Q: Who can take action as an assignee in a patent application filed on or after September 16, 2012?

According to 37 CFR 3.71(b) , the assignees who may conduct prosecution of a patent application as the applicant are: A single assignee who is the assignee of the entire right, title and interest in the application or patent, or 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)."

Question 1

What is a Continued Prosecution Application (CPA) in the context of design applications?

Accepted Answer

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.

Question 2

How does abandonment of a patent application affect priority claims?

Accepted Answer

Abandonment of a patent application can significantly affect priority claims, particularly for continuing applications. The MPEP 711.02 notes:

"Where the application is abandoned after the close of prosecution as defined in MPEP § 711.03(c), the failure to take any necessary action prior to the expiration of the period for reply in the last Office action (or notice) will result in abandonment of the application."

If an application becomes abandoned, it may break the chain of priority for any subsequent continuing applications. This can result in the loss of earlier filing date benefits and potentially affect the patentability of related inventions.

To learn more:

abandonment
priority claims
continuing applications
patent prosecution

Question 3

How does the USPTO handle patent applications when an inventor dies during prosecution?

Accepted Answer

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:

Question 4

What is an Information Disclosure Statement (IDS) in patent prosecution?

Accepted Answer

An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered.

The IDS is a crucial part of fulfilling the duty of disclosure to the USPTO, ensuring that the patent examiner has all relevant information when considering the patentability of an invention.

To learn more:

The IDS is a crucial part of fulfilling the duty of disclosure to the USPTO, ensuring that the patent examiner has all relevant information when considering the patentability of an invention.

To learn more:

Information Disclosure Statement
IDS
Patent Prosecution
USPTO
Prior Art

Question 5

How do affidavits or declarations from a prior application apply to a new application?

Accepted Answer

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.

Question 6

Can an assignee of a part interest in a patent application prevent other parties from accessing the application?

Accepted Answer

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.

Question 7

Who can take action as an assignee in a patent application filed on or after September 16, 2012?

Accepted Answer

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

A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
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)."

Question 8

How are affidavits or declarations from prior applications handled in new patent applications?

Accepted Answer

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.

Question 9

Can an amendment be entered after a final rejection in a patent application?

russ.krajec@blueironip.com · Accepted Answer

Generally, amendments after a final rejection are not entered as a matter of right. However, there are exceptions as noted in MPEP 714.19:

"An amendment presenting an unpatentable claim, or a claim requiring a new search or otherwise raising a new issue in an application whose prosecution before the primary examiner has been closed, as where [...] All claims have been finally rejected (for exceptions see MPEP § 714.12, § 714.13, and § 714.20, item (D))."

This means that while most amendments after final rejection are denied entry, there are specific situations outlined in MPEP sections 714.12, 714.13, and 714.20 where such amendments may be considered. These typically include amendments that do not require further search or consideration, or those that place the application in condition for allowance.

To learn more:

MPEP 714.19

Question 10

How should applicants prepare for a patent examiner interview?

Accepted Answer

How should applicants prepare for a patent examiner interview?

Proper preparation is crucial for a successful patent examiner interview. The MPEP provides guidance on this topic:

"The attorney or agent should be fully prepared to discuss the issues raised in the Office action." (MPEP 713.01)

To prepare effectively:

Review the Office action: Thoroughly understand the rejections and objections raised by the examiner.
Prepare arguments: Develop clear, concise arguments addressing each point in the Office action.
Consider amendments: If proposing claim amendments, have them ready in proper form.
Gather evidence: Compile any relevant prior art, declarations, or other supporting documents.
Set clear goals: Determine what you hope to achieve in the interview (e.g., agreement on allowable subject matter, clarification of a rejection).
Prepare an agenda: Outline the topics you wish to discuss to keep the interview focused and productive.
Schedule appropriately: Allow enough time for a thorough discussion and follow proper USPTO procedures for scheduling.

By being well-prepared, applicants can make the most of the interview opportunity and potentially advance prosecution more efficiently.

To learn more:

Question 11

How does election by originally presented claims work in patent applications?

Accepted Answer

Election by originally presented claims is explained in MPEP 818.02(a). The key points are:

Claims added before the first restriction requirement or first Office action on the merits are considered originally presented claims.
These originally presented claims, along with those filed at application, determine the elected invention.
This election carries over to any request for continued examination (RCE).

The MPEP states: "The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the application." This means that the initial set of claims establishes the elected invention, even without an explicit election statement from the applicant.

To learn more:

Question 12

How do I respond to an Election of Species requirement?

Accepted Answer

To respond to an Election of Species requirement, you should follow these steps:

Elect a single disclosed species or a single grouping of patentably indistinct species.
Identify the claims encompassing the elected species or grouping.
Optionally, include arguments traversing the requirement.

According to MPEP 809.02(a):

"Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added."

Remember, if you want to preserve your right to petition, you must make the election with traverse and present your arguments at the time of election.

To learn more:

Question 13

Can a patent examiner issue a new restriction requirement after an applicant has already complied with a previous one?

Accepted Answer

Yes, a patent examiner can issue a new restriction requirement even after an applicant has complied with a previous one. This is supported by MPEP 811.02, which states:

"Since 37 CFR 1.142(a) provides that restriction is proper at any stage of prosecution up to final action, a second requirement may be made when it becomes proper, even though there was a prior requirement with which applicant complied."

This means that as long as the prosecution is not yet final, the examiner has the authority to issue additional restriction requirements if they become necessary during the examination process.

To learn more:

restriction requirement
patent prosecution
patent examination
USPTO procedures

Question 14

Can appeal fees be refunded if a patent appeal is withdrawn or dismissed?

Accepted Answer

The refund of appeal fees in cases of withdrawal or dismissal depends on the specific circumstances and timing. Generally:

If an appeal is withdrawn prior to the filing of an appeal brief, a portion of the appeal fee may be refunded.
Once an appeal brief has been filed, typically no refund is available.
In cases of dismissal, refunds are usually not granted unless there's an error on the part of the USPTO.

For precise information on fee refunds, refer to MPEP 1215 and consult with a patent attorney. The USPTO's fee schedule and refund policies should also be reviewed for the most current information.

To learn more:

Question 15

Can an applicant file a Request for Continued Examination (RCE) to switch inventions?

Accepted Answer

No, an applicant cannot use a Request for Continued Examination (RCE) to switch inventions as a matter of right. The MPEP 819 clearly states:

"In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right)."

This policy prevents applicants from circumventing the restriction process by using an RCE to introduce claims to a different invention. For more details on RCE practice, refer to MPEP § 706.07(h), subsection VI.(B).

To learn more:

Question 16

What are the options for responding to a new ground of rejection in an examiner's answer?

Accepted Answer

According to MPEP 1207.03(c), an appellant has two options when responding to a new ground of rejection in an examiner's answer:

Reopen prosecution: File a reply under 37 CFR 1.111 with or without amendment or submission of affidavits or other evidence. This request will be treated as a request to withdraw the appeal.
Maintain appeal: File a reply brief addressing the new ground of rejection as set forth in 37 CFR 41.37(c)(1)(iv).

The MPEP states: "If an examiner's answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection."

To learn more:

Question 17

How do patent attorneys and inventors keep track of claim changes during prosecution?

Accepted Answer

Patent attorneys and inventors can keep track of claim changes during prosecution by following the guidance provided in MPEP 1302.04(g). The MPEP states:

"To identify a claim, an examiner's amendment should refer to it by the original number and, if renumbered in the allowed application, also by the new number."

This practice helps in tracking claim changes in several ways:

Maintaining a prosecution history that references both original and new claim numbers
Using claim tracking software that can map original claims to their amended versions
Creating claim charts that show the evolution of claims throughout prosecution
Carefully reviewing all office actions and examiner's amendments for claim modifications
Keeping detailed notes on claim amendments and their corresponding office actions

By utilizing these methods and paying close attention to how examiners identify claims in their amendments, patent attorneys and inventors can effectively monitor claim changes throughout the examination process.

To learn more:

Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 106-Control of Inspection by Assignee (1)

Can an assignee of a part interest in a patent application prevent other parties from accessing the application?

MPEP 200 – Types and Status of Application; Benefit and Priority (3)

What is a Continued Prosecution Application (CPA) in the context of design applications?

How do affidavits or declarations from a prior application apply to a new application?

How are affidavits or declarations from prior applications handled in new patent applications?

MPEP 2000 – Duty Of Disclosure (1)

What is an Information Disclosure Statement (IDS) in patent prosecution?

MPEP 2003 – Disclosure — When Made (1)

What is an Information Disclosure Statement (IDS) in patent prosecution?

MPEP 201 – Types of Applications (3)

What is a Continued Prosecution Application (CPA) in the context of design applications?

How do affidavits or declarations from a prior application apply to a new application?

How are affidavits or declarations from prior applications handled in new patent applications?

MPEP 300 – Ownership and Assignment (1)

Who can take action as an assignee in a patent application filed on or after September 16, 2012?

MPEP 400 – Representative of Applicant or Owner (1)

How does the USPTO handle patent applications when an inventor dies during prosecution?

Patent Law (7)

What is a Continued Prosecution Application (CPA) in the context of design applications?

How does the USPTO handle patent applications when an inventor dies during prosecution?

What is an Information Disclosure Statement (IDS) in patent prosecution?

How do affidavits or declarations from a prior application apply to a new application?

Can an assignee of a part interest in a patent application prevent other parties from accessing the application?

Who can take action as an assignee in a patent application filed on or after September 16, 2012?

How are affidavits or declarations from prior applications handled in new patent applications?

Patent Procedure (7)

What is a Continued Prosecution Application (CPA) in the context of design applications?

How does the USPTO handle patent applications when an inventor dies during prosecution?

What is an Information Disclosure Statement (IDS) in patent prosecution?

How do affidavits or declarations from a prior application apply to a new application?

Can an assignee of a part interest in a patent application prevent other parties from accessing the application?

Who can take action as an assignee in a patent application filed on or after September 16, 2012?

How are affidavits or declarations from prior applications handled in new patent applications?