Question 1

What are the requirements for a request for deferral of examination under 37 CFR 1.103(d)?

Accepted Answer

What are the requirements for a request for deferral of examination under 37 CFR 1.103(d)?

A request for deferral of examination under 37 CFR 1.103(d) has specific requirements. According to MPEP 709:

"A request for deferral of examination under 37 CFR 1.103(d) must include the following:

(A) A period of suspension, in a whole number of months, not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code;
(B) The publication fee set forth in 37 CFR 1.18(d); and
(C) The processing fee set forth in 37 CFR 1.17(i)."

Additionally, the request must be filed before the first Office action on the merits, and the applicant must not have filed a nonpublication request under 37 CFR 1.213(a).

To learn more:

37 CFR 1.103(d)

Question 2

What is an Election of Species requirement in patent applications?

Accepted Answer

An Election of Species requirement is a type of restriction requirement in patent applications where the examiner asks the applicant to choose a single species or a single grouping of patentably indistinct species for examination. This is done when the application contains claims directed to multiple patentably distinct species.

According to MPEP 809.02(a), "Where restriction between species is appropriate (see MPEP § 808.01(a)) the examiner should send a letter including only a restriction requirement or place a telephone requirement to restrict (the latter being encouraged)."

The purpose of this requirement is to streamline the examination process and reduce the search and examination burden on the patent office.

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Question 3

How does the USPTO handle "election by original presentation"?

Accepted Answer

The USPTO handles "election by original presentation" when an applicant adds claims to a new invention after receiving an Office action on the original claims. The examiner will treat the newly added claims as if they were part of a separate application. Specifically:

The examiner will issue a restriction requirement using form paragraph 8.04.
The new claims will be withdrawn from consideration as being directed to a non-elected invention.
The applicant will be informed that they have "constructively elected" the original invention for prosecution on the merits.

The MPEP 821.03 states:

"Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits."

This process ensures that the examination remains focused on the originally presented invention while allowing the applicant to pursue the new invention in a separate application if desired.

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Question 4

How does the USPTO handle defective sequence listings in patent applications filed after January 1, 2022?

Accepted Answer

For patent applications filed on or after January 1, 2022, the USPTO has specific procedures for handling defective sequence listings. According to MPEP 2422.07:

"Applications filed on or after January 1, 2022, that are otherwise complete, but that contain defective sequence listings, will be accepted and the defective sequence listing will be treated in accordance with 37 CFR 1.52(e)(8)."

This means:

The application will be accepted for filing.
The applicant will be notified of the defective sequence listing.
The applicant will be given a period of time to correct the defective sequence listing.
If the defect is not corrected within the specified time, the application may be held abandoned.

It's important to note that this procedure differs from that for applications filed before January 1, 2022, which were subject to different rules regarding sequence listing defects.

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Question 5

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.

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Patent Law FAQ

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

MPEP 2400 – Biotechnology (1)

How does the USPTO handle defective sequence listings in patent applications filed after January 1, 2022?

MPEP 2422.07 – Requirements For Compliance And Consequences Of Non – Compliance (1)

How does the USPTO handle defective sequence listings in patent applications filed after January 1, 2022?

Patent Law (1)

How does the USPTO handle defective sequence listings in patent applications filed after January 1, 2022?

Patent Procedure (1)

How does the USPTO handle defective sequence listings in patent applications filed after January 1, 2022?