Question 1

When can an examiner make a first action final rejection in patent examination?

Accepted Answer

An examiner can make a first action final rejection in specific circumstances, as outlined in MPEP 706.07(b). The main situations where this is permissible include:

When all claims are drawn to the same invention claimed in an earlier application, and would have been properly finally rejected in the earlier application.
In the case of a continuing application (not a CIP) where the claims are drawn to the same invention claimed in an earlier application, even if all claims of the pending application are not identical to the claims in the earlier application.
In an application filed under 37 CFR 1.53(d) as a continuing application of a prior application, where the claims are drawn to the same invention claimed in the prior application.

The MPEP states: "The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114."

To learn more:

Question 2

What options do I have if my patent application becomes abandoned due to a late amendment?

Accepted Answer

If your patent application becomes abandoned due to a late amendment, you have several options:

Petition to Revive: You can file a petition to revive the abandoned application, typically under 37 CFR 1.137.
Request for Continued Examination (RCE): As mentioned in MPEP 714.17, you can file an RCE to continue prosecution.
Continuing Application: You may file a continuation or continuation-in-part application to pursue protection for your invention.

The best option depends on your specific circumstances, including how long the application has been abandoned and the nature of your invention.

To learn more:

Question 3

What is the status of a new nonprovisional patent application?

Accepted Answer

A "new" nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a "new" application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered a new application filing.

Question 4

What is the difference between a CPA in utility/plant applications and design applications?

Accepted Answer

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner's note in MPEP ¶ 2.35:

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

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

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

For more information on patent application types, visit: patent application types.

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

For more information on RCE, visit: RCE.

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

Question 5

What is the difference between a CPA for design applications and utility applications?

Accepted Answer

Continued Prosecution Applications (CPAs) are primarily used for design patent applications. For utility or plant applications, improper CPA requests are typically treated as Requests for Continued Examination (RCE). The MPEP ¶ 2.35 notes:

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

This distinction is important for applicants to understand when considering their options for continuing prosecution of their patent applications.

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

Question 6

What is the difference between a continuing application and an RCE when dealing with a late amendment?

Accepted Answer

When dealing with a late amendment, both continuing applications and Requests for Continued Examination (RCE) can be used, but they have different implications:

Continuing Application:
- Starts a new application with a new filing date
- Allows for changes to the specification and claims
- May be subject to intervening prior art
- Useful for significant changes or new matter
RCE:
- Continues examination of the same application
- Maintains the original filing date
- Limited to amendments within the original disclosure
- Typically faster and less expensive than a new application

The MPEP 714.17 mentions both options:

The applicant may file a continuing application or request for continued examination (RCE) (if applicable).

Choose based on your specific needs and the nature of your desired amendments.

To learn more:

Question 7

What is required to add a benefit claim after the initial filing of a patent application?

Accepted Answer

Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP § 211.04:

Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.

In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:

A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.

It's important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.

To learn more:

Question 8

What is considered a 'new' patent application?

Accepted Answer

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

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

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

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

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

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

For more information on RCE, visit: RCE.

Question 9

What is considered a 'new' application according to the MPEP?

Accepted Answer

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

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

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

Question 10

What happens if I file an amendment after the period for reply has expired?

Accepted Answer

If you file an amendment after the period for reply has expired, it will generally not be entered. According to MPEP 714.17:

An amendment filed after the expiration of the statutory period for reply to an Office action cannot be entered. The applicant may file a continuing application or request for continued examination (RCE) (if applicable).

However, there are some exceptions where a late amendment might be considered. For example, if it's accompanied by a petition to revive an abandoned application or a request for continued examination (RCE).

To learn more:

Question 11

What happens if an improper CPA is filed?

Accepted Answer

When an improper Continued Prosecution Application (CPA) is filed, the USPTO's response depends on the type of application and the nature of the impropriety:

For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
If the improper CPA doesn't meet RCE requirements, it's treated as an improper RCE
For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn't meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

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

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Question 12

What happens if an improper CPA is filed for a utility or plant application?

Accepted Answer

Continued Prosecution Applications (CPAs) are only available for design patent applications. If an improper CPA is filed for a utility or plant application, the following occurs:

For applications filed on or after June 8, 1995, the improper CPA is treated as a Request for Continued Examination (RCE) under 37 CFR 1.114
If the requirements for an RCE are not met, the Office will send a Notice of Improper Request for Continued Examination (RCE)
For applications filed before June 8, 1995, the improper CPA cannot be treated as an RCE
The applicant will be notified of the improper CPA

MPEP 201.06(d) states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed. It further notes: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

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

For more information on RCE, visit: RCE.

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

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

Question 13

What happens if an affidavit or declaration is submitted after a final rejection?

Accepted Answer

If an affidavit or declaration under 37 CFR 1.130 is submitted after a final rejection, it can still be considered timely under certain conditions. According to MPEP 717.01(f):

Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted: [...] (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e).

This means that to be considered timely after a final rejection, the applicant must:

Submit the affidavit or declaration before or on the same date of filing an appeal
Provide good and sufficient reasons for the late submission
Explain why the evidence was not presented earlier

Additionally, affidavits or declarations can be submitted after prosecution is closed (including after final rejection) if filed with a request for continued examination (RCE) or continued prosecution application (CPA).

To learn more:

Question 14

What happens if a CPA request is improper for a utility or plant application?

Accepted Answer

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

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

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

For more information on patent application types, visit: patent application types.

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

For more information on RCE, visit: RCE.

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

Question 15

What happens if a CPA is improperly requested for a utility or plant patent application?

Accepted Answer

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

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

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

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

Question 16

What happens if a CPA is filed in a utility or plant application after July 14, 2003?

Accepted Answer

If a Continued Prosecution Application (CPA) is filed in a utility or plant application after July 14, 2003, it will not be treated as a proper CPA. According to MPEP 201.06(d):

'Any CPA filed on or after July 14, 2003 in a utility or plant application will automatically be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP § 706.07(h), paragraph II.'

This means that instead of being processed as a CPA, the application will be treated as a Request for Continued Examination (RCE). Applicants should be aware of this automatic conversion and ensure they meet the requirements for an RCE if they inadvertently file a CPA for a utility or plant application.

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

Question 17

What happens if a Continued Prosecution Application (CPA) is filed after the issue fee has been paid?

Accepted Answer

If a Continued Prosecution Application (CPA) is filed after the issue fee has been paid, it will not be treated as a CPA. Instead, it will be processed as follows:

For applications filed on or after May 29, 2000, the CPA will be treated as a request for continued examination (RCE) under 37 CFR 1.114.
For applications filed before May 29, 2000, the CPA will be treated as an improper application and will not be processed.

As stated in MPEP 201.06(d): "If an application is filed on or after May 29, 2000, the filing of a CPA is not permitted after payment of the issue fee. In such a case, the Office will treat the improper CPA as an RCE under 37 CFR 1.114, provided that the application is a utility or plant application filed on or after June 8, 1995."

It's important to note that this treatment as an RCE is only possible for utility or plant applications filed on or after June 8, 1995. For other types of applications or those filed before this date, the improper CPA filing will not be processed, and the applicant may need to consider other options, such as filing a reissue application if the patent has already issued.

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

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Question 18

What are the options for responding to a final rejection in a patent application?

Accepted Answer

According to MPEP 714.13, there are three main options for responding to a final rejection:

File an amendment: The amendment must comply with 37 CFR 1.116.
File a Notice of Appeal: This must be accompanied by the appeal fee.
File a Request for Continued Examination (RCE): This must be filed under 37 CFR 1.114 with a submission and the required fee.

The MPEP states:

"A reply under 37 CFR 1.113 is limited to: (A) an amendment complying with 37 CFR 1.116; (B) a Notice of Appeal (and appeal fee); or (C) a request for continued examination (RCE) filed under 37 CFR 1.114 with a submission (i.e., an amendment that meets the reply requirement of 37 CFR 1.111) and the fee set forth in 37 CFR 1.17(e)."

It's important to note that RCE practice does not apply to design applications or utility/plant applications filed before June 8, 1995.

To learn more:

Question 19

What are the conditions for restarting prioritized examination after a request for continued examination (RCE)?

Accepted Answer

What are the conditions for restarting prioritized examination after a request for continued examination (RCE)?

Prioritized examination can be restarted after an RCE under specific conditions. According to MPEP 708.02(b):

"If an applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a request for prioritized examination under 37 CFR 1.102(e) and the RCE is accompanied by a proper prioritized examination fee under 37 CFR 1.17(c), the application will be eligible for prioritized examination."

This means that to restart prioritized examination after an RCE, the applicant must:

File an RCE under 37 CFR 1.114
Submit a new request for prioritized examination
Pay the required prioritized examination fee

It's important to note that the application must still meet all other requirements for prioritized examination, including the limit on the number of independent claims and total claims.

To learn more:

Question 20

Is a Request for Continued Examination (RCE) considered a new application?

Accepted Answer

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:

Question 21

How does the USPTO handle IDSs in Requests for Continued Examination (RCE)?

Accepted Answer

When dealing with Information Disclosure Statements (IDSs) in Requests for Continued Examination (RCE), the USPTO follows specific guidelines as outlined in the MPEP:

Previously considered information: The MPEP states, "Information which has been considered by the Office in the application before the filing of a RCE will be part of the file before the examiner and need not be resubmitted to have the information considered by the examiner and listed on the patent."
Previously submitted but not considered information: The MPEP explains, "Information filed in the application in compliance with the content requirements of 37 CFR 1.98 before the filing of a RCE will be considered by the examiner after the filing of the RCE."

For example, if an applicant filed an IDS after a final Office action that didn't meet the requirements of 37 CFR 1.97(d)(1) and (d)(2), the examiner would not have considered it. However, after filing an RCE, the examiner will consider this previously submitted IDS without the need for resubmission.

For more details on RCE, refer to MPEP § 706.07(h).

To learn more:

Question 22

How does CPA practice differ for utility and plant applications?

Accepted Answer

Continued Prosecution Application (CPA) practice differs significantly for utility and plant applications compared to design applications. The key difference is:

CPA practice is not available for utility and plant applications filed on or after May 29, 2000.

As stated in the MPEP 201.06(d): "Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications in view of the eighteen-month publication of applications under 35 U.S.C. 122(b). A request for a CPA filed on or after July 14, 2003 in a utility or plant application is improper and will not be treated as a CPA."

For utility and plant applications, applicants should instead consider filing:

A request for continued examination (RCE) under 37 CFR 1.114
A continuation or divisional application under 37 CFR 1.53(b)

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

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

Question 23

How does a suspension of action affect continued prosecution applications (CPAs) or requests for continued examination (RCEs)?

Accepted Answer

Applicants can request a suspension of action for continued prosecution applications (CPAs) or requests for continued examination (RCEs) under specific conditions. According to MPEP 709, "Applicants may request a suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months in a continued prosecution application (CPA) filed under 37 CFR 1.53(d) if the application is a design application, or in a continued examination (RCE) filed under 37 CFR 1.114." The request must be filed at the time of filing the CPA or RCE. It's important to note that as of July 14, 2003, CPA practice does not apply to utility and plant applications.

To learn more:

Question 24

How do I request prioritized examination for a request for continued examination (PE-RCE)?

Accepted Answer

To request prioritized examination for an RCE (PE-RCE), the following conditions must be met:

The application must be a non-reissue utility or plant nonprovisional application
The publication fee must be paid
The PE-RCE request must be filed before the first Office action after filing the RCE
Only one PE-RCE request may be granted per application

The MPEP states: A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions...

To learn more:

Question 25

How do I correct or add a benefit claim after filing my application?

Accepted Answer

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
If you're adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It's important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

Question 26

How can filing a Request for Continued Examination (RCE) lead to application abandonment?

Accepted Answer

Filing a Request for Continued Examination (RCE) can lead to application abandonment in several scenarios:

Appeals with no allowed claims: MPEP 711.02(b) states, 'Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission (37 CFR 1.114(d)) in the application.'
Improper RCE with outstanding final Office action: The MPEP notes, 'When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111.'
Improper RCE before issue fee payment: 'Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application.'

In all these cases, an improper RCE filing does not toll the time period for reply or fee payment, potentially resulting in abandonment. Applicants should ensure proper RCE filings to avoid unintentional abandonment.

To learn more:

Question 27

How can an applicant respond to a final rejection in a patent application?

Accepted Answer

How can an applicant respond to a final rejection in a patent application?

When faced with a final rejection, an applicant has several options to respond:

File an appeal: Challenge the examiner's decision before the Patent Trial and Appeal Board.
File a request for continued examination (RCE): Pay a fee to continue prosecution with the examiner.
File a continuation or divisional application: Submit a new application based on the same disclosure.
Amend the claims: Make amendments that do not necessitate further search or consideration.
Submit evidence: Provide affidavits or declarations to support patentability.

The MPEP 706.07 states:

'The applicant's reply must either cancel the claims rejected or submit evidence and/or amendments which, in the examiner's judgment, overcome the rejection.'

It's important to note that after final rejection, the examiner is not required to enter amendments that require additional search or consideration.

To learn more:

Question 28

How are improper CPA requests handled by the USPTO?

Accepted Answer

The USPTO handles improper Continued Prosecution Application (CPA) requests in the following ways:

For utility or plant applications filed on or after July 14, 2003, improper CPA requests are treated as requests for continued examination (RCE) under 37 CFR 1.114 if the application has a filing date on or after June 8, 1995.
If the improper CPA doesn't satisfy RCE requirements, it's treated as an improper RCE, and the time period set in the last Office action continues to run.
For applications with a filing date before June 8, 1995, the Office will notify the applicant of the improper CPA by mailing a notice.
If an examiner discovers an improperly processed CPA, they should immediately notify a supervisory applications examiner (SAE) or other technical support staff to correct the application records.
The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless there are extenuating circumstances.

As stated in the MPEP: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records as appropriate.

It's important to note that if the application becomes abandoned due to an improper CPA, the applicant may need to file a petition under 37 CFR 1.137 to revive the application and pay the required fees.

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

For more information on RCE, visit: RCE.

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

Question 29

How are CPAs different from RCEs?

Accepted Answer

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of an application, but they have significant differences:

CPAs are only available for design patent applications, while RCEs can be used for utility, plant, and design applications
CPAs result in a new application with the same application number, while RCEs continue examination of the same application
CPAs can only be filed before payment of the issue fee, abandonment, or termination of proceedings; RCEs can be filed after payment of the issue fee with a petition
CPAs automatically abandon the prior application, while RCEs do not

The MPEP states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

It's important to note that if an improper CPA is filed for a utility or plant application on or after July 14, 2003, it may be treated as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

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

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Question 30

How are continuation or divisional applications filed under former 37 CFR 1.62 treated now?

Accepted Answer

The treatment of continuation or divisional applications filed under former 37 CFR 1.62 depends on the filing date of the original application:

For applications filed on or after June 8, 1995: Requests filed on or after December 1, 1997, are treated as requests for continued examination (RCE) under 37 CFR 1.114.
For applications filed before June 8, 1995: Requests filed on or after December 1, 1997, are treated as improper applications.

As stated in the MPEP: A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP 706.07(h), paragraph IV.

To learn more:

Question 31

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after its deletion?

Accepted Answer

The treatment of continuation or divisional applications filed under former 37 CFR 1.62 depends on the filing date of the original application:

For applications filed on or after June 8, 1995: "A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114." This means these applications are now processed under the RCE procedure.
For applications filed before June 8, 1995: Requests for continuation or divisional applications filed on or after December 1, 1997, will be treated as improper applications.

For more details on RCE procedures, refer to MPEP 706.07(h), paragraph IV.

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

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

For more information on RCE, visit: RCE.

Question 32

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after December 1, 1997?

Accepted Answer

For applications filed on or after June 8, 1995, continuation or divisional applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated differently. The MPEP states: “A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114.” This means such applications are now processed under the RCE procedure rather than the former File Wrapper Continuing Procedure.

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

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

For more information on RCE, visit: RCE.

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

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

For more information on RCE, visit: RCE.

Question 33

Can I submit an affidavit after a final rejection in a patent application?

Accepted Answer

Yes, you can submit an affidavit after a final rejection, but there are specific conditions. According to MPEP 715.09:

Affidavits and declarations submitted under 37 CFR 1.131(a) and other evidence traversing rejections are considered timely if submitted: ... (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e).

Additionally, you can submit an affidavit after the prosecution is closed (including after final rejection) if you file it with a request for continued examination (RCE) or a continued prosecution application (CPA) in design applications.

To learn more:

Question 34

Can I file a request for continued examination (RCE) after the period for reply has expired?

Accepted Answer

Yes, you can file a request for continued examination (RCE) after the period for reply has expired, as long as the application hasn't been abandoned for an extended period. The MPEP 714.17 states:

An amendment filed after the expiration of the statutory period for reply to an Office action cannot be entered. The applicant may file a continuing application or request for continued examination (RCE) (if applicable).

An RCE can be an effective way to continue prosecution of your application even after the reply period has expired. However, it's important to file the RCE as soon as possible to avoid potential complications with abandonment.

To learn more:

Question 35

Can drawing corrections be made after the application has been allowed?

Accepted Answer

Yes, drawing corrections can be made after the application has been allowed. However, such corrections must be approved by the examiner before the application can be processed for issue. If extensive corrections are required, the examiner may require that the corrections be filed with a Request for Continued Examination (RCE) under 37 CFR 1.114.

Question 36

Can affidavits or declarations be submitted after the prosecution is closed?

Accepted Answer

Yes, affidavits or declarations under 37 CFR 1.130 can be submitted after the prosecution is closed, but only under specific circumstances. According to MPEP 717.01(f):

Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted: [...] (D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.

This means that affidavits or declarations can be submitted after prosecution is closed if:

They are filed with a Request for Continued Examination (RCE) in utility or plant applications filed on or after June 8, 1995
They are filed with a Continued Prosecution Application (CPA) in design applications

These options allow applicants to submit new evidence and continue prosecution even after a final rejection, appeal, or allowance, providing additional opportunities to overcome rejections or present new information.

To learn more:

Question 37

Can a suspension of action be requested after a final Office action?

Accepted Answer

Can a suspension of action be requested after a final Office action?

Generally, a suspension of action is not granted after a final Office action. According to MPEP 709:

"A request for suspension of action to provide time for consideration of an amendment after a final Office action will be denied."

However, there are exceptions:

If the examiner has requested significant data from the applicant, a suspension may be considered.
In rare cases where the finality of the Office action is withdrawn, a suspension might be possible.

It's important to note that other options, such as filing a Request for Continued Examination (RCE) under 37 CFR 1.114, may be more appropriate after a final Office action.

To learn more:

Question 38

Can a first Office action be made final after filing a Request for Continued Examination (RCE)?

russ.krajec@blueironip.com · Accepted Answer

Yes, a first Office action can be made final after filing a Request for Continued Examination (RCE) under certain conditions. According to MPEP 706.07(b):

"The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114, [...] and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114."

It's important to note that applicants cannot use an RCE to switch inventions or introduce claims that are independent and distinct from those previously examined.

To learn more:

final rejection
RCE
Request for Continued Examination
first Office action

Question 39

Can a CPA be filed for utility or plant applications?

Accepted Answer

No, Continued Prosecution Applications (CPAs) cannot be filed for utility or plant applications. The MPEP clearly states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. For utility and plant applications, applicants should consider filing a request for continued examination (RCE) under 37 CFR 1.114 or a new application under 37 CFR 1.53(b) instead.

To learn more:

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (19)

What is the difference between a CPA in utility/plant applications and design applications?

What is the difference between a CPA for design applications and utility applications?

What is required to add a benefit claim after the initial filing of a patent application?

What is considered a ‘new’ patent application?

What happens if an improper CPA is filed?

What happens if an improper CPA is filed for a utility or plant application?

What happens if a CPA request is improper for a utility or plant application?

What happens if a CPA is improperly requested for a utility or plant patent application?

What happens if a CPA is filed in a utility or plant application after July 14, 2003?

What happens if a Continued Prosecution Application (CPA) is filed after the issue fee has been paid?

Is a Request for Continued Examination (RCE) considered a new application?

How does CPA practice differ for utility and plant applications?

How do I correct or add a benefit claim after filing my application?

How are improper CPA requests handled by the USPTO?

How are CPAs different from RCEs?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated now?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after its deletion?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after December 1, 1997?

Can a CPA be filed for utility or plant applications?

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (2)

What is the status of a new nonprovisional patent application?

What is considered a ‘new’ application according to the MPEP?

MPEP 201 - Types of Applications (13)

What is the difference between a CPA in utility/plant applications and design applications?

What is the difference between a CPA for design applications and utility applications?

What happens if an improper CPA is filed?

What happens if an improper CPA is filed for a utility or plant application?

What happens if a CPA request is improper for a utility or plant application?

What happens if a CPA is improperly requested for a utility or plant patent application?

What happens if a CPA is filed in a utility or plant application after July 14, 2003?

What happens if a Continued Prosecution Application (CPA) is filed after the issue fee has been paid?

How does CPA practice differ for utility and plant applications?

How are improper CPA requests handled by the USPTO?

How are CPAs different from RCEs?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after its deletion?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after December 1, 1997?

MPEP 203 - Status of Applications (3)

What is the status of a new nonprovisional patent application?

What is considered a ‘new’ patent application?

What is considered a ‘new’ application according to the MPEP?

MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)

How do I correct or add a benefit claim after filing my application?

MPEP 500 - Receipt and Handling of Mail and Papers (1)

Can drawing corrections be made after the application has been allowed?

MPEP 507 - Drawing Review in the Office of Patent Application Processing (1)

Can drawing corrections be made after the application has been allowed?

Patent Law (23)

What is the status of a new nonprovisional patent application?

What is the difference between a CPA in utility/plant applications and design applications?

What is the difference between a CPA for design applications and utility applications?

What is required to add a benefit claim after the initial filing of a patent application?

What is considered a ‘new’ patent application?

What is considered a ‘new’ application according to the MPEP?

What happens if an improper CPA is filed?

What happens if an improper CPA is filed for a utility or plant application?

What happens if a CPA request is improper for a utility or plant application?

What happens if a CPA is improperly requested for a utility or plant patent application?

What happens if a CPA is filed in a utility or plant application after July 14, 2003?

What happens if a Continued Prosecution Application (CPA) is filed after the issue fee has been paid?

Is a Request for Continued Examination (RCE) considered a new application?

How does the USPTO handle IDSs in Requests for Continued Examination (RCE)?

How does CPA practice differ for utility and plant applications?

How do I correct or add a benefit claim after filing my application?

How are improper CPA requests handled by the USPTO?

How are CPAs different from RCEs?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated now?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after its deletion?

How are continuation or divisional applications filed under former 37 CFR 1.62 treated after December 1, 1997?

Can drawing corrections be made after the application has been allowed?

Can a CPA be filed for utility or plant applications?

Patent Procedure (23)

What is the status of a new nonprovisional patent application?

What is the difference between a CPA in utility/plant applications and design applications?

What is the difference between a CPA for design applications and utility applications?

What is required to add a benefit claim after the initial filing of a patent application?

What is considered a ‘new’ patent application?

What is considered a ‘new’ application according to the MPEP?

What happens if an improper CPA is filed?