Patent Law FAQ

The Manual of Patent Examining Procedure (MPEP) serves as a comprehensive guide for patent examiners, applicants, attorneys, and agents involved in the patent application process. According to MPEP 101, its purpose is to:

• Provide instructions to examiners for the examination of patent applications
• Outline procedures for processing and examining patent applications
• Serve as a reference work on patent laws, rules, and examination practices

The MPEP states: The Manual contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.

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

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

When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application. This ensures that potentially sensitive information is properly handled during the examination process.

For more information on national security markings, visit: national security markings.

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

Applications with Secrecy Orders are examined in a secure location by examiners with national security clearances under the control of Licensing and Review. As stated in the MPEP, All applications in which a Secrecy Order has been imposed are examined in a secure location by examiners possessing national security clearances under the control of Licensing and Review. This ensures that sensitive information remains protected during the examination process.

For more information on licensing and review, visit: licensing and review.

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

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

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

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

Patent examiners should use MPEP ¶ 2.06 when they encounter an application that appears to qualify as a continuation-in-part (CIP) but lacks a proper benefit claim. The paragraph itself provides guidance:

This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.

Examiners use this paragraph to notify applicants that their application might be eligible for CIP status and to direct them to the proper procedures for claiming the benefit of the prior application’s filing date if desired.

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

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

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.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

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 examination, visit: patent examination.

A patent application stops being considered ‘new’ when it receives its first action from the examiner. According to MPEP 203.01:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This implies that once the examiner issues any official communication or action on the merits of the application, such as a non-final rejection or a notice of allowance, the application is no longer considered ‘new’ in the patent examination process.

To learn more:

• new application
• patent examination
• examiner action
• application status

When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.

The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met. (MPEP 202)

This means the examiner should:

• Review the foreign priority claim
• Determine if all conditions for the claim have been satisfied
• Indicate the status of the claim in the Office action
• Mark the bib-data sheet accordingly

If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.

For more information on foreign priority, visit: foreign priority.

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

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

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

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

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

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

The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states:

Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.

This paragraph helps examiners address situations where applicants have named new inventors in a CPA without following the proper procedure. It reminds both examiners and applicants that a formal request under 37 CFR 1.48 is required to change inventorship, even in a CPA.

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

• It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

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

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

• It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

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

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

MPEP ¶ 2.05 Possible Status as Continuation serves as a guideline for patent examiners when handling applications that may qualify as continuations. Its primary purpose is to:

• Instruct examiners on how to handle applications that disclose and claim only subject matter disclosed in a prior application
• Provide language for examiners to use when notifying applicants about the possible status of their application as a continuation
• Ensure proper classification and processing of continuation applications

The MPEP states: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application. Accordingly, this application may constitute a continuation or division.” (MPEP ¶ 2.05)

This guidance helps maintain consistency in the examination process and ensures that applicants are properly informed about the potential status of their applications.

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

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

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

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

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

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

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

According to the MPEP, there is no substantial difference between an ‘allowed’ application and an application ‘in issue’. The MPEP uses these terms interchangeably:

“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”

Both terms refer to an application that has passed examination and is awaiting issuance as a patent, provided that all necessary fees are paid and no issues arise that would necessitate withdrawal from issue.

To learn more:

• allowed application
• application in issue
• patent examination
• notice of allowance

An ‘allowed’ application is a nonprovisional patent application that has been examined and determined to meet all statutory requirements. The Manual of Patent Examining Procedure (MPEP) states:

“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”

This means that the patent examiner has reviewed the application and found it to be in compliance with all applicable laws and regulations, and has subsequently issued a notice of allowance to the applicant.

To learn more:

• allowed application
• patent examination
• notice of allowance
• statutory requirements

Form Paragraph 2.34 is a standardized response used by patent examiners when addressing improper amendments to Continued Prosecution Applications (CPAs). According to MPEP § 201.06(d), this form paragraph is specifically used to:

“inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The form paragraph explains that such amendments are unnecessary because the CPA request itself serves as the specific reference required by 35 U.S.C. 120. It helps maintain consistency in examiner responses and ensures that applicants are properly informed about the treatment of these amendments in CPA applications.

For more information on CPA, visit: CPA.

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

Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Patent Examination

A ‘new’ patent application is a nonprovisional application that has not yet received an action by the examiner. According to MPEP 203.01:

An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

It’s important to note that a request for continued examination (RCE) is not considered a new application filing.

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

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

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

For more information on RCE, visit: RCE.

An ‘amended’ nonprovisional patent application is one that has undergone a specific process in the examination procedure. According to MPEP 203.03:

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.

In simpler terms, it means that after the patent examiner has reviewed and responded to the application, the applicant has then taken some action in response to the examiner’s feedback.

To learn more:

• amended application
• nonprovisional application
• patent examination
• patent prosecution

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

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

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

When citing a prior application using MPEP ¶ 2.05, specific information must be included. The MPEP instructs examiners:

“In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.”

This means that when referencing a prior application, the examiner should provide:

• The application number, including both the series code and serial number
• The filing date of the prior application

Including this information ensures clear identification of the specific prior application being referenced.

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

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

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

• Advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request
• Confirm that the CPA is acceptable and has been established
• Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.” Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

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

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

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

The MPEP clearly states: “All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62.”

This means that applications filed under the File Wrapper Continuing Procedure before its deletion will be processed according to the rules that were in place at the time of filing. For more detailed information on these procedures, you can refer to the MPEP 8th Edition, Rev. 1 (February 2003), which is available on the USPTO website.

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

If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states:

“Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the patent examiner will not accept or incorporate such amendments into the application. The CPA itself serves as the necessary reference to the prior application, making additional amendments unnecessary and inappropriate.

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

For more information on CPA, visit: CPA.

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

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

If a new inventor is identified in a Continued Prosecution Application (CPA) without proper documentation, it can lead to issues with the application. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that if an examiner notices a new inventor listed on a CPA without the required request under 37 CFR 1.48, they will issue a notice to the applicant. The inventorship will remain the same as in the prior application until the proper request is filed and approved.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

If a Continued Prosecution Application (CPA) is improperly requested for a utility or plant patent application, it is typically treated as a Request for Continued Examination (RCE). The MPEP ¶ 2.30 provides guidance on this situation:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the examiner will use a different form paragraph (7.42.15) to notify the applicant that their CPA request has been treated as an RCE. This ensures that the application can continue to be examined under the appropriate procedure for utility or plant patents.

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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

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

For more information on new matter, visit: new matter.

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

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

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

Once a Continued Prosecution Application (CPA) is established from a Conditional Request, the USPTO proceeds with the examination process as it would for any other CPA. According to MPEP ¶ 2.35: “An action on the CPA follows.”

This means that after the CPA is established:

• The parent application is considered abandoned
• The examiner will review the CPA and issue an Office action
• The applicant should be aware that they may not receive a filing receipt for the CPA, as noted in the MPEP: “This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

For more information on CPA, visit: CPA.

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

‘Failure to take appropriate action’ in patent prosecution refers to situations where an applicant doesn’t respond to Office actions or meet other required deadlines during the examination process. According to MPEP 203.05, an application can be abandoned:

“through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application”

This could include not responding to an examiner’s rejection within the given time frame, failing to submit required documents, or not meeting other procedural requirements. It’s crucial for applicants to stay engaged in the prosecution process and meet all deadlines to prevent unintentional abandonment.

To learn more:

• patent prosecution
• office actions
• application deadlines
• patent examination

According to MPEP 203.01, a ‘new’ application is defined as follows:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This means that a patent application is considered ‘new’ from the time it is filed until the patent examiner issues their first official response or action on the application.

To learn more:

• new application
• patent examination
• nonprovisional application
• patent filing

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

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

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

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

When a patent application is ‘rejected’, the applicant has several options:

1. Respond to the examiner’s action within the allotted reply period
2. Request an interview with the examiner to discuss the rejection
3. File an amendment to address the examiner’s concerns
4. Present arguments challenging the rejection
5. Allow the application to become abandoned if they choose not to pursue it further

According to MPEP 203.02:

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.

The most crucial action is to respond within the specified timeframe to prevent the application from becoming abandoned.

To learn more:

• rejected application
• patent prosecution
• applicant response
• patent examination

All relevant information from MPEP ¶ 2.33 New Inventor Identified in CPA (for Design Applications) has been covered in the previous FAQs. No additional meaningful questions can be generated without redundancy.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

No, an English translation of a non-English language foreign application is not always required. According to 37 CFR 1.55(g)(3), an English language translation is only required in specific circumstances:

An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.

If a translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

To learn more:

• English translation
• foreign application
• patent examination
• language requirements

A patent application remains in ‘rejected’ status until one of two things happens:

1. The applicant acts upon the examiner’s action within the allotted reply period, or
2. The application becomes abandoned.

As stated in MPEP 203.02:

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.

The duration of ‘rejected’ status thus depends on the applicant’s timely response or the application’s abandonment.

To learn more:

• rejected application
• patent prosecution
• application status
• patent examination

The USPTO generally does not make an upfront determination about whether an application qualifies as a continuation-in-part (CIP) unless it becomes necessary in a proceeding. According to the MPEP:

“The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office.”

However, examiners may use form paragraph 2.06 to remind applicants of possible CIP status:

“This application repeats a substantial portion of prior Application No. [1], filed [2], and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.”

Ultimately, it’s the applicant’s responsibility to properly claim CIP status and comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

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

The patent examination process involves a back-and-forth between the examiner and the applicant. MPEP 203.03 describes a key part of this process:

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 general steps in the examination process are:

1. The applicant files a nonprovisional application.
2. The examiner reviews the application and issues an Office Action.
3. The applicant responds to the Office Action, potentially with amendments.
4. This process may repeat until the application is either allowed or finally rejected.

Each time the applicant responds with changes, the application becomes an ‘amended’ application as described in MPEP 203.03.

To learn more:

• patent examination
• Office Action
• patent prosecution
• amended application

Filing a continuation-in-part (CIP) application does not automatically resolve or affect outstanding rejections in the parent application. The MPEP 201.08 clarifies this point:

“The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

This means:

• Outstanding rejections in the parent application remain active and must be addressed separately.
• The applicant is not presumed to agree with or accept these rejections by filing a CIP.
• The CIP application will be examined independently, though it may face similar rejections if it includes the same claimed subject matter.

Applicants should continue to respond to office actions and address rejections in the parent application if they wish to pursue those claims, even after filing a CIP.

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

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

When a Continued Prosecution Application (CPA) is established, the examiner notifies the applicant in the first Office action of the CPA. According to MPEP ¶ 2.30, the examiner uses a specific form paragraph:

“The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.”

This notification is important because:

• Applicants are not separately notified of the abandonment of the parent application
• A filing receipt is not normally sent for a CPA

Therefore, this Office action serves as the official notification that the CPA has been properly established.

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

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

According to MPEP § 201, specifically paragraph 2.30, an examiner notifies an applicant about a Continued Prosecution Application’s (CPA) acceptance in the first Office action of the CPA. The MPEP states:

Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

This notification is crucial because it confirms the establishment of the CPA and provides important information to the applicant about the status of their application.

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

For more information on CPA, visit: CPA.

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

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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

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

For more information on new matter, visit: new matter.

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

An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:

• The application discloses only subject matter that was previously disclosed in a prior application
• The application claims only subject matter that was disclosed in the prior application
• The application names at least one inventor who was also named in the prior application

The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)

If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.

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

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

Patent examiners use specific criteria to determine if an application may qualify as a divisional. According to MPEP ¶ 2.01, an examiner looks for the following indicators:

1. The application claims only subject matter disclosed in a prior application.
2. The claimed subject matter appears to be independent and distinct from that claimed in the prior application.
3. At least one inventor from the prior application is named in the current application.

The MPEP provides guidance to examiners:

“This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.”

If these conditions are met, but a proper benefit claim hasn’t been made, the examiner may use this paragraph to notify the applicant of the possible divisional status and the need to establish a benefit claim if desired.

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

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

For more information on USPTO, visit: USPTO.

A terminal disclaimer filed in a parent application can affect a divisional application in specific ways. According to MPEP 201.06:

‘The divisional application must be directed to subject matter described and claimed in the prior nonprovisional application.’

This means that if a terminal disclaimer was filed in the parent application, it may impact the divisional application as follows:

• Inheritance of Terminal Disclaimer: Generally, a terminal disclaimer filed in the parent application does not automatically apply to the divisional application.
• Potential Double Patenting: If the claims in the divisional application are not patentably distinct from those in the parent application, a new terminal disclaimer may be required in the divisional to overcome a double patenting rejection.
• Examination Considerations: Examiners will consider the relationship between the parent and divisional applications when determining if a terminal disclaimer is necessary.

It’s important to consult with a patent attorney or agent to understand the specific implications of terminal disclaimers on your divisional application, as each case can have unique considerations.

To learn more:

• divisional application
• terminal disclaimer
• double patenting
• patent examination

How does a restriction requirement lead to a divisional application?

A restriction requirement often leads to the filing of a divisional application. This process occurs as follows:

1. An examiner issues a restriction requirement when they believe the original application contains claims to two or more independent or distinct inventions.
2. The applicant must then elect one invention to pursue in the original application.
3. The non-elected inventions can be pursued in one or more divisional applications.

As stated in MPEP 201.06:

“The inventions embodied in the claims of a divisional application are generally further characterized as (1) independent inventions or (2) related inventions which are distinct.”

This means that the divisional application allows the applicant to protect inventions that were disclosed but not pursued in the original application due to the restriction requirement.

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

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

While the MPEP 201.02 doesn’t provide detailed definitions, it references 37 CFR 1.9(a) for the definitions of provisional and nonprovisional applications:

• Provisional Application: A temporary application that establishes an early filing date but does not mature into an issued patent without further action.
• Nonprovisional Application: A regular patent application that can be examined and potentially result in an issued patent.

Key differences include:

• Provisional applications have a pendency of 12 months from the filing date.
• Nonprovisional applications undergo examination, while provisional applications do not.
• A nonprovisional application must be filed within 12 months of the provisional to claim its filing date benefit.

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

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

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

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

Provisional application benefits are handled differently from other types of priority claims on the bib-data sheet. If an applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, the application number of that provisional application should be printed on the bib-data sheet.

However, it’s important to note: If applicant claims benefit under35 U.S.C. 119(e)to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. (MPEP 202)

This is due to the limitation set forth in 35 U.S.C. 111(b)(7), which states that a provisional application cannot claim priority to or benefit from any other application.

Examiners should verify that provisional application data is correctly listed and that no improper benefit claims to earlier applications through a provisional application are included on the bib-data sheet.

For more information on benefit claims, visit: benefit claims.

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

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

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

For more information on foreign applications, visit: foreign applications.

For more information on foreign priority claims, visit: foreign priority claims.

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

Applications filed under former 37 CFR 1.62 before December 1, 1997, continue to be processed and examined under the procedures set forth in the former regulation. The MPEP clearly states:

“All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62.”

This means that the File Wrapper Continuing Procedure remains applicable for these older applications, ensuring consistency in their examination process.

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

No, filing an amendment does not change the status of a ‘new’ application. The MPEP 203.01 explicitly states:

An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

This means that even if you submit changes or corrections to your application before receiving any feedback from the examiner, your application is still considered ‘new’ in the eyes of the patent office.

To learn more:

• new application
• patent amendment
• patent examination
• application status

Can a provisional application be published?

No, provisional applications are not published. The MPEP clearly states: ‘A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or 365(b); is not entitled to the benefit of the filing date of a prior application under 35 U.S.C. 119(e) or 120; and will not be published or examined.’ This means:

• Provisional applications remain confidential
• They are not made available to the public
• No patent document is published based solely on a provisional application

For more information on provisional applications, visit the MPEP 201.04 section.

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

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

An MPEP section may be marked as [Reserved] for several reasons:

• The topic is not currently relevant but a section is being held for potential future use
• The section was previously used but the content was moved elsewhere in the MPEP
• The section is a placeholder to maintain a desired numbering scheme

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.

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

An examiner should check the following on the bib-data sheet regarding prior applications:

1. Accuracy of prior application data, including provisional application data
2. Whether the application is copending with prior nonprovisional applications for which benefit is claimed
3. Correct application numbers of provisional applications for which benefit is claimed
4. Proper listing of foreign applications qualifying for benefits under 35 U.S.C. 119(a)-(d)

MPEP 202 instructs: “Where the data is correct, the examiner should initial the bib-data sheet in the provided space. Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate.”

According to MPEP 203.01, a ‘new’ application is defined as:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

It’s important to note that a request for continued examination (RCE) is not considered a new application filing.

For foreign priority applications, the bib-data sheet should include:

• Application number
• Country (or intellectual property authority)
• Day, month, and year of filing

MPEP 202 specifies: “A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy.”

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. Applications from non-qualifying countries should be lined through on the bib-data sheet.

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).

According to MPEP 203.04:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. 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).

An ‘allowed’ application has passed examination and is ready to become a patent, pending payment of necessary fees.

When reviewing a claim to foreign priority, the examiner generally checks the following:

• That the papers contain no obvious formal defects
• That the papers correspond in number, date and country to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely

The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)

The ‘[Reserved]’ designation in MPEP 212 indicates that this section is currently not in use but is being held for potential future content. It does not contain any specific information or guidance at this time.

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

Foreign priority application information is handled as follows on the bib-data sheet:

• If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
• Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
• The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
• Examiners should check this information for accuracy and make corrections if necessary.

The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)

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.

Patent examiners verify foreign priority claims through the following steps:

1. Check that foreign applications listed on the oath, declaration, or application data sheet are properly listed on the bib-data sheet.
2. Verify the accuracy of the application number, country, and filing date for each foreign application.
3. Ensure that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) are listed.
4. Initial the bib-data sheet in the “VERIFIED” space when the information is correct or has been amended to be correct.
5. Indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

MPEP 202 states: “The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required.”

Errors in prior application data on the bib-data sheet are corrected as follows:

1. If the error is in the preprinted data: The examiner can have the technical support staff of the Technology Center make corrections in the Patent Data Portal database.
2. If the error is an applicant error: The examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.

MPEP 202 states: “Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. See MPEP § 601.05 et seq. and MPEP § 211.02(a). A petition for an unintentionally delayed benefit claim may also be required. See MPEP § 211.04.”

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

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

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

Patent examiners should use MPEP ¶ 2.06 when they encounter an application that appears to qualify as a continuation-in-part (CIP) but lacks a proper benefit claim. The paragraph itself provides guidance:

This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.

Examiners use this paragraph to notify applicants that their application might be eligible for CIP status and to direct them to the proper procedures for claiming the benefit of the prior application’s filing date if desired.

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

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

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.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

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 examination, visit: patent examination.

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

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

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

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

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

The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states:

Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.

This paragraph helps examiners address situations where applicants have named new inventors in a CPA without following the proper procedure. It reminds both examiners and applicants that a formal request under 37 CFR 1.48 is required to change inventorship, even in a CPA.

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

• It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

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

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

• It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

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

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

MPEP ¶ 2.05 Possible Status as Continuation serves as a guideline for patent examiners when handling applications that may qualify as continuations. Its primary purpose is to:

• Instruct examiners on how to handle applications that disclose and claim only subject matter disclosed in a prior application
• Provide language for examiners to use when notifying applicants about the possible status of their application as a continuation
• Ensure proper classification and processing of continuation applications

The MPEP states: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application. Accordingly, this application may constitute a continuation or division.” (MPEP ¶ 2.05)

This guidance helps maintain consistency in the examination process and ensures that applicants are properly informed about the potential status of their applications.

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

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

Form Paragraph 2.34 is a standardized response used by patent examiners when addressing improper amendments to Continued Prosecution Applications (CPAs). According to MPEP § 201.06(d), this form paragraph is specifically used to:

“inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The form paragraph explains that such amendments are unnecessary because the CPA request itself serves as the specific reference required by 35 U.S.C. 120. It helps maintain consistency in examiner responses and ensures that applicants are properly informed about the treatment of these amendments in CPA applications.

For more information on CPA, visit: CPA.

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

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

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

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

When citing a prior application using MPEP ¶ 2.05, specific information must be included. The MPEP instructs examiners:

“In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.”

This means that when referencing a prior application, the examiner should provide:

• The application number, including both the series code and serial number
• The filing date of the prior application

Including this information ensures clear identification of the specific prior application being referenced.

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

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

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

• Advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request
• Confirm that the CPA is acceptable and has been established
• Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.” Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

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

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

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

The MPEP clearly states: “All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62.”

This means that applications filed under the File Wrapper Continuing Procedure before its deletion will be processed according to the rules that were in place at the time of filing. For more detailed information on these procedures, you can refer to the MPEP 8th Edition, Rev. 1 (February 2003), which is available on the USPTO website.

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

If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states:

“Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the patent examiner will not accept or incorporate such amendments into the application. The CPA itself serves as the necessary reference to the prior application, making additional amendments unnecessary and inappropriate.

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

For more information on CPA, visit: CPA.

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

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

If a new inventor is identified in a Continued Prosecution Application (CPA) without proper documentation, it can lead to issues with the application. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that if an examiner notices a new inventor listed on a CPA without the required request under 37 CFR 1.48, they will issue a notice to the applicant. The inventorship will remain the same as in the prior application until the proper request is filed and approved.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

If a Continued Prosecution Application (CPA) is improperly requested for a utility or plant patent application, it is typically treated as a Request for Continued Examination (RCE). The MPEP ¶ 2.30 provides guidance on this situation:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the examiner will use a different form paragraph (7.42.15) to notify the applicant that their CPA request has been treated as an RCE. This ensures that the application can continue to be examined under the appropriate procedure for utility or plant patents.

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

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

Once a Continued Prosecution Application (CPA) is established from a Conditional Request, the USPTO proceeds with the examination process as it would for any other CPA. According to MPEP ¶ 2.35: “An action on the CPA follows.”

This means that after the CPA is established:

• The parent application is considered abandoned
• The examiner will review the CPA and issue an Office action
• The applicant should be aware that they may not receive a filing receipt for the CPA, as noted in the MPEP: “This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

For more information on CPA, visit: CPA.

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

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

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

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

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

All relevant information from MPEP ¶ 2.33 New Inventor Identified in CPA (for Design Applications) has been covered in the previous FAQs. No additional meaningful questions can be generated without redundancy.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

The USPTO generally does not make an upfront determination about whether an application qualifies as a continuation-in-part (CIP) unless it becomes necessary in a proceeding. According to the MPEP:

“The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office.”

However, examiners may use form paragraph 2.06 to remind applicants of possible CIP status:

“This application repeats a substantial portion of prior Application No. [1], filed [2], and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.”

Ultimately, it’s the applicant’s responsibility to properly claim CIP status and comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

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

Filing a continuation-in-part (CIP) application does not automatically resolve or affect outstanding rejections in the parent application. The MPEP 201.08 clarifies this point:

“The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

This means:

• Outstanding rejections in the parent application remain active and must be addressed separately.
• The applicant is not presumed to agree with or accept these rejections by filing a CIP.
• The CIP application will be examined independently, though it may face similar rejections if it includes the same claimed subject matter.

Applicants should continue to respond to office actions and address rejections in the parent application if they wish to pursue those claims, even after filing a CIP.

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

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

When a Continued Prosecution Application (CPA) is established, the examiner notifies the applicant in the first Office action of the CPA. According to MPEP ¶ 2.30, the examiner uses a specific form paragraph:

“The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.”

This notification is important because:

• Applicants are not separately notified of the abandonment of the parent application
• A filing receipt is not normally sent for a CPA

Therefore, this Office action serves as the official notification that the CPA has been properly established.

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

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

According to MPEP § 201, specifically paragraph 2.30, an examiner notifies an applicant about a Continued Prosecution Application’s (CPA) acceptance in the first Office action of the CPA. The MPEP states:

Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

This notification is crucial because it confirms the establishment of the CPA and provides important information to the applicant about the status of their application.

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

For more information on CPA, visit: CPA.

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

An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:

• The application discloses only subject matter that was previously disclosed in a prior application
• The application claims only subject matter that was disclosed in the prior application
• The application names at least one inventor who was also named in the prior application

The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)

If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.

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

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

Patent examiners use specific criteria to determine if an application may qualify as a divisional. According to MPEP ¶ 2.01, an examiner looks for the following indicators:

1. The application claims only subject matter disclosed in a prior application.
2. The claimed subject matter appears to be independent and distinct from that claimed in the prior application.
3. At least one inventor from the prior application is named in the current application.

The MPEP provides guidance to examiners:

“This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.”

If these conditions are met, but a proper benefit claim hasn’t been made, the examiner may use this paragraph to notify the applicant of the possible divisional status and the need to establish a benefit claim if desired.

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

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

For more information on USPTO, visit: USPTO.

How does a restriction requirement lead to a divisional application?

A restriction requirement often leads to the filing of a divisional application. This process occurs as follows:

1. An examiner issues a restriction requirement when they believe the original application contains claims to two or more independent or distinct inventions.
2. The applicant must then elect one invention to pursue in the original application.
3. The non-elected inventions can be pursued in one or more divisional applications.

As stated in MPEP 201.06:

“The inventions embodied in the claims of a divisional application are generally further characterized as (1) independent inventions or (2) related inventions which are distinct.”

This means that the divisional application allows the applicant to protect inventions that were disclosed but not pursued in the original application due to the restriction requirement.

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

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

While the MPEP 201.02 doesn’t provide detailed definitions, it references 37 CFR 1.9(a) for the definitions of provisional and nonprovisional applications:

• Provisional Application: A temporary application that establishes an early filing date but does not mature into an issued patent without further action.
• Nonprovisional Application: A regular patent application that can be examined and potentially result in an issued patent.

Key differences include:

• Provisional applications have a pendency of 12 months from the filing date.
• Nonprovisional applications undergo examination, while provisional applications do not.
• A nonprovisional application must be filed within 12 months of the provisional to claim its filing date benefit.

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

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

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

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

Applications filed under former 37 CFR 1.62 before December 1, 1997, continue to be processed and examined under the procedures set forth in the former regulation. The MPEP clearly states:

“All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62.”

This means that the File Wrapper Continuing Procedure remains applicable for these older applications, ensuring consistency in their examination process.

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

Can a provisional application be published?

No, provisional applications are not published. The MPEP clearly states: ‘A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or 365(b); is not entitled to the benefit of the filing date of a prior application under 35 U.S.C. 119(e) or 120; and will not be published or examined.’ This means:

• Provisional applications remain confidential
• They are not made available to the public
• No patent document is published based solely on a provisional application

For more information on provisional applications, visit the MPEP 201.04 section.

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

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

When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.

The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met. (MPEP 202)

This means the examiner should:

• Review the foreign priority claim
• Determine if all conditions for the claim have been satisfied
• Indicate the status of the claim in the Office action
• Mark the bib-data sheet accordingly

If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.

For more information on foreign priority, visit: foreign priority.

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

An examiner should check the following on the bib-data sheet regarding prior applications:

1. Accuracy of prior application data, including provisional application data
2. Whether the application is copending with prior nonprovisional applications for which benefit is claimed
3. Correct application numbers of provisional applications for which benefit is claimed
4. Proper listing of foreign applications qualifying for benefits under 35 U.S.C. 119(a)-(d)

MPEP 202 instructs: “Where the data is correct, the examiner should initial the bib-data sheet in the provided space. Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate.”

For foreign priority applications, the bib-data sheet should include:

• Application number
• Country (or intellectual property authority)
• Day, month, and year of filing

MPEP 202 specifies: “A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy.”

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. Applications from non-qualifying countries should be lined through on the bib-data sheet.

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

Foreign priority application information is handled as follows on the bib-data sheet:

• If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
• Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
• The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
• Examiners should check this information for accuracy and make corrections if necessary.

The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)

Provisional application benefits are handled differently from other types of priority claims on the bib-data sheet. If an applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, the application number of that provisional application should be printed on the bib-data sheet.

However, it’s important to note: If applicant claims benefit under35 U.S.C. 119(e)to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. (MPEP 202)

This is due to the limitation set forth in 35 U.S.C. 111(b)(7), which states that a provisional application cannot claim priority to or benefit from any other application.

Examiners should verify that provisional application data is correctly listed and that no improper benefit claims to earlier applications through a provisional application are included on the bib-data sheet.

For more information on benefit claims, visit: benefit claims.

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

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

Patent examiners verify foreign priority claims through the following steps:

1. Check that foreign applications listed on the oath, declaration, or application data sheet are properly listed on the bib-data sheet.
2. Verify the accuracy of the application number, country, and filing date for each foreign application.
3. Ensure that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) are listed.
4. Initial the bib-data sheet in the “VERIFIED” space when the information is correct or has been amended to be correct.
5. Indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

MPEP 202 states: “The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required.”

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

For more information on foreign applications, visit: foreign applications.

For more information on foreign priority claims, visit: foreign priority claims.

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

Errors in prior application data on the bib-data sheet are corrected as follows:

1. If the error is in the preprinted data: The examiner can have the technical support staff of the Technology Center make corrections in the Patent Data Portal database.
2. If the error is an applicant error: The examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.

MPEP 202 states: “Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. See MPEP § 601.05 et seq. and MPEP § 211.02(a). A petition for an unintentionally delayed benefit claim may also be required. See MPEP § 211.04.”

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.

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

A ‘new’ patent application is a nonprovisional application that has not yet received an action by the examiner. According to MPEP 203.01:

An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

It’s important to note that a request for continued examination (RCE) is not considered a new application filing.

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

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

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

For more information on RCE, visit: RCE.

According to MPEP 203.01, a ‘new’ application is defined as:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

It’s important to note that a request for continued examination (RCE) 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).

According to MPEP 203.04:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. 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).

An ‘allowed’ application has passed examination and is ready to become a patent, pending payment of necessary fees.

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.

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

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

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

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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

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

For more information on new matter, visit: new matter.

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

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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

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

For more information on new matter, visit: new matter.

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

An MPEP section may be marked as [Reserved] for several reasons:

• The topic is not currently relevant but a section is being held for potential future use
• The section was previously used but the content was moved elsewhere in the MPEP
• The section is a placeholder to maintain a desired numbering scheme

The ‘[Reserved]’ designation in MPEP 212 indicates that this section is currently not in use but is being held for potential future content. It does not contain any specific information or guidance at this time.

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

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

When reviewing a claim to foreign priority, the examiner generally checks the following:

• That the papers contain no obvious formal defects
• That the papers correspond in number, date and country to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely

The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)

Title reports are not typically used in routine patent examination. The MPEP clarifies: Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. For instance, title reports may be requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Examiners can obtain title reports through the USPTO’s internal PALM Intranet system when necessary.

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

For more information on title report, visit: title report.

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

MPEP 319 is currently a reserved section in the Manual of Patent Examining Procedure (MPEP). The content of this section is marked as ‘[Reserved]’, which means that there is no specific information or guidance provided in this particular section at this time.

All relevant information from MPEP 323.01(b) – Typographical Errors in Recorded Assignment Document has been covered in previous FAQs. No additional meaningful questions can be generated without repetition.

To learn more:

• patent assignments
• typographical errors
• document correction

To learn more:

• MPEP
• patent examination
• cited references

All relevant information from MPEP 323.01 – Correction of Error in Recorded Cover Sheet has been covered in previous FAQs. No further meaningful questions can be generated without redundancy.

To learn more:

• MPEP
• patent
• cover sheet
• correction

To learn more:

• power of attorney
• assignee rights
• patent application

To learn more:

• skepticism of experts
• non-obviousness
• patent examination

A title report plays a crucial role in the patent examination process by providing essential ownership information. According to the MPEP Section 320, “The title report is placed in the file wrapper.” This means that:

• Examiners have access to the most current ownership information
• It helps ensure that communications are sent to the correct parties
• It assists in identifying potential issues related to inventorship or ownership

By having accurate ownership information, the examination process can proceed more efficiently and with fewer complications related to ownership disputes or incorrect parties being involved in the process.

For more information on ownership information, visit: ownership information.

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

For more information on title report, visit: title report.

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

MPEP 319 is currently a reserved section in the Manual of Patent Examining Procedure (MPEP). The content of this section is marked as ‘[Reserved]’, which means that there is no specific information or guidance provided in this particular section at this time.

Title reports are not typically used in routine patent examination. The MPEP clarifies: Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. For instance, title reports may be requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Examiners can obtain title reports through the USPTO’s internal PALM Intranet system when necessary.

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

For more information on title report, visit: title report.

A title report plays a crucial role in the patent examination process by providing essential ownership information. According to the MPEP Section 320, “The title report is placed in the file wrapper.” This means that:

• Examiners have access to the most current ownership information
• It helps ensure that communications are sent to the correct parties
• It assists in identifying potential issues related to inventorship or ownership

By having accurate ownership information, the examination process can proceed more efficiently and with fewer complications related to ownership disputes or incorrect parties being involved in the process.

For more information on ownership information, visit: ownership information.

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

For more information on title report, visit: title report.

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

What is the role of a patent practitioner during an interview with the USPTO?

A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:

• Representing the applicant or patent owner
• Discussing the merits of the application or patent
• Providing clarifications on the invention
• Negotiating potential claim amendments
• Addressing any concerns raised by the examiner

The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.

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

To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:

1. Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
2. The form should identify the participants of the interview.
3. Propose a date for the interview.
4. Specify whether the interview will be personal, telephonic, or via video conference.
5. Include a brief description of the issues to be discussed.

As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This procedure helps ensure productive and efficient interviews.

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

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

MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.

What are the restrictions on registered practitioners not of record during USPTO interviews?

Registered practitioners who are not of record for a specific patent application face certain restrictions when attending USPTO interviews. According to MPEP 408:

‘The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’

This means that while a practitioner not of record may accompany the practitioner of record to an interview, their participation is limited. They cannot actively engage in the discussion or negotiation process without explicit authorization from the patent applicant. This restriction is in place to ensure that the applicant’s interests are properly represented by their chosen practitioner of record and to maintain the integrity of the interview process.

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

For more information on practitioner of record, visit: practitioner of record.

For more information on registered practitioner, visit: registered practitioner.

When conducting interviews with inventors or assignees, examiners must adhere to specific requirements:

• The practitioner of record must authorize and be present for the interview.
• Inventors or assignees cannot participate without the practitioner’s presence.
• Examiners should not conduct interviews directly with inventors or assignees alone.

According to the MPEP 408: ‘Interviews with inventors or assignees and/or their attorneys or agents of record must be authorized by the practitioners of record. The practitioner of record must be present and an examiner may not conduct an interview with an inventor or assignee unless the practitioner is present.’

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

When handling interview requests from practitioners not of record, examiners should follow these guidelines:

• Verify the requester’s authority to conduct the interview.
• Ensure the practitioner of record has authorized the interview.
• If authorization is not provided, decline the interview request.

The MPEP 408 states: ‘Interviews with practitioners not of record should be conducted only with the consent of the practitioner of record.’ It further advises: ‘An examiner should not conduct an interview with an attorney or agent who is not of record unless the attorney or agent presents either a power of attorney or a letter signed by the attorney or agent of record authorizing the interview.’

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

When handling interview requests from multiple attorneys or agents, examiners should follow these guidelines:

• Generally, only one interview is granted per application.
• If multiple practitioners request interviews, coordinate with the practitioner of record.
• Additional interviews may be granted at the examiner’s discretion.

The MPEP 408 states: ‘An interview should normally be conducted with the attorney or agent of record in an application.’ It further advises: ‘If more than one attorney or agent request an interview in an application, it is the responsibility of the attorney or agent of record to resolve any conflict.’

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

For more information on practitioner of record, visit: practitioner of record.

The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:

• Changes in patent laws or regulations
• New court decisions affecting patent examination
• Evolving USPTO policies and procedures
• Feedback from patent examiners and practitioners

Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.

How does the USPTO handle interviews for applications with multiple practitioners of record?

The USPTO has specific guidelines for handling interviews when multiple practitioners are of record for a patent application. MPEP 408 provides guidance on this situation:

‘Where a registered practitioner has been given a power of attorney or authorization of agent, only that practitioner, a practitioner appointed in an associate power of attorney or authorization of agent, or another registered practitioner who has the permission of one of the aforementioned practitioners may conduct an interview.’

This means that when multiple practitioners are of record, any one of them can conduct the interview. However, it’s important to note that clear communication between the practitioners is crucial to ensure consistent representation of the applicant’s interests. The USPTO typically communicates with the practitioner who initiated the interview or the one designated as the primary contact for the application.

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

For more information on power of attorney, visit: power of attorney.

The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:

• They maintain consistent numbering in the MPEP, aiding navigation and referencing
• They allow for future expansion of examination guidelines without major restructuring
• They serve as potential indicators of areas where the USPTO may develop new policies or procedures

Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.

Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:

• Refer to active, non-reserved sections of the MPEP
• Consult the most recent USPTO guidelines and notices
• Stay updated on changes to patent laws and regulations
• Seek guidance from official USPTO sources when needed

It’s important to always use the most current and official information when dealing with patent matters.

Can a patent applicant attend an interview with the USPTO without their practitioner?

While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:

‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’

This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.

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

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

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.

The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:

• Changes in patent laws or regulations
• New court decisions affecting patent examination
• Evolving USPTO policies and procedures
• Feedback from patent examiners and practitioners

Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.

The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:

• They maintain consistent numbering in the MPEP, aiding navigation and referencing
• They allow for future expansion of examination guidelines without major restructuring
• They serve as potential indicators of areas where the USPTO may develop new policies or procedures

Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.

Patent practitioners should not rely on information from reserved MPEP sections, as these sections do not contain any official guidance or information. A reserved section, such as MPEP 404, is essentially a placeholder and does not provide any substantive content. Practitioners should instead:

• Refer to active, non-reserved sections of the MPEP
• Consult the most recent USPTO guidelines and notices
• Stay updated on changes to patent laws and regulations
• Seek guidance from official USPTO sources when needed

It’s important to always use the most current and official information when dealing with patent matters.

What is the role of a patent practitioner during an interview with the USPTO?

A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:

• Representing the applicant or patent owner
• Discussing the merits of the application or patent
• Providing clarifications on the invention
• Negotiating potential claim amendments
• Addressing any concerns raised by the examiner

The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.

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

To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:

1. Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
2. The form should identify the participants of the interview.
3. Propose a date for the interview.
4. Specify whether the interview will be personal, telephonic, or via video conference.
5. Include a brief description of the issues to be discussed.

As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This procedure helps ensure productive and efficient interviews.

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

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

What are the restrictions on registered practitioners not of record during USPTO interviews?

Registered practitioners who are not of record for a specific patent application face certain restrictions when attending USPTO interviews. According to MPEP 408:

‘The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’

This means that while a practitioner not of record may accompany the practitioner of record to an interview, their participation is limited. They cannot actively engage in the discussion or negotiation process without explicit authorization from the patent applicant. This restriction is in place to ensure that the applicant’s interests are properly represented by their chosen practitioner of record and to maintain the integrity of the interview process.

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

For more information on practitioner of record, visit: practitioner of record.

For more information on registered practitioner, visit: registered practitioner.

When conducting interviews with inventors or assignees, examiners must adhere to specific requirements:

• The practitioner of record must authorize and be present for the interview.
• Inventors or assignees cannot participate without the practitioner’s presence.
• Examiners should not conduct interviews directly with inventors or assignees alone.

According to the MPEP 408: ‘Interviews with inventors or assignees and/or their attorneys or agents of record must be authorized by the practitioners of record. The practitioner of record must be present and an examiner may not conduct an interview with an inventor or assignee unless the practitioner is present.’

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

When handling interview requests from practitioners not of record, examiners should follow these guidelines:

• Verify the requester’s authority to conduct the interview.
• Ensure the practitioner of record has authorized the interview.
• If authorization is not provided, decline the interview request.

The MPEP 408 states: ‘Interviews with practitioners not of record should be conducted only with the consent of the practitioner of record.’ It further advises: ‘An examiner should not conduct an interview with an attorney or agent who is not of record unless the attorney or agent presents either a power of attorney or a letter signed by the attorney or agent of record authorizing the interview.’

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

When handling interview requests from multiple attorneys or agents, examiners should follow these guidelines:

• Generally, only one interview is granted per application.
• If multiple practitioners request interviews, coordinate with the practitioner of record.
• Additional interviews may be granted at the examiner’s discretion.

The MPEP 408 states: ‘An interview should normally be conducted with the attorney or agent of record in an application.’ It further advises: ‘If more than one attorney or agent request an interview in an application, it is the responsibility of the attorney or agent of record to resolve any conflict.’

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

For more information on practitioner of record, visit: practitioner of record.

How does the USPTO handle interviews for applications with multiple practitioners of record?

The USPTO has specific guidelines for handling interviews when multiple practitioners are of record for a patent application. MPEP 408 provides guidance on this situation:

‘Where a registered practitioner has been given a power of attorney or authorization of agent, only that practitioner, a practitioner appointed in an associate power of attorney or authorization of agent, or another registered practitioner who has the permission of one of the aforementioned practitioners may conduct an interview.’

This means that when multiple practitioners are of record, any one of them can conduct the interview. However, it’s important to note that clear communication between the practitioners is crucial to ensure consistent representation of the applicant’s interests. The USPTO typically communicates with the practitioner who initiated the interview or the one designated as the primary contact for the application.

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

For more information on power of attorney, visit: power of attorney.

Can a patent applicant attend an interview with the USPTO without their practitioner?

While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:

‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’

This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.

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

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

PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.

To learn more:

• PSTAR
• patent examination
• application routing
• USPTO

Nonprovisional patent applications are assigned for examination through the Patents Service for Time and Application Routing (PSTAR) program. According to MPEP 504, “The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner.” This system ensures that each application is routed to an appropriate examiner based on factors such as the application’s subject matter and the examiner’s expertise.

To learn more:

• nonprovisional applications
• patent examination
• PSTAR
• USPTO

No, provisional patent applications are not examined. The MPEP 504 clearly states: “Provisional applications will not be examined.” Provisional applications serve as a placeholder to establish a priority date and are not subject to substantive examination by the USPTO.

To learn more:

• provisional applications
• patent examination
• USPTO

No, provisional patent applications are not assigned to examiners for examination. MPEP 504 explicitly states: “Provisional applications will not be examined.” This is because provisional applications are primarily used to establish a priority date and are not subject to substantive examination.

PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.

To learn more:

• PSTAR
• patent examination
• application routing
• USPTO

Nonprovisional patent applications are assigned for examination through the Patents Service for Time and Application Routing (PSTAR) program. According to MPEP 504, “The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner.” This system ensures that each application is routed to an appropriate examiner based on factors such as the application’s subject matter and the examiner’s expertise.

To learn more:

• nonprovisional applications
• patent examination
• PSTAR
• USPTO

No, provisional patent applications are not examined. The MPEP 504 clearly states: “Provisional applications will not be examined.” Provisional applications serve as a placeholder to establish a priority date and are not subject to substantive examination by the USPTO.

To learn more:

• provisional applications
• patent examination
• USPTO

No, provisional patent applications are not assigned to examiners for examination. MPEP 504 explicitly states: “Provisional applications will not be examined.” This is because provisional applications are primarily used to establish a priority date and are not subject to substantive examination.

An MPEP section may be marked as [Reserved] for several reasons:

• The topic is not currently relevant but a section is being held for potential future use
• The section was previously used but the content was moved elsewhere in the MPEP
• The section is a placeholder to maintain a desired numbering scheme

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

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

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

Patent examiners should use MPEP ¶ 2.06 when they encounter an application that appears to qualify as a continuation-in-part (CIP) but lacks a proper benefit claim. The paragraph itself provides guidance:

This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.

Examiners use this paragraph to notify applicants that their application might be eligible for CIP status and to direct them to the proper procedures for claiming the benefit of the prior application’s filing date if desired.

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

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

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.

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

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.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

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 examination, visit: patent examination.

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

A patent application stops being considered ‘new’ when it receives its first action from the examiner. According to MPEP 203.01:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This implies that once the examiner issues any official communication or action on the merits of the application, such as a non-final rejection or a notice of allowance, the application is no longer considered ‘new’ in the patent examination process.

To learn more:

• new application
• patent examination
• examiner action
• application status

An examiner can change the title of a patent application at various stages of the examination process. According to MPEP 606.01, “If a satisfactory title is not supplied by the applicant, the examiner may, at the time of allowance, change the title by an examiner’s amendment.” This typically occurs when the original title is not descriptive of the claimed invention, and the applicant has not provided a suitable alternative.

To learn more:

• Patent Examination
• Title Change
• Examiner’s Amendment

Title reports are not typically used in routine patent examination. The MPEP clarifies: Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. For instance, title reports may be requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Examiners can obtain title reports through the USPTO’s internal PALM Intranet system when necessary.

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

For more information on title report, visit: title report.

According to MPEP 608.02(x), drawing corrections or changes are generally accepted at the time they are presented, unless the applicant is notified otherwise by the examiner in the subsequent Office action. The MPEP states:

“Drawing corrections or changes will be entered at the time they are presented, unless applicant is notified to the contrary by the examiner in the action following the amended drawing submission.”

This means that applicants can typically assume their drawing corrections have been accepted unless they receive specific notification stating otherwise.

To learn more:

• drawing corrections
• patent application
• MPEP 608.02(x)
• patent examination

To learn more:

• MPEP 608.02(x)

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:

• drawing corrections
• patent application
• MPEP 608.02(x)
• patent examination
• Office action response

To learn more:

• MPEP 608.02(x)

When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application. This ensures that potentially sensitive information is properly handled during the examination process.

For more information on national security markings, visit: national security markings.

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

When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.

The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met. (MPEP 202)

This means the examiner should:

• Review the foreign priority claim
• Determine if all conditions for the claim have been satisfied
• Indicate the status of the claim in the Office action
• Mark the bib-data sheet accordingly

If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.

For more information on foreign priority, visit: foreign priority.

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

What should an examiner do if an IDS is filed after the first Office action?

If an Information Disclosure Statement (IDS) is filed after the first Office action, the examiner should follow these steps:

• Check if the IDS complies with the requirements of 37 CFR 1.97(c) and 37 CFR 1.97(e).
• Ensure that the appropriate fee or certification is included.
• If compliant, consider the information submitted in the IDS.
• If necessary, issue a supplemental Office action addressing any newly cited references.

As stated in MPEP 609.01: ‘The examiner should consider the information submitted in an IDS in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search.’

To learn more:

• IDS
• Office action
• examiner procedure
• patent examination

An examiner should check the following on the bib-data sheet regarding prior applications:

1. Accuracy of prior application data, including provisional application data
2. Whether the application is copending with prior nonprovisional applications for which benefit is claimed
3. Correct application numbers of provisional applications for which benefit is claimed
4. Proper listing of foreign applications qualifying for benefits under 35 U.S.C. 119(a)-(d)

MPEP 202 instructs: “Where the data is correct, the examiner should initial the bib-data sheet in the provided space. Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate.”

What is the significance of the three-month period for IDS submission?

The three-month period for Information Disclosure Statement (IDS) submission is significant because it determines whether additional requirements apply:

• IDS filed within three months of the filing date of a national application or entry of the national stage: No additional requirements
• IDS filed after three months: Requires either a certification or fee

According to MPEP 609.04(b): “(1) The information disclosure statement is filed within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);” This three-month window provides applicants with an opportunity to submit an IDS without additional burdens, encouraging early disclosure of relevant information.

If an applicant misses this three-month window, they must either:

• Provide a certification under 37 CFR 1.97(e), stating that the information was first cited in a communication from a foreign patent office or discovered within three months of the filing date, or
• Pay the fee set forth in 37 CFR 1.17(p)

This policy aims to balance the need for timely disclosure with the practicalities of gathering and submitting relevant information during the patent application process.

To learn more:

• IDS
• Three-Month Period
• Patent Examination
• IDS Timing

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

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

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

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

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

What is the significance of the examiner’s initials on an IDS?

The examiner’s initials on an Information Disclosure Statement (IDS) are significant because they indicate that:

• The examiner has considered the cited reference.
• The reference has been made of record in the application file.
• The applicant has fulfilled their duty of disclosure for that particular reference.

According to MPEP 609.05(b): ‘The examiner will initial each reference considered. The initials indicate that the information has been considered by the examiner in the same manner as information submitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.’

It’s important to note that the examiner’s initials do not indicate the examiner agrees with the applicant’s interpretation of the reference or its relevance. They simply confirm that the examiner has reviewed the citation as required by USPTO procedures.

To learn more:

• IDS
• examiner initials
• patent examination
• duty of disclosure

What is the role of a patent practitioner during an interview with the USPTO?

A patent practitioner plays a crucial role during an interview with the USPTO. According to MPEP 408, the practitioner is responsible for:

• Representing the applicant or patent owner
• Discussing the merits of the application or patent
• Providing clarifications on the invention
• Negotiating potential claim amendments
• Addressing any concerns raised by the examiner

The MPEP states: ‘Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference centers.’ This underscores the formal nature of these interactions and the importance of the practitioner’s role in facilitating productive discussions with the examiner.

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

The Manual of Patent Examining Procedure (MPEP) serves as a comprehensive guide for patent examiners, applicants, attorneys, and agents involved in the patent application process. According to MPEP 101, its purpose is to:

• Provide instructions to examiners for the examination of patent applications
• Outline procedures for processing and examining patent applications
• Serve as a reference work on patent laws, rules, and examination practices

The MPEP states: The Manual contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.

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

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

The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states:

Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.

This paragraph helps examiners address situations where applicants have named new inventors in a CPA without following the proper procedure. It reminds both examiners and applicants that a formal request under 37 CFR 1.48 is required to change inventorship, even in a CPA.

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

• It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

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

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

• It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

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

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

MPEP ¶ 2.05 Possible Status as Continuation serves as a guideline for patent examiners when handling applications that may qualify as continuations. Its primary purpose is to:

• Instruct examiners on how to handle applications that disclose and claim only subject matter disclosed in a prior application
• Provide language for examiners to use when notifying applicants about the possible status of their application as a continuation
• Ensure proper classification and processing of continuation applications

The MPEP states: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application. Accordingly, this application may constitute a continuation or division.” (MPEP ¶ 2.05)

This guidance helps maintain consistency in the examination process and ensures that applicants are properly informed about the potential status of their applications.

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

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

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

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

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

The provision in MPEP 608.02(w) allowing minor drawing changes without requiring annotated sheets from the applicant serves several purposes:

• Streamlines the patent examination process
• Reduces administrative burden on applicants
• Allows for quick resolution of minor drawing issues
• Facilitates efficient preparation of applications for issue

The MPEP states: Where an application is ready for issue except for a slight defect in the drawing not involving change in structure, the examiner will prepare a letter to the applicant indicating the change to be made…

This approach ensures that minor drawing corrections can be made efficiently, without delaying the issuance of patents due to small, easily resolvable issues in the drawings.

To learn more:

• patent drawings
• drawing changes
• patent examination
• USPTO
• MPEP

To initiate an interview with a patent examiner, applicants should follow a specific procedure outlined in MPEP § 408:

1. Submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) to the examiner prior to the interview.
2. The form should identify the participants of the interview.
3. Propose a date for the interview.
4. Specify whether the interview will be personal, telephonic, or via video conference.
5. Include a brief description of the issues to be discussed.

As stated in the MPEP, When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This procedure helps ensure productive and efficient interviews.

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

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

Replacement drawings in a patent application are typically entered into the contents of the application routinely. However, the examiner will review them for several factors:

• Presence of new matter
• Necessity of the replacement sheets
• Consistency with other sheets

As stated in MPEP 608.02(h): “All sheets of replacement drawings will be routinely entered into the contents of the application. However, the examiner should not overlook such factors as new matter, the necessity for the replacement sheets and consistency with other sheets.”

If the examiner decides not to enter the replacement drawings, they must provide a complete and explicit reasoning for the denial. The applicant will be notified of this decision, and the previously made entries will be marked ‘not entered’.

To learn more:

• Replacement Drawings
• Patent Application
• Patent Examination
• Drawing Requirements

When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.

According to MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”

To challenge the examiner’s holding of new matter in the specification:

1. Prepare a detailed petition explaining why the amendment does not introduce new matter.
2. Submit the petition to the USPTO, following the guidelines for petition submission.
3. The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
4. A decision will be issued either granting or denying the petition.

It’s important to note that this process is separate from the appeal process used for claim rejections.

To learn more:

• new matter
• specification amendments
• petition process
• patent examination

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

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

An examiner’s consideration of documents listed in an Information Disclosure Statement (IDS) is as follows:

• Documents are considered in the same manner as other documents in Office search files.
• The examiner conducts a proper field of search.
• For non-English language documents, consideration is limited to what can be understood from the concise statement and any drawings or chemical formulas.

The MPEP states: Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. (MPEP 609.05(b))

Regarding non-English documents, the Federal Circuit has noted: [A]s MPEP Section 609C(2) reveals, the examiner’s understanding of a foreign reference is generally limited to that which he or she can glean from the applicant’s concise statement…Consequently, while the examiner’s initials require that we presume that he or she considered the [foreign] reference, this presumption extends only to the examiner’s consideration of the brief translated portion and the concise statement. (Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1377-78, 54 USPQ2d 1001, 1008 (Fed. Cir. 2000))

To learn more:

• IDS consideration
• patent examination
• prior art search
• non-English documents

What is the examiner’s responsibility regarding NPL citations in an IDS?

Examiners have specific responsibilities when handling Non-Patent Literature (NPL) citations in an Information Disclosure Statement (IDS):

• The examiner should indicate that all references have been considered, except where lined through.
• For NPL, the examiner should ensure that bibliographic information is complete and legible.
• If bibliographic information is not complete and legible, the examiner may choose not to consider the reference.

The MPEP 609.05(b) states: “The examiner must also consider all the information properly submitted in an IDS in the same manner that the examiner considers other documents in Office search files while conducting a search of the prior art in a proper field of search.”

Additionally, “If an item of information in an IDS fails to comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98, that item of information in the IDS will not be considered and a line should be drawn through the citation to show that it has not been considered.”

To learn more:

• IDS
• NPL citations
• patent examination
• MPEP

What is the examiner’s responsibility regarding non-compliant IDSs?

When an examiner encounters a non-compliant Information Disclosure Statement (IDS), they have specific responsibilities:

• The examiner must inform the applicant of the non-compliance in the next Office action.
• The examiner should clearly indicate which requirements have not been met.
• The non-compliant IDS will be placed in the application file but will not be considered by the examiner.

As stated in MPEP 609.05(a): ‘If an information disclosure statement does not comply with the requirements based on the time of filing of the IDS (37 CFR 1.97) and/or the content requirements (37 CFR 1.98), the examiner should: (A) inform applicant in the next Office action that the information disclosure statement has been placed in the application file but has not been considered; and (B) inform applicant of the reasons for non-compliance.’ This ensures that the applicant is aware of the issue and has an opportunity to correct it or submit a compliant IDS.

To learn more:

• IDS
• Non-Compliant IDS
• Patent Examination
• Information Disclosure Statement

The distinction between petitioning and appealing a new matter rejection is crucial in patent prosecution:

• Petition: Used when new matter is confined to amendments in the specification.
• Appeal: Required when new matter affects the claims, leading to their rejection.

According to MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one…”

This means that even if new matter is introduced in both the specification and claims, the claim-related issues must be addressed through the appeal process, not by petition.

To learn more:

• new matter
• patent examination
• petition
• appeal
• specification amendments
• claim amendments

According to the MPEP, there is no substantial difference between an ‘allowed’ application and an application ‘in issue’. The MPEP uses these terms interchangeably:

“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”

Both terms refer to an application that has passed examination and is awaiting issuance as a patent, provided that all necessary fees are paid and no issues arise that would necessitate withdrawal from issue.

To learn more:

• allowed application
• application in issue
• patent examination
• notice of allowance

An ‘allowed’ application is a nonprovisional patent application that has been examined and determined to meet all statutory requirements. The Manual of Patent Examining Procedure (MPEP) states:

“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”

This means that the patent examiner has reviewed the application and found it to be in compliance with all applicable laws and regulations, and has subsequently issued a notice of allowance to the applicant.

To learn more:

• allowed application
• patent examination
• notice of allowance
• statutory requirements

PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.

To learn more:

• PSTAR
• patent examination
• application routing
• USPTO

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

MPEP 319 is currently a reserved section in the Manual of Patent Examining Procedure (MPEP). The content of this section is marked as ‘[Reserved]’, which means that there is no specific information or guidance provided in this particular section at this time.

Form Paragraph 6.17 is a tool used by patent examiners to notify applicants about issues with claim numbering. According to MPEP 608.01(j), this form paragraph is titled “Numbering of Claims, 37 CFR 1.126” and is used when the numbering of claims does not comply with the regulations. The paragraph states:

“The numbering of claims is not in accordance with 37 CFR 1.126, which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).”

This form paragraph helps examiners communicate clearly with applicants about claim numbering issues and ensures compliance with USPTO regulations.

To learn more:

• Form Paragraph 6.17
• claim numbering
• patent examination
• USPTO communication

To learn more:

• Form Paragraph 6.17

Form Paragraph 2.34 is a standardized response used by patent examiners when addressing improper amendments to Continued Prosecution Applications (CPAs). According to MPEP § 201.06(d), this form paragraph is specifically used to:

“inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The form paragraph explains that such amendments are unnecessary because the CPA request itself serves as the specific reference required by 35 U.S.C. 120. It helps maintain consistency in examiner responses and ensures that applicants are properly informed about the treatment of these amendments in CPA applications.

For more information on CPA, visit: CPA.

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

Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Patent Examination

A ‘new’ patent application is a nonprovisional application that has not yet received an action by the examiner. According to MPEP 203.01:

An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

It’s important to note that a request for continued examination (RCE) is not considered a new application filing.

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

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

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

For more information on RCE, visit: RCE.

According to MPEP 203.01, a ‘new’ application is defined as:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application.

It’s important to note that a request for continued examination (RCE) is not considered a new application filing.

An ‘amended’ nonprovisional patent application is one that has undergone a specific process in the examination procedure. According to MPEP 203.03:

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.

In simpler terms, it means that after the patent examiner has reviewed and responded to the application, the applicant has then taken some action in response to the examiner’s feedback.

To learn more:

• amended application
• nonprovisional application
• patent examination
• patent prosecution

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

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

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

When citing a prior application using MPEP ¶ 2.05, specific information must be included. The MPEP instructs examiners:

“In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.”

This means that when referencing a prior application, the examiner should provide:

• The application number, including both the series code and serial number
• The filing date of the prior application

Including this information ensures clear identification of the specific prior application being referenced.

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

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

For foreign priority applications, the bib-data sheet should include:

• Application number
• Country (or intellectual property authority)
• Day, month, and year of filing

MPEP 202 specifies: “A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy.”

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. Applications from non-qualifying countries should be lined through on the bib-data sheet.

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

• Advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request
• Confirm that the CPA is acceptable and has been established
• Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.” Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

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

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

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

The MPEP clearly states: “All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62.”

This means that applications filed under the File Wrapper Continuing Procedure before its deletion will be processed according to the rules that were in place at the time of filing. For more detailed information on these procedures, you can refer to the MPEP 8th Edition, Rev. 1 (February 2003), which is available on the USPTO website.

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

If the Office of Patent Application Processing (OPAP) finds patent drawings unacceptable, the following process occurs:

1. OPAP sends a Notice to File Corrected Application Papers to the applicant.
2. The applicant is given a two-month period from the mailing date to file acceptable drawings.
3. This period is extendable under 37 CFR 1.136(a).
4. The application will not be released to the Technology Centers until acceptable drawings are filed.

As stated in the MPEP: OPAP will send a Notice to File Corrected Application Papers if the drawings are unacceptable for purposes of publication. The notice will give applicant a time period of two (2) months from the mailing date of the notice to file acceptable drawings. This time period for reply is extendable under 37 CFR 1.136(a).

To learn more:

• OPAP
• unacceptable drawings
• corrected application papers
• patent examination

If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:

1. The examiner will notify the applicant in the next Office action.
2. The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).

According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.

It’s important to note that:

• Continuations and divisionals should not contain new matter relative to the prior application.
• If new matter is present, the application is more appropriately designated as a continuation-in-part.
• The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.

Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.

To learn more:

• new matter
• continuation
• divisional
• continuation-in-part
• CIP
• patent examination

If the submitted drawing corrections or changes are not accepted, the examiner will notify the applicant in the next Office action. The MPEP 608.02(x) specifies:

“Where the corrected or changed drawing is not accepted, for example, because the submitted corrections or changes are erroneous, or involve new matter or do not include all necessary corrections, the applicant will be notified and informed of any required corrective action in the next Office action.”

The examiner is required to provide a clear explanation of why the corrections were not approved and what actions the applicant needs to take to address the issues.

To learn more:

• drawing corrections
• patent application
• MPEP 608.02(x)
• patent examination
• Office action

To learn more:

• MPEP 608.02(x)

If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states:

“Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the patent examiner will not accept or incorporate such amendments into the application. The CPA itself serves as the necessary reference to the prior application, making additional amendments unnecessary and inappropriate.

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

For more information on CPA, visit: CPA.

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

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

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).

To learn more:

• untimely drawings
• application abandonment
• USPTO notices
• patent examination

When documents are submitted both as evidence in a reply to an Office action and listed on an Information Disclosure Statement (IDS) form, the examiner’s treatment may differ. The MPEP provides an example:

“For example, if applicant submits and relies on three patents as evidence in reply to the first Office action and also lists those patents on a PTO/SB/08 along with two journal articles, but does not file a statement under 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p), it would be appropriate for the examiner to indicate that the teachings relied on by applicant in the three patents have been considered, but to line through the citation of all five documents on the PTO/SB/08 and to inform applicant that the information disclosure statement did not comply with 37 CFR 1.97(c).”

In this case, the examiner would consider the evidence relied upon in the reply but would not formally consider the documents as part of the IDS due to non-compliance with IDS requirements.

To learn more:

• evidence submission
• information disclosure statement
• patent examination
• document consideration

If an item in an Information Disclosure Statement (IDS) fails to comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98, the following actions are taken:

• A line is drawn through the citation to show it has not been considered.
• Other compliant items in the IDS are still considered and initialed by the examiner.

As stated in the MPEP: If an item of information in an IDS fails to comply with requirements of 37 CFR 1.97 and 37 CFR 1.98, a line should be drawn through the citation to show that it has not been considered. The other items of information listed that do comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner and will be appropriately initialed. (MPEP 609.05(b))

To learn more:

• IDS
• non-compliant references
• patent examination
• 37 CFR 1.97
• 37 CFR 1.98

To learn more:

• 37 CFR 1.97
• 37 CFR 1.98