Patent Law FAQ

A ‘file wrapper’ refers to the official record of proceedings in the United States Patent and Trademark Office (USPTO) for a particular patent application or granted patent. It contains all the documents and correspondence related to the prosecution of the application or maintenance of the patent. This includes the original application, Office actions, applicant responses, amendments, and other relevant documents. The file wrapper provides a complete history of the examination process and is important for understanding the scope and validity of a patent.

No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.

The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

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

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

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, “a notice of allowability (Form D-10) is issued, thus closing the prosecution.” See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

Amendments in secrecy order applications require special handling to maintain security. The MPEP 130 states:

In secrecy order cases, all proposed amendments to the specification and claims, and all provisional amendments to the abstract, drawings and claims must be submitted in duplicate for security review.

Key points about handling amendments in secrecy order cases include:

• Amendments must be submitted in duplicate for security review.
• One copy of the amendment is placed in the application file.
• The other copy is forwarded to a defense agency for review.
• The defense agency determines if the amendment can be entered without breaching national security.

This process ensures that any changes to the application maintain the required level of secrecy.

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

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

Patent law recognizes several types of continuing applications. According to the MPEP:

A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.

The three main types of continuing applications are:

• Continuation: Pursues additional claims to an invention disclosed in an earlier application.
• Divisional: Separates distinct inventions from a parent application into separate applications.
• Continuation-in-part (CIP): Adds new matter to the disclosure of the earlier application.

Each type serves different purposes in patent prosecution strategy.

For more information on divisional, visit: divisional.

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

During patent prosecution, several types of affidavits or declarations may be filed. MPEP ¶ 2.03 mentions three common types:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application…”

These affidavits serve different purposes:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure
• 37 CFR 1.131: Affidavits of prior invention to overcome cited art
• 37 CFR 1.132: Affidavits traversing rejections or objections

Each of these affidavits provides specific evidence to support the patentability of an invention or to overcome rejections made by the patent examiner.

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

MPEP ¶ 2.03 mentions several types of affidavits or declarations that may be submitted during patent prosecution. Specifically, it refers to:

• Affidavits or declarations under 37 CFR 1.130 (Declaration of Attribution or Prior Public Disclosure under the AIA)
• Affidavits or declarations under 37 CFR 1.131 (Affidavit or Declaration of Prior Invention to Overcome Cited Patent or Publication)
• Affidavits or declarations under 37 CFR 1.132 (Affidavits Traversing Rejections or Objections)

These affidavits or declarations are commonly used to overcome rejections or provide evidence during patent prosecution.

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

Common types of affidavits or declarations filed in patent applications include those submitted under specific sections of the Code of Federal Regulations. As mentioned in MPEP ¶ 2.03, these include:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure under the AIA
• 37 CFR 1.131: Affidavits of prior invention to overcome cited patents or publications
• 37 CFR 1.132: Affidavits or declarations traversing rejections or objections

These affidavits or declarations serve various purposes in patent prosecution, such as establishing inventorship, overcoming prior art, or addressing examiner rejections.

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

Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

Key points about 37 CFR 1.53(d) applications:

• They are continuation or divisional applications of a nonprovisional application
• Affidavits and declarations from the parent application are automatically incorporated
• This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
• No additional action is required to include these documents in the new application

This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).

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

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

What is the relationship between a divisional application and a restriction requirement?

A divisional application is often filed in response to a restriction requirement issued by the USPTO. The MPEP 201.06 explains:

“A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.'”

The relationship between a divisional application and a restriction requirement is as follows:

• When an examiner determines that a single application contains two or more independent or distinct inventions, they may issue a restriction requirement.
• The applicant must then elect one invention to pursue in the original application.
• The non-elected invention(s) can be pursued in one or more divisional applications.
• Divisional applications allow applicants to protect multiple inventions disclosed in a single parent application without violating the principle of double patenting.

It’s important to note that while divisional applications are often filed in response to restriction requirements, they can also be filed voluntarily if the applicant recognizes distinct inventions in their application before receiving a restriction requirement.

To learn more:

• divisional application
• restriction requirement
• patent prosecution
• USPTO

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

While MPEP 203.03 specifically discusses amended nonprovisional applications, it’s important to understand the distinction between nonprovisional and provisional applications:

• Nonprovisional Application: This is a formal patent application that can result in an issued patent. It undergoes examination and can be amended, as described in MPEP 203.03.
• Provisional Application: This is a temporary application that establishes a priority date but does not undergo examination and cannot be amended.

The amended status discussed in MPEP 203.03 applies only to nonprovisional applications, as provisional applications are not examined or amended.

To learn more:

• nonprovisional application
• provisional application
• patent types
• patent prosecution

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 Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

What happens to the parent application when a divisional application is filed?

When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.

As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:

• If the parent application is pending, it remains pending and continues through the examination process.
• If the parent application has already been granted as a patent, it remains a valid patent.

It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.

Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.

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

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

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

A patent application is designated as ‘rejected’ when it contains an unanswered examiner’s action during its prosecution in the examining group and before allowance. According to MPEP 203.02:

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.

This status continues until the applicant responds to the examiner’s action or the application becomes abandoned.

To learn more:

• patent application
• rejected application
• examiner’s action
• patent prosecution

‘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

A patent application can be considered ‘abandoned’ for several reasons. According to MPEP 203.05, an abandoned application is one that is removed from the Office docket of pending applications due to:

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

It’s important for applicants to be aware of these reasons to avoid unintentional abandonment of their applications.

For more information on issue fee, visit: issue fee.

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

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

According to MPEP 203.05, a patent application can become abandoned in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Failure to take appropriate action during prosecution
• Failure to pay the issue fee
• For provisional applications, not filing a nonprovisional application within 12 months

The MPEP states: “An abandoned application is, inter alia, one which is removed from the Office docket of pending applications” due to these reasons.

To learn more:

• abandoned applications
• patent prosecution
• issue fee
• provisional applications

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

According to MPEP 203.03, an applicant has several options when responding to an 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.

These options can be broken down as follows:

• Election: Choosing between different inventions or species identified by the examiner.
• Traverse: Arguing against the examiner’s rejections or objections.
• Amendment: Modifying the application to address the examiner’s concerns or to clarify the invention.

To learn more:

• patent application response
• examiner action
• patent amendment
• patent prosecution

No, a Request for Continued Examination (RCE) is not considered a new application. The MPEP 203.01 clarifies this point:

Note that a request for continued examination (RCE)(see 37 CFR 1.114) is not a type of new application filing.

An RCE is a way to continue prosecution of an existing application after a final rejection, rather than starting a new application. For more details on RCEs, refer to MPEP § 706.07(h).

To learn more:

• RCE
• Request for Continued Examination
• new application
• patent prosecution

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 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 application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

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

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

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

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

Filing a Continued Prosecution Application (CPA) has several effects on the examination process:

• The CPA is treated as a continuation of the prior application for examination purposes
• Information Disclosure Statements from the prior application are automatically considered in the CPA
• Affidavits and declarations from the prior application carry over to the CPA
• A terminal disclaimer filed in the parent application carries over to the CPA
• For examination priority, CPAs are treated as ‘amended’ applications rather than ‘new’ applications if an Office action was issued in the prior application

MPEP 201.06(d) notes: For examination priority purposes only, the USPTO will treat continuation CPAs as if they were ‘amended’ applications (as of the CPA filing date) and not as ‘new’ applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner.

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

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

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

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

To rely on an affidavit or declaration from a prior application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To rely on a prior affidavit or declaration, an applicant should:

• Make remarks of record in the new application, referencing the prior affidavit or declaration
• Include a copy of the original affidavit or declaration from the prior application in the new application

This ensures that the examiner is aware of the prior evidence and can consider it in the context of the new application.

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

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

To ensure that affidavits or declarations from a prior application are considered in a new application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To ensure consideration, the applicant should:

• Explicitly reference the prior affidavit or declaration in the new application
• Provide a copy of the original affidavit or declaration
• Explain the relevance of the prior affidavit to the current application

This process helps the examiner understand the context and importance of the previously submitted evidence in relation to the new application.

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

This ensures that the examiner can consider the previously submitted evidence in the context of the new application.

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

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

Yes, a ‘rejected’ patent application can still be approved. The term ‘rejected’ in this context does not mean final rejection or denial of the patent. According to MPEP 203.02:

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.

This status is part of the normal examination process. The applicant has the opportunity to respond to the examiner’s action, potentially leading to approval. The application remains ‘rejected’ until:

• The applicant successfully addresses the examiner’s concerns
• The examiner issues a notice of allowance
• The application becomes abandoned

With appropriate responses and amendments, a ‘rejected’ application can progress to approval and eventual patent grant.

To learn more:

• rejected application
• patent approval
• patent examination process
• patent prosecution

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

MPEP 203.03 defines an ‘amended’ patent application as follows:

An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.

In simpler terms, an application becomes ‘amended’ when the applicant responds to an examiner’s Office action, whether by making changes to the application, arguing against the examiner’s rejections, or choosing between different inventions (election).

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. In the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant or their legal representative can submit a formal request to abandon the application, effectively ending its prosecution.

Reserved sections are relatively common in the MPEP, especially for section numbers that are being held for future use or that previously contained content that was moved. A quick scan of the MPEP Chapter 200 shows several reserved sections, such as:

• Section 203.07 [Reserved]
• Sections 204-209 [Reserved]
• Section 212 [Reserved]

Patent law recognizes several types of continuing applications. According to the MPEP:

A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.

The three main types of continuing applications are:

• Continuation: Pursues additional claims to an invention disclosed in an earlier application.
• Divisional: Separates distinct inventions from a parent application into separate applications.
• Continuation-in-part (CIP): Adds new matter to the disclosure of the earlier application.

Each type serves different purposes in patent prosecution strategy.

For more information on divisional, visit: divisional.

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

During patent prosecution, several types of affidavits or declarations may be filed. MPEP ¶ 2.03 mentions three common types:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application…”

These affidavits serve different purposes:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure
• 37 CFR 1.131: Affidavits of prior invention to overcome cited art
• 37 CFR 1.132: Affidavits traversing rejections or objections

Each of these affidavits provides specific evidence to support the patentability of an invention or to overcome rejections made by the patent examiner.

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

MPEP ¶ 2.03 mentions several types of affidavits or declarations that may be submitted during patent prosecution. Specifically, it refers to:

• Affidavits or declarations under 37 CFR 1.130 (Declaration of Attribution or Prior Public Disclosure under the AIA)
• Affidavits or declarations under 37 CFR 1.131 (Affidavit or Declaration of Prior Invention to Overcome Cited Patent or Publication)
• Affidavits or declarations under 37 CFR 1.132 (Affidavits Traversing Rejections or Objections)

These affidavits or declarations are commonly used to overcome rejections or provide evidence during patent prosecution.

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

Common types of affidavits or declarations filed in patent applications include those submitted under specific sections of the Code of Federal Regulations. As mentioned in MPEP ¶ 2.03, these include:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure under the AIA
• 37 CFR 1.131: Affidavits of prior invention to overcome cited patents or publications
• 37 CFR 1.132: Affidavits or declarations traversing rejections or objections

These affidavits or declarations serve various purposes in patent prosecution, such as establishing inventorship, overcoming prior art, or addressing examiner rejections.

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

Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

Key points about 37 CFR 1.53(d) applications:

• They are continuation or divisional applications of a nonprovisional application
• Affidavits and declarations from the parent application are automatically incorporated
• This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
• No additional action is required to include these documents in the new application

This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).

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

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

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

What happens to the parent application when a divisional application is filed?

When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.

As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:

• If the parent application is pending, it remains pending and continues through the examination process.
• If the parent application has already been granted as a patent, it remains a valid patent.

It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.

Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.

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

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

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

Filing a continuation application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

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

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

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

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

Filing a Continued Prosecution Application (CPA) has several effects on the examination process:

• The CPA is treated as a continuation of the prior application for examination purposes
• Information Disclosure Statements from the prior application are automatically considered in the CPA
• Affidavits and declarations from the prior application carry over to the CPA
• A terminal disclaimer filed in the parent application carries over to the CPA
• For examination priority, CPAs are treated as ‘amended’ applications rather than ‘new’ applications if an Office action was issued in the prior application

MPEP 201.06(d) notes: For examination priority purposes only, the USPTO will treat continuation CPAs as if they were ‘amended’ applications (as of the CPA filing date) and not as ‘new’ applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner.

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

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

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

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

To rely on an affidavit or declaration from a prior application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To rely on a prior affidavit or declaration, an applicant should:

• Make remarks of record in the new application, referencing the prior affidavit or declaration
• Include a copy of the original affidavit or declaration from the prior application in the new application

This ensures that the examiner is aware of the prior evidence and can consider it in the context of the new application.

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

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

To ensure that affidavits or declarations from a prior application are considered in a new application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To ensure consideration, the applicant should:

• Explicitly reference the prior affidavit or declaration in the new application
• Provide a copy of the original affidavit or declaration
• Explain the relevance of the prior affidavit to the current application

This process helps the examiner understand the context and importance of the previously submitted evidence in relation to the new application.

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

This ensures that the examiner can consider the previously submitted evidence in the context of the new application.

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

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

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

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).

A patent application can be considered ‘abandoned’ for several reasons. According to MPEP 203.05, an abandoned application is one that is removed from the Office docket of pending applications due to:

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

It’s important for applicants to be aware of these reasons to avoid unintentional abandonment of their applications.

For more information on issue fee, visit: issue fee.

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

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

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. In the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant or their legal representative can submit a formal request to abandon the application, effectively ending its prosecution.

Reserved sections are relatively common in the MPEP, especially for section numbers that are being held for future use or that previously contained content that was moved. A quick scan of the MPEP Chapter 200 shows several reserved sections, such as:

• Section 203.07 [Reserved]
• Sections 204-209 [Reserved]
• Section 212 [Reserved]

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

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

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

For more information on Patent examiners, visit: Patent examiners.

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

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:

“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”

This means that:

• The new assignee must file a new 37 CFR 3.73(c) statement.
• The new statement must establish the new assignee’s ownership.
• Until the new statement is filed, the previous assignee remains the party of record.

It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.

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

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

An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:

• Signing a reply to an Office action
• Requesting a continued prosecution application (CPA)
• Signing a terminal disclaimer
• Submitting a Fee(s) Transmittal form
• Requesting status of an application
• Appointing a registered patent practitioner to prosecute the application
• Granting power to inspect an application
• Consenting to the filing of a reissue application
• Consenting to the correction of inventorship

The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.

For more information on assignee rights, visit: assignee rights.

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

For more information on pre-AIA applications, visit: pre-AIA applications.

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

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

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

For more information on Patent examiners, visit: Patent examiners.

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

Limited recognition for patent matters can be granted to two main categories of individuals:

1. Non-registered individuals: As per 37 CFR 11.9(a), individuals not registered under § 11.6 may be granted limited recognition under certain circumstances.
2. Nonimmigrant aliens: According to 37 CFR 11.9(b):
   

   A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.

It’s important to note that limited recognition is granted on a case-by-case basis and is subject to specific restrictions and conditions.

To learn more:

• limited recognition
• non-registered individuals
• nonimmigrant aliens
• patent prosecution

Limited recognition in patent matters is a provision that allows certain individuals who are not registered patent practitioners to prosecute specific patent applications before the United States Patent and Trademark Office (USPTO). According to 37 CFR 11.9(a):

Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.

This means that under certain circumstances, individuals who are not registered patent attorneys or agents may be granted permission to work on specific patent applications.

To learn more:

• limited recognition
• patent prosecution
• USPTO
• OED Director

To learn more:

• patent matters

When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:

• If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
• The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
• If there are joint inventors, the surviving inventors can continue the prosecution.
• The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.

As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”

To learn more:

• deceased inventor
• patent prosecution
• legal representative
• joint inventors

The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution. When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.

To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.

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

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

How does attorney withdrawal affect pending patent applications?

When an attorney withdraws from representation in a pending patent application, it can have several implications:

• The applicant becomes responsible for prosecuting the application.
• Official correspondence will be sent directly to the applicant.
• Deadlines and response periods remain in effect.
• The applicant may need to find new representation quickly.

According to MPEP 402.06:

“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”

It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.

To learn more:

• attorney withdrawal
• pending applications
• patent prosecution
• USPTO communication

Yes, individuals granted limited recognition can file certain documents in patent applications. According to the MPEP 402.01:

Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications.

Specifically, they can file:

• A power of attorney (37 CFR 1.32(b)(4))
• A document granting access to an application (37 CFR 1.14(c))
• A change of correspondence address (37 CFR 1.33(a))
• A terminal disclaimer (37 CFR 1.321(b)(1))
• A request for an express abandonment (37 CFR 1.138(b))

However, it’s important to note that these individuals are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.

To learn more:

• limited recognition
• patent prosecution
• document filing
• USPTO

Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:

The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.

This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.

Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:

• The assignee must have originally appointed the withdrawing attorney or agent.
• The assignee becomes recognized by the Office for all purposes in the application.
• The assignee can sign amendments and other papers related to the prosecution.

The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’

It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.

To learn more:

• assignee rights
• patent prosecution
• attorney withdrawal
• USPTO procedures

The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution. When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.

To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.

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

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

Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:

The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.

This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

According to MPEP 106.01, only the assignee of record of the entire interest in a patent application can intervene in its prosecution. The MPEP states:

While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […]

This means that partial assignees, licensees of exclusive rights, or other parties with limited interests cannot intervene in the prosecution process or exclude the original applicant. The right to intervene is reserved exclusively for the assignee who has been recorded as having the entire interest in the application.

For applications filed on or after September 16, 2012, the assignee of the entire interest can also become the applicant under 37 CFR 1.46 and prosecute the application directly.

To learn more:

• patent prosecution
• assignee rights
• intervention
• patent application

Limited recognition for patent matters can be granted to two main categories of individuals:

1. Non-registered individuals: As per 37 CFR 11.9(a), individuals not registered under § 11.6 may be granted limited recognition under certain circumstances.
2. Nonimmigrant aliens: According to 37 CFR 11.9(b):
   

   A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.

It’s important to note that limited recognition is granted on a case-by-case basis and is subject to specific restrictions and conditions.

To learn more:

• limited recognition
• non-registered individuals
• nonimmigrant aliens
• patent prosecution

An Information Disclosure Statement (IDS) should be filed at different stages of patent application processing, depending on the circumstances:

• Within three months of the filing date or before the first Office action on the merits, whichever is later
• Before the mailing of a final Office action, Notice of Allowance, or an Ex parte Quayle action
• After the above periods but before payment of the issue fee
• After payment of the issue fee (with limitations)

The specific requirements and fees for filing an IDS vary depending on when it is submitted. As stated in MPEP 609.04(b): The procedures and requirements under 37 CFR 1.97 for submitting an information disclosure statement are linked to four stages in the processing of a patent application.

To learn more:

• IDS
• Information Disclosure Statement
• Patent Application
• Patent Prosecution

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

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

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

For more information on Patent examiners, visit: Patent examiners.

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

Patent law recognizes several types of continuing applications. According to the MPEP:

A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.

The three main types of continuing applications are:

• Continuation: Pursues additional claims to an invention disclosed in an earlier application.
• Divisional: Separates distinct inventions from a parent application into separate applications.
• Continuation-in-part (CIP): Adds new matter to the disclosure of the earlier application.

Each type serves different purposes in patent prosecution strategy.

For more information on divisional, visit: divisional.

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

During patent prosecution, several types of affidavits or declarations may be filed. MPEP ¶ 2.03 mentions three common types:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application…”

These affidavits serve different purposes:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure
• 37 CFR 1.131: Affidavits of prior invention to overcome cited art
• 37 CFR 1.132: Affidavits traversing rejections or objections

Each of these affidavits provides specific evidence to support the patentability of an invention or to overcome rejections made by the patent examiner.

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

MPEP ¶ 2.03 mentions several types of affidavits or declarations that may be submitted during patent prosecution. Specifically, it refers to:

• Affidavits or declarations under 37 CFR 1.130 (Declaration of Attribution or Prior Public Disclosure under the AIA)
• Affidavits or declarations under 37 CFR 1.131 (Affidavit or Declaration of Prior Invention to Overcome Cited Patent or Publication)
• Affidavits or declarations under 37 CFR 1.132 (Affidavits Traversing Rejections or Objections)

These affidavits or declarations are commonly used to overcome rejections or provide evidence during patent prosecution.

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

Common types of affidavits or declarations filed in patent applications include those submitted under specific sections of the Code of Federal Regulations. As mentioned in MPEP ¶ 2.03, these include:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure under the AIA
• 37 CFR 1.131: Affidavits of prior invention to overcome cited patents or publications
• 37 CFR 1.132: Affidavits or declarations traversing rejections or objections

These affidavits or declarations serve various purposes in patent prosecution, such as establishing inventorship, overcoming prior art, or addressing examiner rejections.

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

Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

Key points about 37 CFR 1.53(d) applications:

• They are continuation or divisional applications of a nonprovisional application
• Affidavits and declarations from the parent application are automatically incorporated
• This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
• No additional action is required to include these documents in the new application

This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).

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

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

What is the relationship between a divisional application and a restriction requirement?

A divisional application is often filed in response to a restriction requirement issued by the USPTO. The MPEP 201.06 explains:

“A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.'”

The relationship between a divisional application and a restriction requirement is as follows:

• When an examiner determines that a single application contains two or more independent or distinct inventions, they may issue a restriction requirement.
• The applicant must then elect one invention to pursue in the original application.
• The non-elected invention(s) can be pursued in one or more divisional applications.
• Divisional applications allow applicants to protect multiple inventions disclosed in a single parent application without violating the principle of double patenting.

It’s important to note that while divisional applications are often filed in response to restriction requirements, they can also be filed voluntarily if the applicant recognizes distinct inventions in their application before receiving a restriction requirement.

To learn more:

• divisional application
• restriction requirement
• patent prosecution
• USPTO

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

While MPEP 203.03 specifically discusses amended nonprovisional applications, it’s important to understand the distinction between nonprovisional and provisional applications:

• Nonprovisional Application: This is a formal patent application that can result in an issued patent. It undergoes examination and can be amended, as described in MPEP 203.03.
• Provisional Application: This is a temporary application that establishes a priority date but does not undergo examination and cannot be amended.

The amended status discussed in MPEP 203.03 applies only to nonprovisional applications, as provisional applications are not examined or amended.

To learn more:

• nonprovisional application
• provisional application
• patent types
• patent prosecution

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

Limited recognition in patent matters is a provision that allows certain individuals who are not registered patent practitioners to prosecute specific patent applications before the United States Patent and Trademark Office (USPTO). According to 37 CFR 11.9(a):

Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.

This means that under certain circumstances, individuals who are not registered patent attorneys or agents may be granted permission to work on specific patent applications.

To learn more:

• limited recognition
• patent prosecution
• USPTO
• OED Director

To learn more:

• patent matters

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

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 Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

A ‘file wrapper’ refers to the official record of proceedings in the United States Patent and Trademark Office (USPTO) for a particular patent application or granted patent. It contains all the documents and correspondence related to the prosecution of the application or maintenance of the patent. This includes the original application, Office actions, applicant responses, amendments, and other relevant documents. The file wrapper provides a complete history of the examination process and is important for understanding the scope and validity of a patent.

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, “a notice of allowability (Form D-10) is issued, thus closing the prosecution.” See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

What happens to the parent application when a divisional application is filed?

When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.

As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:

• If the parent application is pending, it remains pending and continues through the examination process.
• If the parent application has already been granted as a patent, it remains a valid patent.

It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.

Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.

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

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

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

After patent prosecution, the handling of models, exhibits, or specimens depends on their nature and the applicant’s wishes. According to MPEP 608.03(a):

‘Upon conclusion of the prosecution of the application, model, exhibit, or specimen, unless the model, exhibit, or specimen has been destroyed during prosecution, the model, exhibit, or specimen may be returned to the applicant upon request and at applicant’s expense.’

If the applicant doesn’t request their return, the USPTO may dispose of them. It’s important for applicants to communicate their wishes regarding these items after prosecution.

To learn more:

• models
• exhibits
• specimens
• patent prosecution
• USPTO procedures

When claims are canceled during the patent prosecution process, it’s important to note that the remaining claims should not be renumbered. This is explicitly stated in MPEP 608.01(j):

“When claims are canceled the remaining claims must not be renumbered.”

This rule helps maintain consistency and clarity throughout the prosecution process, allowing for easy tracking of claim history and amendments. It’s crucial for patent applicants and attorneys to adhere to this guideline to avoid confusion and potential issues with the USPTO.

To learn more:

• claim cancellation
• patent prosecution
• claim numbering
• USPTO rules

If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:

“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”

This means that:

• The new assignee must file a new 37 CFR 3.73(c) statement.
• The new statement must establish the new assignee’s ownership.
• Until the new statement is filed, the previous assignee remains the party of record.

It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.

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

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

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

A patent application is designated as ‘rejected’ when it contains an unanswered examiner’s action during its prosecution in the examining group and before allowance. According to MPEP 203.02:

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.

This status continues until the applicant responds to the examiner’s action or the application becomes abandoned.

To learn more:

• patent application
• rejected application
• examiner’s action
• patent prosecution

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).

‘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

What are the requirements for submitting an IDS after the first Office action?

When submitting an Information Disclosure Statement (IDS) after the first Office action on the merits, additional requirements apply:

• Timing: The IDS must be filed before the mailing date of a final action, notice of allowance, or other action that closes prosecution.
• Statement: The IDS must be accompanied by one of the following:
  • A statement specified in 37 CFR 1.97(e)
  • The fee set forth in 37 CFR 1.17(p)

As stated in MPEP 609: “An information disclosure statement will be considered by the examiner if filed after the first Office action on the merits, but before the mailing date of any of a final action under 37 CFR 1.113, a notice of allowance under 37 CFR 1.311, or an action that otherwise closes prosecution in the application.”

It’s crucial to comply with these requirements to ensure the IDS is considered by the examiner.

To learn more:

• IDS
• Information Disclosure Statement
• Office action
• Patent prosecution

A patent application can be considered ‘abandoned’ for several reasons. According to MPEP 203.05, an abandoned application is one that is removed from the Office docket of pending applications due to:

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

It’s important for applicants to be aware of these reasons to avoid unintentional abandonment of their applications.

For more information on issue fee, visit: issue fee.

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

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

According to MPEP 203.05, a patent application can become abandoned in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Failure to take appropriate action during prosecution
• Failure to pay the issue fee
• For provisional applications, not filing a nonprovisional application within 12 months

The MPEP states: “An abandoned application is, inter alia, one which is removed from the Office docket of pending applications” due to these reasons.

To learn more:

• abandoned applications
• patent prosecution
• issue fee
• provisional applications

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

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

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

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

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

To learn more:

• patent drawings
• drawing objections
• application abandonment
• patent prosecution

What are the consequences of improper dependent claims in a patent application?

Improper dependent claims in a patent application can have several negative consequences:

• Rejection by USPTO: The patent examiner may reject claims that don’t comply with dependency requirements.
• Delayed prosecution: Addressing improper dependencies can prolong the patent examination process.
• Increased costs: Additional office actions and responses may be needed to correct claim issues.
• Weakened patent protection: Improperly drafted claims may not provide the intended scope of protection.
• Potential invalidity: In extreme cases, improper dependencies could lead to claim invalidity if challenged in court.

The MPEP 608.01(n) emphasizes the importance of proper claim dependency:

“If the base claim is rejected, canceled, or withdrawn from consideration, any claim depending therefrom should be presented in independent form.”

This guidance underscores the need for careful claim drafting and ongoing attention to claim dependencies throughout the patent prosecution process. Ensuring proper claim structure and dependencies is crucial for obtaining strong, enforceable patent protection.

To learn more:

• improper dependent claims
• patent application
• claim rejection
• patent prosecution

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. In the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:

• Signing a reply to an Office action
• Requesting a continued prosecution application (CPA)
• Signing a terminal disclaimer
• Submitting a Fee(s) Transmittal form
• Requesting status of an application
• Appointing a registered patent practitioner to prosecute the application
• Granting power to inspect an application
• Consenting to the filing of a reissue application
• Consenting to the correction of inventorship

The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.

For more information on assignee rights, visit: assignee rights.

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

For more information on pre-AIA applications, visit: pre-AIA applications.

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

According to MPEP 203.03, an applicant has several options when responding to an 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.

These options can be broken down as follows:

• Election: Choosing between different inventions or species identified by the examiner.
• Traverse: Arguing against the examiner’s rejections or objections.
• Amendment: Modifying the application to address the examiner’s concerns or to clarify the invention.

To learn more:

• patent application response
• examiner action
• patent amendment
• patent prosecution

No, a Request for Continued Examination (RCE) is not considered a new application. The MPEP 203.01 clarifies this point:

Note that a request for continued examination (RCE)(see 37 CFR 1.114) is not a type of new application filing.

An RCE is a way to continue prosecution of an existing application after a final rejection, rather than starting a new application. For more details on RCEs, refer to MPEP § 706.07(h).

To learn more:

• RCE
• Request for Continued Examination
• new application
• patent prosecution

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

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:

• If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
• The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
• If there are joint inventors, the surviving inventors can continue the prosecution.
• The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.

As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”

To learn more:

• deceased inventor
• patent prosecution
• legal representative
• joint inventors

The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution. When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.

To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.

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

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

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 application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

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

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

How does attorney withdrawal affect pending patent applications?

When an attorney withdraws from representation in a pending patent application, it can have several implications:

• The applicant becomes responsible for prosecuting the application.
• Official correspondence will be sent directly to the applicant.
• Deadlines and response periods remain in effect.
• The applicant may need to find new representation quickly.

According to MPEP 402.06:

“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”

It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.

To learn more:

• attorney withdrawal
• pending applications
• patent prosecution
• USPTO communication

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

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

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

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

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

Filing a Continued Prosecution Application (CPA) has several effects on the examination process:

• The CPA is treated as a continuation of the prior application for examination purposes
• Information Disclosure Statements from the prior application are automatically considered in the CPA
• Affidavits and declarations from the prior application carry over to the CPA
• A terminal disclaimer filed in the parent application carries over to the CPA
• For examination priority, CPAs are treated as ‘amended’ applications rather than ‘new’ applications if an Office action was issued in the prior application

MPEP 201.06(d) notes: For examination priority purposes only, the USPTO will treat continuation CPAs as if they were ‘amended’ applications (as of the CPA filing date) and not as ‘new’ applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner.

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

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

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

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

The America Invents Act (AIA) introduced changes to assignee prosecution rights for patent applications filed on or after September 16, 2012. According to MPEP 106.01:

[F]or applications filed on or after September 16, 2012, [the assignee of record of the entire interest] can prosecute the application after becoming the applicant under 37 CFR 1.46.

This change allows the assignee of the entire interest to become the applicant and prosecute the application directly. For more detailed information:

• For applications filed before September 16, 2012, refer to MPEP § 324
• For applications filed on or after September 16, 2012, refer to MPEP § 325

To learn more:

• America Invents Act
• AIA
• assignee rights
• patent prosecution
• patent application

To rely on an affidavit or declaration from a prior application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To rely on a prior affidavit or declaration, an applicant should:

• Make remarks of record in the new application, referencing the prior affidavit or declaration
• Include a copy of the original affidavit or declaration from the prior application in the new application

This ensures that the examiner is aware of the prior evidence and can consider it in the context of the new application.

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

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

To ensure that affidavits or declarations from a prior application are considered in a new application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To ensure consideration, the applicant should:

• Explicitly reference the prior affidavit or declaration in the new application
• Provide a copy of the original affidavit or declaration
• Explain the relevance of the prior affidavit to the current application

This process helps the examiner understand the context and importance of the previously submitted evidence in relation to the new application.

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

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

A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant or their legal representative can submit a formal request to abandon the application, effectively ending its prosecution.

How are pro se applicants treated in patent applications?

Pro se applicants (individuals who file patent applications without the assistance of a registered patent attorney or agent) are treated with special consideration by the USPTO. The MPEP states:

“While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.” (MPEP 605)

However, the USPTO recognizes that some inventors choose to file pro se and provides resources to assist them, such as the Pro Se Assistance Program. While pro se applicants are held to the same legal standards as represented applicants, examiners are encouraged to assist pro se applicants in navigating the patent process.

To learn more:

• pro se applicant
• patent application
• USPTO
• patent prosecution

Amendments in secrecy order applications require special handling to maintain security. The MPEP 130 states:

In secrecy order cases, all proposed amendments to the specification and claims, and all provisional amendments to the abstract, drawings and claims must be submitted in duplicate for security review.

Key points about handling amendments in secrecy order cases include:

• Amendments must be submitted in duplicate for security review.
• One copy of the amendment is placed in the application file.
• The other copy is forwarded to a defense agency for review.
• The defense agency determines if the amendment can be entered without breaching national security.

This process ensures that any changes to the application maintain the required level of secrecy.

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

This ensures that the examiner can consider the previously submitted evidence in the context of the new application.

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

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

Yes, individuals granted limited recognition can file certain documents in patent applications. According to the MPEP 402.01:

Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications.

Specifically, they can file:

• A power of attorney (37 CFR 1.32(b)(4))
• A document granting access to an application (37 CFR 1.14(c))
• A change of correspondence address (37 CFR 1.33(a))
• A terminal disclaimer (37 CFR 1.321(b)(1))
• A request for an express abandonment (37 CFR 1.138(b))

However, it’s important to note that these individuals are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.

To learn more:

• limited recognition
• patent prosecution
• document filing
• USPTO

Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:

The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.

This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.

No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.

The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.

Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:

• The assignee must have originally appointed the withdrawing attorney or agent.
• The assignee becomes recognized by the Office for all purposes in the application.
• The assignee can sign amendments and other papers related to the prosecution.

The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’

It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.

To learn more:

• assignee rights
• patent prosecution
• attorney withdrawal
• USPTO procedures

Can a patent title be changed after filing?

Yes, a patent title can be changed after filing. The MPEP 606 states:

“The title may be amended at any time during the prosecution of the application, and in many instances a change in title may be required by the examiner.”

This means that:

• Applicants can request a title change during prosecution
• Examiners may require a title change if the original title is inadequate
• The title can be amended up until the patent is granted

It’s important to note that any changes to the title should still accurately reflect the nature of the invention and comply with all USPTO requirements.

To learn more:

• patent title
• title amendment
• patent prosecution
• USPTO requirements

No, a licensee of exclusive right cannot prosecute a patent application. According to MPEP 106.01, only the assignee of record of the entire interest has the right to intervene in the prosecution of an application. The MPEP states:

While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […], an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.

This means that while a licensee of exclusive right can inspect the application, they cannot prosecute it or exclude the applicant from the prosecution process.

To learn more:

• licensee rights
• exclusive right
• patent prosecution
• application inspection

Yes, a ‘rejected’ patent application can still be approved. The term ‘rejected’ in this context does not mean final rejection or denial of the patent. According to MPEP 203.02:

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.

This status is part of the normal examination process. The applicant has the opportunity to respond to the examiner’s action, potentially leading to approval. The application remains ‘rejected’ until:

• The applicant successfully addresses the examiner’s concerns
• The examiner issues a notice of allowance
• The application becomes abandoned

With appropriate responses and amendments, a ‘rejected’ application can progress to approval and eventual patent grant.

To learn more:

• rejected application
• patent approval
• patent examination process
• patent prosecution

Reserved sections are relatively common in the MPEP, especially for section numbers that are being held for future use or that previously contained content that was moved. A quick scan of the MPEP Chapter 200 shows several reserved sections, such as:

• Section 203.07 [Reserved]
• Sections 204-209 [Reserved]
• Section 212 [Reserved]

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

According to MPEP 106.01, only the assignee of record of the entire interest in a patent application can intervene in its prosecution. The MPEP states:

While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […]

This means that partial assignees, licensees of exclusive rights, or other parties with limited interests cannot intervene in the prosecution process or exclude the original applicant. The right to intervene is reserved exclusively for the assignee who has been recorded as having the entire interest in the application.

For applications filed on or after September 16, 2012, the assignee of the entire interest can also become the applicant under 37 CFR 1.46 and prosecute the application directly.

To learn more:

• patent prosecution
• assignee rights
• intervention
• patent application

Limited recognition for patent matters can be granted to two main categories of individuals:

1. Non-registered individuals: As per 37 CFR 11.9(a), individuals not registered under § 11.6 may be granted limited recognition under certain circumstances.
2. Nonimmigrant aliens: According to 37 CFR 11.9(b):
   

   A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application.

It’s important to note that limited recognition is granted on a case-by-case basis and is subject to specific restrictions and conditions.

To learn more:

• limited recognition
• non-registered individuals
• nonimmigrant aliens
• patent prosecution

An Information Disclosure Statement (IDS) should be filed at different stages of patent application processing, depending on the circumstances:

• Within three months of the filing date or before the first Office action on the merits, whichever is later
• Before the mailing of a final Office action, Notice of Allowance, or an Ex parte Quayle action
• After the above periods but before payment of the issue fee
• After payment of the issue fee (with limitations)

The specific requirements and fees for filing an IDS vary depending on when it is submitted. As stated in MPEP 609.04(b): The procedures and requirements under 37 CFR 1.97 for submitting an information disclosure statement are linked to four stages in the processing of a patent application.

To learn more:

• IDS
• Information Disclosure Statement
• Patent Application
• Patent Prosecution

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

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

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

For more information on Patent examiners, visit: Patent examiners.

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

Patent law recognizes several types of continuing applications. According to the MPEP:

A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.

The three main types of continuing applications are:

• Continuation: Pursues additional claims to an invention disclosed in an earlier application.
• Divisional: Separates distinct inventions from a parent application into separate applications.
• Continuation-in-part (CIP): Adds new matter to the disclosure of the earlier application.

Each type serves different purposes in patent prosecution strategy.

For more information on divisional, visit: divisional.

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

During patent prosecution, several types of affidavits or declarations may be filed. MPEP ¶ 2.03 mentions three common types:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application…”

These affidavits serve different purposes:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure
• 37 CFR 1.131: Affidavits of prior invention to overcome cited art
• 37 CFR 1.132: Affidavits traversing rejections or objections

Each of these affidavits provides specific evidence to support the patentability of an invention or to overcome rejections made by the patent examiner.

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

MPEP ¶ 2.03 mentions several types of affidavits or declarations that may be submitted during patent prosecution. Specifically, it refers to:

• Affidavits or declarations under 37 CFR 1.130 (Declaration of Attribution or Prior Public Disclosure under the AIA)
• Affidavits or declarations under 37 CFR 1.131 (Affidavit or Declaration of Prior Invention to Overcome Cited Patent or Publication)
• Affidavits or declarations under 37 CFR 1.132 (Affidavits Traversing Rejections or Objections)

These affidavits or declarations are commonly used to overcome rejections or provide evidence during patent prosecution.

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

Common types of affidavits or declarations filed in patent applications include those submitted under specific sections of the Code of Federal Regulations. As mentioned in MPEP ¶ 2.03, these include:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure under the AIA
• 37 CFR 1.131: Affidavits of prior invention to overcome cited patents or publications
• 37 CFR 1.132: Affidavits or declarations traversing rejections or objections

These affidavits or declarations serve various purposes in patent prosecution, such as establishing inventorship, overcoming prior art, or addressing examiner rejections.

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

Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

Key points about 37 CFR 1.53(d) applications:

• They are continuation or divisional applications of a nonprovisional application
• Affidavits and declarations from the parent application are automatically incorporated
• This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
• No additional action is required to include these documents in the new application

This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).

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

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

What is the relationship between a divisional application and a restriction requirement?

A divisional application is often filed in response to a restriction requirement issued by the USPTO. The MPEP 201.06 explains:

“A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.'”

The relationship between a divisional application and a restriction requirement is as follows:

• When an examiner determines that a single application contains two or more independent or distinct inventions, they may issue a restriction requirement.
• The applicant must then elect one invention to pursue in the original application.
• The non-elected invention(s) can be pursued in one or more divisional applications.
• Divisional applications allow applicants to protect multiple inventions disclosed in a single parent application without violating the principle of double patenting.

It’s important to note that while divisional applications are often filed in response to restriction requirements, they can also be filed voluntarily if the applicant recognizes distinct inventions in their application before receiving a restriction requirement.

To learn more:

• divisional application
• restriction requirement
• patent prosecution
• USPTO

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

While MPEP 203.03 specifically discusses amended nonprovisional applications, it’s important to understand the distinction between nonprovisional and provisional applications:

• Nonprovisional Application: This is a formal patent application that can result in an issued patent. It undergoes examination and can be amended, as described in MPEP 203.03.
• Provisional Application: This is a temporary application that establishes a priority date but does not undergo examination and cannot be amended.

The amended status discussed in MPEP 203.03 applies only to nonprovisional applications, as provisional applications are not examined or amended.

To learn more:

• nonprovisional application
• provisional application
• patent types
• patent prosecution

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

Limited recognition in patent matters is a provision that allows certain individuals who are not registered patent practitioners to prosecute specific patent applications before the United States Patent and Trademark Office (USPTO). According to 37 CFR 11.9(a):

Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.

This means that under certain circumstances, individuals who are not registered patent attorneys or agents may be granted permission to work on specific patent applications.

To learn more:

• limited recognition
• patent prosecution
• USPTO
• OED Director

To learn more:

• patent matters

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

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 Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

A ‘file wrapper’ refers to the official record of proceedings in the United States Patent and Trademark Office (USPTO) for a particular patent application or granted patent. It contains all the documents and correspondence related to the prosecution of the application or maintenance of the patent. This includes the original application, Office actions, applicant responses, amendments, and other relevant documents. The file wrapper provides a complete history of the examination process and is important for understanding the scope and validity of a patent.

What happens to the parent application when a divisional application is filed?

When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.

As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:

• If the parent application is pending, it remains pending and continues through the examination process.
• If the parent application has already been granted as a patent, it remains a valid patent.

It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.

Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.

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

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

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

After patent prosecution, the handling of models, exhibits, or specimens depends on their nature and the applicant’s wishes. According to MPEP 608.03(a):

‘Upon conclusion of the prosecution of the application, model, exhibit, or specimen, unless the model, exhibit, or specimen has been destroyed during prosecution, the model, exhibit, or specimen may be returned to the applicant upon request and at applicant’s expense.’

If the applicant doesn’t request their return, the USPTO may dispose of them. It’s important for applicants to communicate their wishes regarding these items after prosecution.

To learn more:

• models
• exhibits
• specimens
• patent prosecution
• USPTO procedures

When claims are canceled during the patent prosecution process, it’s important to note that the remaining claims should not be renumbered. This is explicitly stated in MPEP 608.01(j):

“When claims are canceled the remaining claims must not be renumbered.”

This rule helps maintain consistency and clarity throughout the prosecution process, allowing for easy tracking of claim history and amendments. It’s crucial for patent applicants and attorneys to adhere to this guideline to avoid confusion and potential issues with the USPTO.

To learn more:

• claim cancellation
• patent prosecution
• claim numbering
• USPTO rules

If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:

“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”

This means that:

• The new assignee must file a new 37 CFR 3.73(c) statement.
• The new statement must establish the new assignee’s ownership.
• Until the new statement is filed, the previous assignee remains the party of record.

It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.

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

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

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

A patent application is designated as ‘rejected’ when it contains an unanswered examiner’s action during its prosecution in the examining group and before allowance. According to MPEP 203.02:

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.

This status continues until the applicant responds to the examiner’s action or the application becomes abandoned.

To learn more:

• patent application
• rejected application
• examiner’s action
• patent prosecution

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).

‘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

What are the requirements for submitting an IDS after the first Office action?

When submitting an Information Disclosure Statement (IDS) after the first Office action on the merits, additional requirements apply:

• Timing: The IDS must be filed before the mailing date of a final action, notice of allowance, or other action that closes prosecution.
• Statement: The IDS must be accompanied by one of the following:
  • A statement specified in 37 CFR 1.97(e)
  • The fee set forth in 37 CFR 1.17(p)

As stated in MPEP 609: “An information disclosure statement will be considered by the examiner if filed after the first Office action on the merits, but before the mailing date of any of a final action under 37 CFR 1.113, a notice of allowance under 37 CFR 1.311, or an action that otherwise closes prosecution in the application.”

It’s crucial to comply with these requirements to ensure the IDS is considered by the examiner.

To learn more:

• IDS
• Information Disclosure Statement
• Office action
• Patent prosecution

A patent application can be considered ‘abandoned’ for several reasons. According to MPEP 203.05, an abandoned application is one that is removed from the Office docket of pending applications due to:

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

It’s important for applicants to be aware of these reasons to avoid unintentional abandonment of their applications.

For more information on issue fee, visit: issue fee.

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

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

According to MPEP 203.05, a patent application can become abandoned in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Failure to take appropriate action during prosecution
• Failure to pay the issue fee
• For provisional applications, not filing a nonprovisional application within 12 months

The MPEP states: “An abandoned application is, inter alia, one which is removed from the Office docket of pending applications” due to these reasons.

To learn more:

• abandoned applications
• patent prosecution
• issue fee
• provisional applications

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

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

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

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

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

To learn more:

• patent drawings
• drawing objections
• application abandonment
• patent prosecution

What are the consequences of improper dependent claims in a patent application?

Improper dependent claims in a patent application can have several negative consequences:

• Rejection by USPTO: The patent examiner may reject claims that don’t comply with dependency requirements.
• Delayed prosecution: Addressing improper dependencies can prolong the patent examination process.
• Increased costs: Additional office actions and responses may be needed to correct claim issues.
• Weakened patent protection: Improperly drafted claims may not provide the intended scope of protection.
• Potential invalidity: In extreme cases, improper dependencies could lead to claim invalidity if challenged in court.

The MPEP 608.01(n) emphasizes the importance of proper claim dependency:

“If the base claim is rejected, canceled, or withdrawn from consideration, any claim depending therefrom should be presented in independent form.”

This guidance underscores the need for careful claim drafting and ongoing attention to claim dependencies throughout the patent prosecution process. Ensuring proper claim structure and dependencies is crucial for obtaining strong, enforceable patent protection.

To learn more:

• improper dependent claims
• patent application
• claim rejection
• patent prosecution

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. In the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:

• Signing a reply to an Office action
• Requesting a continued prosecution application (CPA)
• Signing a terminal disclaimer
• Submitting a Fee(s) Transmittal form
• Requesting status of an application
• Appointing a registered patent practitioner to prosecute the application
• Granting power to inspect an application
• Consenting to the filing of a reissue application
• Consenting to the correction of inventorship

The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.

For more information on assignee rights, visit: assignee rights.

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

For more information on pre-AIA applications, visit: pre-AIA applications.

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

According to MPEP 203.03, an applicant has several options when responding to an 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.

These options can be broken down as follows:

• Election: Choosing between different inventions or species identified by the examiner.
• Traverse: Arguing against the examiner’s rejections or objections.
• Amendment: Modifying the application to address the examiner’s concerns or to clarify the invention.

To learn more:

• patent application response
• examiner action
• patent amendment
• patent prosecution

No, a Request for Continued Examination (RCE) is not considered a new application. The MPEP 203.01 clarifies this point:

Note that a request for continued examination (RCE)(see 37 CFR 1.114) is not a type of new application filing.

An RCE is a way to continue prosecution of an existing application after a final rejection, rather than starting a new application. For more details on RCEs, refer to MPEP § 706.07(h).

To learn more:

• RCE
• Request for Continued Examination
• new application
• patent prosecution

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

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:

• If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
• The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
• If there are joint inventors, the surviving inventors can continue the prosecution.
• The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.

As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”

To learn more:

• deceased inventor
• patent prosecution
• legal representative
• joint inventors

The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution. When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.

To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.

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

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

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 application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

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

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

How does attorney withdrawal affect pending patent applications?

When an attorney withdraws from representation in a pending patent application, it can have several implications:

• The applicant becomes responsible for prosecuting the application.
• Official correspondence will be sent directly to the applicant.
• Deadlines and response periods remain in effect.
• The applicant may need to find new representation quickly.

According to MPEP 402.06:

“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”

It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.

To learn more:

• attorney withdrawal
• pending applications
• patent prosecution
• USPTO communication

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

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

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

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

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

Filing a Continued Prosecution Application (CPA) has several effects on the examination process:

• The CPA is treated as a continuation of the prior application for examination purposes
• Information Disclosure Statements from the prior application are automatically considered in the CPA
• Affidavits and declarations from the prior application carry over to the CPA
• A terminal disclaimer filed in the parent application carries over to the CPA
• For examination priority, CPAs are treated as ‘amended’ applications rather than ‘new’ applications if an Office action was issued in the prior application

MPEP 201.06(d) notes: For examination priority purposes only, the USPTO will treat continuation CPAs as if they were ‘amended’ applications (as of the CPA filing date) and not as ‘new’ applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner.

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

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

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

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

The America Invents Act (AIA) introduced changes to assignee prosecution rights for patent applications filed on or after September 16, 2012. According to MPEP 106.01:

[F]or applications filed on or after September 16, 2012, [the assignee of record of the entire interest] can prosecute the application after becoming the applicant under 37 CFR 1.46.

This change allows the assignee of the entire interest to become the applicant and prosecute the application directly. For more detailed information:

• For applications filed before September 16, 2012, refer to MPEP § 324
• For applications filed on or after September 16, 2012, refer to MPEP § 325

To learn more:

• America Invents Act
• AIA
• assignee rights
• patent prosecution
• patent application

To rely on an affidavit or declaration from a prior application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To rely on a prior affidavit or declaration, an applicant should:

• Make remarks of record in the new application, referencing the prior affidavit or declaration
• Include a copy of the original affidavit or declaration from the prior application in the new application

This ensures that the examiner is aware of the prior evidence and can consider it in the context of the new application.

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

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

To ensure that affidavits or declarations from a prior application are considered in a new application, an applicant must take specific steps. According to MPEP ¶ 2.03:

“Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.”

To ensure consideration, the applicant should:

• Explicitly reference the prior affidavit or declaration in the new application
• Provide a copy of the original affidavit or declaration
• Explain the relevance of the prior affidavit to the current application

This process helps the examiner understand the context and importance of the previously submitted evidence in relation to the new application.

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

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

A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant or their legal representative can submit a formal request to abandon the application, effectively ending its prosecution.

How are pro se applicants treated in patent applications?

Pro se applicants (individuals who file patent applications without the assistance of a registered patent attorney or agent) are treated with special consideration by the USPTO. The MPEP states:

“While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.” (MPEP 605)

However, the USPTO recognizes that some inventors choose to file pro se and provides resources to assist them, such as the Pro Se Assistance Program. While pro se applicants are held to the same legal standards as represented applicants, examiners are encouraged to assist pro se applicants in navigating the patent process.

To learn more:

• pro se applicant
• patent application
• USPTO
• patent prosecution

Amendments in secrecy order applications require special handling to maintain security. The MPEP 130 states:

In secrecy order cases, all proposed amendments to the specification and claims, and all provisional amendments to the abstract, drawings and claims must be submitted in duplicate for security review.

Key points about handling amendments in secrecy order cases include:

• Amendments must be submitted in duplicate for security review.
• One copy of the amendment is placed in the application file.
• The other copy is forwarded to a defense agency for review.
• The defense agency determines if the amendment can be entered without breaching national security.

This process ensures that any changes to the application maintain the required level of secrecy.

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

This ensures that the examiner can consider the previously submitted evidence in the context of the new application.

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

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

Yes, individuals granted limited recognition can file certain documents in patent applications. According to the MPEP 402.01:

Persons granted limited recognition are considered practitioners under 37 CFR 11.1 and thus permitted to perform the same patent prosecution functions of registered patent agents and registered patent attorneys when prosecuting a specified patent application or specified patent applications.

Specifically, they can file:

• A power of attorney (37 CFR 1.32(b)(4))
• A document granting access to an application (37 CFR 1.14(c))
• A change of correspondence address (37 CFR 1.33(a))
• A terminal disclaimer (37 CFR 1.321(b)(1))
• A request for an express abandonment (37 CFR 1.138(b))

However, it’s important to note that these individuals are still subject to the restrictions expressed in their grant, including temporal, employer, and visa limitations.

To learn more:

• limited recognition
• patent prosecution
• document filing
• USPTO

Yes, examiners can initiate interview requests with patent practitioners of record. The MPEP encourages this practice to expedite prosecution:

The Office encourages the use of interviews to expedite prosecution. When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.

This proactive approach by examiners can help clarify issues and potentially speed up the patent application process.

No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.

The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.

Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:

• The assignee must have originally appointed the withdrawing attorney or agent.
• The assignee becomes recognized by the Office for all purposes in the application.
• The assignee can sign amendments and other papers related to the prosecution.

The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’

It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.

To learn more:

• assignee rights
• patent prosecution
• attorney withdrawal
• USPTO procedures

Can a patent title be changed after filing?

Yes, a patent title can be changed after filing. The MPEP 606 states:

“The title may be amended at any time during the prosecution of the application, and in many instances a change in title may be required by the examiner.”

This means that:

• Applicants can request a title change during prosecution
• Examiners may require a title change if the original title is inadequate
• The title can be amended up until the patent is granted

It’s important to note that any changes to the title should still accurately reflect the nature of the invention and comply with all USPTO requirements.

To learn more:

• patent title
• title amendment
• patent prosecution
• USPTO requirements

No, a licensee of exclusive right cannot prosecute a patent application. According to MPEP 106.01, only the assignee of record of the entire interest has the right to intervene in the prosecution of an application. The MPEP states:

While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […], an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.

This means that while a licensee of exclusive right can inspect the application, they cannot prosecute it or exclude the applicant from the prosecution process.

To learn more:

• licensee rights
• exclusive right
• patent prosecution
• application inspection

Yes, a ‘rejected’ patent application can still be approved. The term ‘rejected’ in this context does not mean final rejection or denial of the patent. According to MPEP 203.02:

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.

This status is part of the normal examination process. The applicant has the opportunity to respond to the examiner’s action, potentially leading to approval. The application remains ‘rejected’ until:

• The applicant successfully addresses the examiner’s concerns
• The examiner issues a notice of allowance
• The application becomes abandoned

With appropriate responses and amendments, a ‘rejected’ application can progress to approval and eventual patent grant.

To learn more:

• rejected application
• patent approval
• patent examination process
• patent prosecution

Reserved sections are relatively common in the MPEP, especially for section numbers that are being held for future use or that previously contained content that was moved. A quick scan of the MPEP Chapter 200 shows several reserved sections, such as:

• Section 203.07 [Reserved]
• Sections 204-209 [Reserved]
• Section 212 [Reserved]