Q: Which types of applications are not eligible for prioritized examination?

According to MPEP 708.01 , certain types of applications are not eligible for prioritized examination. These include: International applications that have not entered the national stage under 35 U.S.C. 371 Design applications Reissue applications Provisional applications Reexamination proceedings The MPEP states: Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. To learn more: prioritized examination ineligible applications international applications design applications reissue applications provisional applications reexamination proceedings

Q: What types of applications are considered national applications?

According to MPEP 201.01 , national applications include: Original (nonprovisional) applications Reissue applications Reexamination proceedings The MPEP specifically states: 'National applications include original (nonprovisional) applications, reissue applications, and reexamination proceedings.' Each of these types serves a different purpose in the patent process. Original applications are for new inventions, reissue applications are for correcting errors in existing patents, and reexamination proceedings are for reviewing the validity of granted patents. For more information on reissue applications, visit: reissue applications .

Q: What takes precedence over special cases in patent examination?

According to MPEP 708.01 , certain procedures take precedence over actions on special cases: Completion and mailing of all papers typed and ready for signature Processing of 'Printer Rush' cases within the indicated period Reissue applications, particularly those involved in stayed litigation Applications with set time limits, such as examiner's answers due within 2 months after appellant's brief Applications ready for allowance or final rejection The MPEP states: Certain procedures by the examiners take precedence over actions even on special cases. For example, all papers typed and ready for signature should be completed and mailed. All allowed cases returned to the examiner marked as a 'Printer Rush' must be processed and returned within the period indicated. To learn more: special cases patent examination precedence Printer Rush reissue applications time limits

Question 1

Which types of applications are not eligible for prioritized examination?

Accepted Answer

According to MPEP 708.01, certain types of applications are not eligible for prioritized examination. These include:

International applications that have not entered the national stage under 35 U.S.C. 371
Design applications
Reissue applications
Provisional applications
Reexamination proceedings

The MPEP states: Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings.

To learn more:

Question 2

When is it necessary to inspect previously patented or abandoned application papers?

Accepted Answer

Inspecting previously patented or abandoned application papers is necessary in certain situations during patent examination. According to MPEP 711.04(b):

"In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application."

This inspection is crucial for understanding the prior art, examining related applications, or evaluating the scope of a reissue application.

To learn more:

Question 3

What types of patent applications receive special examination priority at the USPTO?

Accepted Answer

The USPTO grants special examination priority to certain types of patent applications. According to the MPEP, these include:

Reissue applications, especially those where litigation has been stayed
Ex parte reexamination proceedings involved in litigation
Inter partes reexamination proceedings involved in litigation
Cases with fixed 30-day due dates (e.g., examiner's answers and decisions on motions)
Other special cases, such as interference cases and cases made special by petition

The MPEP states:

"The order of examination for each examiner is to give priority to reissue applications and to reexamination proceedings, with top priority to reissue applications in which litigation has been stayed (MPEP § 1442.03), to ex parte reexamination proceedings involved in litigation (MPEP § 2261), and to inter partes reexamination proceedings involved in litigation (MPEP § 2661), then to those special cases having a fixed 30-day due date, such as examiner's answers and decisions on motions."

These special priorities ensure that time-sensitive and legally important cases are handled promptly.

To learn more:

Question 4

What types of applications are considered national applications?

Accepted Answer

According to MPEP 201.01, national applications include:

Original (nonprovisional) applications
Reissue applications
Reexamination proceedings

The MPEP specifically states:

'National applications include original (nonprovisional) applications, reissue applications, and reexamination proceedings.'

Each of these types serves a different purpose in the patent process. Original applications are for new inventions, reissue applications are for correcting errors in existing patents, and reexamination proceedings are for reviewing the validity of granted patents.

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

Question 5

What takes precedence over special cases in patent examination?

Accepted Answer

According to MPEP 708.01, certain procedures take precedence over actions on special cases:

Completion and mailing of all papers typed and ready for signature
Processing of 'Printer Rush' cases within the indicated period
Reissue applications, particularly those involved in stayed litigation
Applications with set time limits, such as examiner's answers due within 2 months after appellant's brief
Applications ready for allowance or final rejection

The MPEP states: Certain procedures by the examiners take precedence over actions even on special cases. For example, all papers typed and ready for signature should be completed and mailed. All allowed cases returned to the examiner marked as a 'Printer Rush' must be processed and returned within the period indicated.

To learn more:

Question 6

What is the process for handling submitted materials when a reissue application is being allowed?

Accepted Answer

When a reissue application containing materials submitted under MPEP § 724.02 is being allowed, the following process occurs:

Before mailing a notice of allowability, the examiner reviews the reissue application file for any unacted-upon petitions to expunge.
The examiner or appropriate Office official determines whether the submitted information is material to patentability.
If found material, the petition to expunge is denied, and the information becomes a permanent part of the public file.
If not material, the petition to expunge is granted, and the information is expunged.
If no petition to expunge is filed before the notice of allowability is mailed, the materials become part of the public file under 37 CFR 1.11(b).

The MPEP states: "If the reissue application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability."

To learn more:

Question 7

What is a reissue application and when is it used?

Accepted Answer

A reissue application is a type of application used to correct an error in an issued patent that renders the patent wholly or partly inoperative or invalid. It is governed by 35 U.S.C. 251 and 37 CFR 1.171-1.179. Reissue applications are typically filed when the original patent claims are too narrow or too broad, or when there are other errors that affect the scope or validity of the patent. For more information on reissue applications, refer to MPEP 1401.

Question 8

What happens if no petition to expunge is filed before the notice of allowability in a reissue application?

Accepted Answer

If no petition to expunge is filed before the mailing of the notice of allowability in a reissue application, the following occurs:

The MPEP explicitly states: "If a petition to expunge is not filed prior to the mailing of the notice of allowability, the materials submitted under MPEP § 724.02 will become a permanent part of the reissue application file and open to the public under 37 CFR 1.11(b)."

This emphasizes the importance of timely filing a petition to expunge if an applicant wishes to keep certain materials from becoming part of the public record.

To learn more:

Question 9

What happens if an assignee of a part interest refuses to join in an application for reissue?

Accepted Answer

If an assignee of a part interest refuses to join in an application for reissue, the reissue may still be applied for by the assignee of the entire interest. This is outlined in MPEP 1410. The assignee of the entire interest can file the reissue application as the sole applicant. However, the assignee must comply with the requirements of 37 CFR 1.172, which includes submitting an oath or declaration by the assignee.

Question 10

What happens if a reissue application is abandoned with submitted materials under MPEP § 724.02?

Accepted Answer

When a reissue application containing materials submitted under MPEP § 724.02 is to be abandoned, the following process occurs:

The examiner reviews the reissue application file before mailing a notice of abandonment.
If a petition to expunge is found in the file but not yet acted upon, it will be granted regardless of the materials' materiality to patentability.
The materials will then be expunged.
If no petition to expunge has been filed, the materials become available to the public under 37 CFR 1.11(b).

As stated in the MPEP: "If the reissue application is to be abandoned, prior to the mailing of a notice of abandonment, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. If a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged."

To learn more:

Question 11

What are the types of national applications mentioned in MPEP 201.01?

Accepted Answer

MPEP 201.01 outlines several types of national applications that can be filed with the USPTO. These include:

Original (nonprovisional) applications
Reissue applications
Design applications
Plant applications
Provisional applications

As stated in MPEP 201.01: 'National applications include original (nonprovisional), reissue, design, plant, and provisional applications.'

Each of these application types serves a specific purpose in the patent system and is subject to different rules and requirements.

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

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

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

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

Question 12

What are the special types of national applications?

Accepted Answer

The MPEP 201.01 mentions several special types of national applications:

1. Provisional applications (35 U.S.C. 111(b))
2. Reissue applications (35 U.S.C. 251)
3. Design applications (35 U.S.C. 171)
4. Plant applications (35 U.S.C. 161)

These applications have specific requirements and purposes. For example, provisional applications provide a way to establish an early effective filing date, while reissue applications allow for the correction of errors in issued patents. Design applications protect ornamental designs, and plant applications are for new varieties of plants.

For more details on these special application types, refer to the following MPEP sections:
- MPEP 201.04 - Provisional Application
- MPEP 1400 - Reissue
- MPEP 1500 - Design Patents
- MPEP 1600 - Plant Patents

Question 13

What are the rules for accessing reissue application files?

Accepted Answer

Reissue application files have specific access rules as outlined in MPEP 103:

'All reissue applications, both pending and abandoned, are open to public inspection and copying.'

This means that:

Anyone can access reissue application files
No special permission is required
Both pending and abandoned reissue applications are available

However, if the reissue application contains a request for continued examination (RCE) filed on or after March 16, 2013, access to the file may be restricted until publication.

For more information on public inspection, visit: public inspection.

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

Question 14

What are the different types of national applications in U.S. patent law?

Accepted Answer

According to MPEP 201.01, there are three main types of national applications in U.S. patent law:

Original applications: These include both provisional and nonprovisional applications.
Reissue applications: Filed to correct an error in an already issued patent.
Reexamination applications: Used to request a review of an existing patent.

The MPEP states: National applications include original (nonprovisional and provisional), reissue, and reexamination applications. Each type serves a specific purpose in the patent application process.

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

Question 15

What are reissue applications according to MPEP 201.01?

Accepted Answer

MPEP 201.01 briefly mentions reissue applications as one of the types of national applications. Specifically, it states:

'National applications include original applications and reissue applications (filed under 35 U.S.C. 251).'

Reissue applications are a specialized type of patent application used to correct errors in an already issued patent. They are governed by 35 U.S.C. 251, which allows a patentee to apply for a reissue of their patent if it is deemed to be wholly or partly inoperative or invalid due to certain types of errors.

For more detailed information on reissue applications, refer to MPEP 1400 - Correction of Patents.

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

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

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

Question 16

What are 'special cases' in patent examination?

Accepted Answer

'Special cases' in patent examination refer to applications that are advanced out of turn for examination. According to MPEP 708.01, these include:

Applications deemed of peculiar importance to a branch of public service
Applications made special through petitions or prioritized examination requests
Reissue applications, especially those involved in stayed litigation
Applications remanded by appellate tribunals
Applications interfering with other allowable applications or patents
Applications ready for allowance or final rejection
Applications pending for more than 5 years
Reexamination proceedings

The MPEP states: Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Director of the USPTO or a Commissioner) will continue to be special throughout its entire course of prosecution in the U.S. Patent and Trademark Office, including appeal, if any, to the Patent Trial and Appeal Board.

To learn more:

Question 17

How do reissue applications differ from original patent applications?

Accepted Answer

How do reissue applications differ from original patent applications?

Reissue applications are distinct from original patent applications in that they are used to correct errors in already-issued patents. The MPEP 201 states, "An application for reissue of a patent is an application for a new patent to correct an error in an unexpired patent as provided in 37 CFR 1.171 through 1.178."

Key differences include:

Purpose: To correct errors in existing patents, not to obtain new patents
Timing: Filed after a patent has been issued and while it's still unexpired
Legal basis: Filed under 35 U.S.C. 251 and subject to specific regulations
Content: Must include a copy of the original patent and point out the error(s) to be corrected
Examination: Focuses on the proposed changes and their impact on patentability

Reissue applications provide a mechanism for patent holders to address issues in their patents, potentially broadening or narrowing claims, or correcting other substantive errors.

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

Question 18

How can I access a reissue application file?

Accepted Answer

Reissue application files are generally open to public inspection. According to 37 CFR 1.11(b):

Reissue applications are open to inspection by the general public
The filing of reissue applications (except for continued prosecution applications under 37 CFR 1.53(d)) is announced in the Official Gazette
The announcement includes details such as filing date, reissue application and original patent numbers, title, inventor name, and examining group

For Image File Wrapper (IFW) reissue applications:

Files are open to inspection by the general public through Patent Center via the USPTO website
Members of the public can view the entire content of the reissue application file history online

Direct quote: 'All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor.' (37 CFR 1.11(b))

Question 19

How are materials submitted under MPEP § 724.02 treated in reissue applications open to the public?

Accepted Answer

Materials submitted under MPEP § 724.02 in reissue applications open to the public under 37 CFR 1.11(b) are treated as follows:

The materials are kept separate from the reissue application file and are not publicly available until a determination is made regarding their materiality to patentability.
They will only be released to the public if no petition to expunge was filed before a notice of allowability or abandonment, or if such a petition was denied.
The examiner reviews the file for any pending petitions to expunge before issuing notices of abandonment or allowability.
If the information is found to be material to patentability, it becomes a permanent part of the public file.
If not material, the petition to expunge is granted, and the information is expunged.

As stated in the MPEP: "Materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied."

To learn more:

Question 20

How are confidential materials handled in reissue applications open to the public?

Accepted Answer

Confidential materials submitted under MPEP § 724.02 in reissue applications open to the public under 37 CFR 1.11(b) are handled as follows:

Materials are kept separate from the main application file
They are not publicly available until a determination of materiality to patentability is made
If found not material, they can be expunged upon petition
If found material, the petition to expunge is denied, and the materials become part of the public record

The MPEP states: 'If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reissue application file and open to the public.'

However, there is a provision for redaction: 'Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material.'

This process balances the need for public disclosure in reissue applications with the protection of genuinely confidential information.

To learn more:

Question 21

How are assignment records for reissue applications handled?

Accepted Answer

Assignment records for reissue applications are treated differently from regular patent applications due to their public nature. According to MPEP 301.01:

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b).

This means that once a reissue application is filed, its assignment records become publicly accessible, regardless of whether the original patent's assignment records were previously confidential. This is because reissue applications are, by nature, related to already-issued patents and are subject to different rules regarding public disclosure.

The public accessibility of reissue application assignment records aligns with the general principle of transparency in the patent system, allowing interested parties to track ownership changes even during the reissue process. This can be particularly important for those monitoring patent rights in specific technological areas or for potential licensees or purchasers of patent rights.

For more information on public inspection, visit: public inspection.

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

Question 22

Can protected material be redacted if found material to patentability in a reissue application?

Accepted Answer

Yes, it is possible to redact protected material found to be material to patentability in a reissue application. The process involves:

Identifying the protected material within the submission that is material to patentability.
Creating a redacted version that removes the protected information while retaining the important material.
Submitting the redacted version to the Office along with a petition under 37 CFR 1.182.
Requesting that the unredacted version be sealed and replaced with the redacted version.

The MPEP states: "Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version."

To learn more:

37 CFR 1.182

Question 23

Can an assignee of a part interest alone file a reissue application?

Accepted Answer

No, an assignee of a part interest alone cannot file a reissue application. According to MPEP 1410, a reissue application must be applied for by all of the inventors, unless the application is accompanied by a petition under 37 CFR 1.182 for waiver of the requirement. Alternatively, the assignee of the entire interest can file the reissue application. An assignee of only a part interest is not entitled to file a reissue application on his or her own.

Here’s the complete FAQ:

MPEP 103-Right of Public To Inspect Patent Files and Some Application Files (2)

What are the rules for accessing reissue application files?

How can I access a reissue application file?

MPEP 106-Control of Inspection by Assignee (2)

What happens if an assignee of a part interest refuses to join in an application for reissue?

Can an assignee of a part interest alone file a reissue application?

MPEP 200 - Types and Status of Application; Benefit and Priority (5)

What types of applications are considered national applications?

What are the types of national applications mentioned in MPEP 201.01?

What are the different types of national applications in U.S. patent law?

What are reissue applications according to MPEP 201.01?

How do reissue applications differ from original patent applications?

How do reissue applications differ from original patent applications?

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

What is a reissue application and when is it used?

What are the special types of national applications?

MPEP 201 - Types of Applications (7)

What types of applications are considered national applications?

What is a reissue application and when is it used?

What are the types of national applications mentioned in MPEP 201.01?

What are the special types of national applications?

What are the different types of national applications in U.S. patent law?

What are reissue applications according to MPEP 201.01?

How do reissue applications differ from original patent applications?

How do reissue applications differ from original patent applications?

MPEP 300 - Ownership and Assignment (1)

How are assignment records for reissue applications handled?

MPEP 301-Ownership/Assignability of Patents and Applications (1)

How are assignment records for reissue applications handled?

Patent Law (12)

What types of applications are considered national applications?

What is a reissue application and when is it used?

What happens if an assignee of a part interest refuses to join in an application for reissue?

What are the types of national applications mentioned in MPEP 201.01?

What are the special types of national applications?

What are the rules for accessing reissue application files?

What are the different types of national applications in U.S. patent law?

What are reissue applications according to MPEP 201.01?

How do reissue applications differ from original patent applications?

How do reissue applications differ from original patent applications?

How can I access a reissue application file?

How are assignment records for reissue applications handled?

Can an assignee of a part interest alone file a reissue application?

Patent Procedure (12)

What types of applications are considered national applications?

What is a reissue application and when is it used?

What happens if an assignee of a part interest refuses to join in an application for reissue?

What are the types of national applications mentioned in MPEP 201.01?

What are the special types of national applications?

What are the rules for accessing reissue application files?

What are the different types of national applications in U.S. patent law?

What are reissue applications according to MPEP 201.01?

How do reissue applications differ from original patent applications?

How do reissue applications differ from original patent applications?

How can I access a reissue application file?

How are assignment records for reissue applications handled?

Can an assignee of a part interest alone file a reissue application?