested to leave it.

To learn more:

Question 16

How long do I have to pay the basic filing fee for a provisional application?

Accepted Answer

The basic filing fee for a provisional application must be paid either:

At the time of filing, or
Within the time period set forth in 37 CFR 1.53(g)

If no correspondence address is provided, the applicant has two months from the filing date to pay the basic filing fee, submit the cover sheet, and pay the surcharge. The MPEP states:

If no correspondence address has been provided, applicant has two months from the filing date to file the basic filing fee, cover sheet, and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to avoid abandonment of the provisional application. (MPEP 601.01(b))

It's important to note that timely payment of the filing fee is crucial if you intend to claim the benefit of the provisional application in a later-filed nonprovisional application.

To learn more:

Question 17

How does the USPTO retrieve priority documents through PDX?

Accepted Answer

How does the USPTO retrieve priority documents through PDX?

The USPTO retrieves priority documents through the Priority Document Exchange (PDX) program upon request from the applicant. As stated in MPEP 215.02(a), 'If the applicant requests retrieval of the priority document through the PDX program, the USPTO will attempt to retrieve the document.' The process involves:

The applicant making a request for retrieval
The USPTO accessing the electronic system of the participating office
Retrieving the priority document if available
Adding the retrieved document to the application file

This streamlined process eliminates the need for applicants to manually obtain and submit priority documents from other participating patent offices.

To learn more:

Question 18

How does the USPTO notify applicants about non-compliant CPA requests?

Accepted Answer

When a Continued Prosecution Application (CPA) request for a design patent is found to be non-compliant, the USPTO notifies the applicant using a specific form paragraph. This notification informs the applicant about the issue and provides necessary details.

According to the MPEP, the examiner uses the following format:

'Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2].'
'However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.'

In this notification, [1] represents the filing date of the paper containing the CPA request, and [2] is the Application Number identified in the CPA request. This clear communication helps applicants understand the issue and take corrective action.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

Question 19

How does the USPTO handle 'conditional' requests for CPAs?

Accepted Answer

The United States Patent and Trademark Office (USPTO) treats all 'conditional' requests for Continued Prosecution Applications (CPAs) as unconditional requests. This is clearly stated in MPEP ¶ 2.35:

"Any 'conditional' request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA."

This means that once a CPA request is filed, even if the applicant intended it to be conditional, the USPTO will process it as a regular CPA. The conditions specified by the applicant are essentially disregarded, and the CPA is established based on the filing of the request alone.

For more information on CPA, visit: CPA.

For more information on Patent Application Process, visit: Patent Application Process.

Question 20

How does the AIA change the process for applications with deceased or incapacitated inventors?

Accepted Answer

How does the AIA change the process for applications with deceased or incapacitated inventors?

The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):

"Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent."

Key changes under the AIA include:

Allowing assignees or those with sufficient proprietary interest to file applications
Introduction of the substitute statement to replace inventor oaths in certain circumstances
Simplified process for continuing prosecution when an inventor becomes unavailable
Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor

These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.

To learn more:

Question 21

How do you handle patent applications when an inventor becomes legally incapacitated after signing the oath or declaration?

Accepted Answer

If an inventor becomes legally incapacitated after signing the oath or declaration, the application can still proceed. According to MPEP 409.01:

If an inventor who executed the oath or declaration becomes legally incapacitated after the application is filed but before the patent issues, no substitute oath or declaration is required.

This means that the previously signed oath or declaration remains valid, and the application can continue through the patent process without requiring additional documentation regarding the inventor's incapacitation.

To learn more:

Question 22

How do applicants receive copies of examiner's actions?

Accepted Answer

According to MPEP 707.10, applicants can receive copies of examiner's actions through two methods:

Electronic delivery: The action may be provided to the applicant electronically.
Mail delivery: Alternatively, the action may be mailed to the applicant.

The MPEP states: a copy is given electronically or mailed to applicant. This ensures that applicants receive timely notification of the examiner's decisions regarding their patent applications, allowing them to respond appropriately within the given timeframe.

To learn more:

Question 23

How can an applicant contest a holding of insufficiency of reply?

Accepted Answer

An applicant can contest a holding of insufficiency of reply by asserting that their reply was, in fact, complete and responsive. MPEP 711.03(a) states:

Applicant may deny that the reply was incomplete.

If an applicant believes their reply was sufficient, they can communicate this to the USPTO, typically by filing a petition or response explaining why they believe their original reply was complete and responsive. The examiner can then review this assertion and potentially reverse their holding if they agree with the applicant's argument. It's important for applicants to provide a clear and detailed explanation of why they believe their original reply was sufficient to give the examiner the best opportunity to reconsider their decision.

To learn more:

Question 24

Can patent examiners request demonstrations of inventions?

Accepted Answer

Can patent examiners request demonstrations of inventions?

Yes, patent examiners can request demonstrations of inventions. According to MPEP 713.08:

The invention in question may be exhibited or demonstrated during the interview by the inventor or attorney.

While demonstrations are often initiated by applicants, examiners may also request them if they believe it would be helpful in understanding the invention. However, it's important to note that:

Demonstrations are not mandatory unless required by the examiner.
If requested, the applicant should make reasonable efforts to accommodate the examiner's request.
Any demonstration should be relevant to the claimed invention and assist in clarifying patentability issues.

To learn more:

Question 25

Can I convert my provisional application to a nonprovisional application?

Accepted Answer

Can I convert my provisional application to a nonprovisional application?

No, you cannot directly convert a provisional application to a nonprovisional application. The MPEP clearly states: A provisional application cannot be converted to a nonprovisional application. Instead, you must file a separate nonprovisional application within 12 months of the provisional application's filing date. This nonprovisional application can claim the benefit of the provisional application's filing date. Here's what you need to know:

The nonprovisional application must be filed within 12 months of the provisional application's filing date.
It must include a specific reference to the provisional application.
The nonprovisional application can expand on the content of the provisional application but must support any claims that rely on the provisional filing date.

Remember, if you don't file a nonprovisional application within 12 months, the provisional application will automatically expire, and you'll lose the benefit of its filing date.

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

For more information on Patent Application Process, visit: Patent Application Process.

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

For more information on USPTO, visit: USPTO.

Question 26

Can amendments be made to a provisional application after filing?

Accepted Answer

Generally, amendments to a provisional application are not permitted after the filing date, except for those required to comply with applicable regulations. The MPEP clearly states:

Amendments, other than those required to make the provisional application comply with applicable regulations, are not permitted after the filing date of the provisional application. (MPEP 601.01(b))

This restriction helps maintain the integrity of the provisional application as a snapshot of the invention at the time of filing.

To learn more:

Here’s the complete FAQ:

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

When can a continuation application be filed?

What is the purpose of the PDX program in patent applications?

What is a Continued Prosecution Application (CPA) for design patents?

What happens to a provisional application after 12 months?

What happens to a provisional application after 12 months?

What happens if I file a provisional application without meeting all the requirements?

What happens if I file a provisional application without meeting all the requirements?

What happens if a CPA request is not submitted on a separate paper?

What are the filing requirements for a continuation application?

How does the USPTO retrieve priority documents through PDX?

How does the USPTO retrieve priority documents through PDX?

How does the USPTO notify applicants about non-compliant CPA requests?

How does the USPTO handle ‘conditional’ requests for CPAs?

Can I convert my provisional application to a nonprovisional application?

Can I convert my provisional application to a nonprovisional application?

MPEP 201 - Types of Applications (7)

What is a Continued Prosecution Application (CPA) for design patents?

What happens to a provisional application after 12 months?

What happens to a provisional application after 12 months?

What happens if I file a provisional application without meeting all the requirements?

What happens if I file a provisional application without meeting all the requirements?

What happens if a CPA request is not submitted on a separate paper?

How does the USPTO notify applicants about non-compliant CPA requests?

How does the USPTO handle ‘conditional’ requests for CPAs?

Can I convert my provisional application to a nonprovisional application?

Can I convert my provisional application to a nonprovisional application?

MPEP 215-Certified Copy of Foreign Application (1)

What is the purpose of the PDX program in patent applications?

MPEP 400 - Representative of Applicant or Owner (2)

How does the AIA change the process for applications with deceased or incapacitated inventors?

How does the AIA change the process for applications with deceased or incapacitated inventors?

How do you handle patent applications when an inventor becomes legally incapacitated after signing the oath or declaration?

Patent Law (17)

When can a continuation application be filed?

What is the purpose of the PDX program in patent applications?

What is a Continued Prosecution Application (CPA) for design patents?

What happens to a provisional application after 12 months?

What happens to a provisional application after 12 months?

What happens if I file a provisional application without meeting all the requirements?

What happens if I file a provisional application without meeting all the requirements?

What happens if a provisional application is filed without a complete cover sheet?

What happens if a patent application is missing an abstract?

What happens if a CPA request is not submitted on a separate paper?

What are the filing requirements for a continuation application?

How long do I have to pay the basic filing fee for a provisional application?

How does the USPTO retrieve priority documents through PDX?

How does the USPTO retrieve priority documents through PDX?

How does the USPTO notify applicants about non-compliant CPA requests?

How does the USPTO handle ‘conditional’ requests for CPAs?

How does the AIA change the process for applications with deceased or incapacitated inventors?

How does the AIA change the process for applications with deceased or incapacitated inventors?

How do you handle patent applications when an inventor becomes legally incapacitated after signing the oath or declaration?

Can I convert my provisional application to a nonprovisional application?

Can I convert my provisional application to a nonprovisional application?

Can amendments be made to a provisional application after filing?

Patent Procedure (17)

When can a continuation application be filed?

What is the purpose of the PDX program in patent applications?

What is a Continued Prosecution Application (CPA) for design patents?

What happens to a provisional application after 12 months?

What happens to a provisional application after 12 months?

What happens if I file a provisional application without meeting all the requirements?

What happens if I file a provisional application without meeting all the requirements?

What happens if a provisional application is filed without a complete cover sheet?

What happens if a patent application is missing an abstract?

What happens if a CPA request is not submitted on a separate paper?

What are the filing requirements for a continuation application?

How long do I have to pay the basic filing fee for a provisional application?

How does the USPTO retrieve priority documents through PDX?

How does the USPTO retrieve priority documents through PDX?

How does the USPTO notify applicants about non-compliant CPA requests?

How does the USPTO handle ‘conditional’ requests for CPAs?

How does the AIA change the process for applications with deceased or incapacitated inventors?

How does the AIA change the process for applications with deceased or incapacitated inventors?

How do you handle patent applications when an inventor becomes legally incapacitated after signing the oath or declaration?

Can I convert my provisional application to a nonprovisional application?

Can I convert my provisional application to a nonprovisional application?

Can amendments be made to a provisional application after filing?