Question 1

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 2

What happens if a patent is determined to be ineligible for term extension?

Accepted Answer

If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:

The MPEP clearly states: "In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period."

This means that:

The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
The patent term extension application will be dismissed.
The applicant will be notified of the dismissal and the reasons for ineligibility.

This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.

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Question 3

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 4

What are the consequences of submitting a request for corrected publication for non-material mistakes?

Accepted Answer

Submitting a request for corrected publication under 37 CFR 1.221(b) for non-material mistakes can have unintended consequences. The MPEP warns:

"A request for corrected publication under 37 CFR 1.221(b) may result in a patent term adjustment reduction where the Office made only non-material errors (especially those listed above)."

This means that if you request a correction for errors that the USPTO considers non-material, such as:

Missing assignment information
Wrong assignee name
Missing benefit or priority claims (if not timely filed)
Typographical errors not affecting claim interpretation

You may face a reduction in your patent term adjustment. It's crucial to carefully consider whether an error is truly material before filing a request for corrected publication to avoid potentially shortening the term of your patent protection.

To learn more:

corrected publication
non-material mistakes
patent term adjustment
USPTO procedure

Question 5

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 6

What options do I have if my new claims are withdrawn due to election by original presentation?

Accepted Answer

If your new claims are withdrawn due to election by original presentation, you have several options:

Request reconsideration: You can argue that the new claims are not directed to a different invention and request that the examiner reconsider the withdrawal.
File a divisional application: You can pursue the new claims in a separate divisional application.
Traverse the requirement: You can traverse the restriction requirement by arguing that the inventions are not patentably distinct or by submitting evidence showing the inventions to be obvious variants.
Amend the claims: You can attempt to amend the new claims to make them more clearly related to the originally claimed invention.

The MPEP 821.03 advises:

"To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse."

It's important to respond promptly and carefully to preserve your rights and options for pursuing all aspects of your invention.

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Question 7

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 8

What happens when a new patent application is received in a Technology Center?

Accepted Answer

When a new patent application is received in a Technology Center, two key actions are taken:

The classification of the application is noted in the application file.
The initials or name of the examiner who will examine the application, or other assigned docket designation, are recorded in the file.

As stated in MPEP § 719.03: When a new application is received in a Technology Center, the classification of the application and the initials or name of the examiner who will examine it or other assigned docket designation are noted in the application file.

This process helps in organizing and tracking patent applications within the USPTO system.

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Question 9

What is the role of a primary examiner in reviewing a new assistant's work?

Accepted Answer

The primary examiner plays a crucial role in reviewing the work of a new assistant examiner. According to MPEP 707.01, "it is the duty of the primary examiner to review the application thoroughly." This involves:

Listening to the assistant examiner's explanation of the invention
Discussing the most pertinent references found during the search
Providing guidance on the action to be taken
Authorizing allowance if all statutory requirements are met

This thorough review ensures consistency and quality in patent examination, especially for newer examiners.

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Question 10

Can a request for suspension of action be filed after a non-final Office action?

russ.krajec@blueironip.com · Accepted Answer

Can a request for suspension of action be filed after a non-final Office action?

Yes, a request for suspension of action can be filed after a non-final Office action, but there are specific requirements. According to MPEP 709:

"A request for suspension of action, if filed after the date of issue or allowance of an application, will not be considered but will be returned to the applicant."

However, for non-final actions, the MPEP states:

"If the request is filed after a non-final Office action, the request must be accompanied by:

(A) a showing of good and sufficient cause for suspension of action; and
(B) the fee set forth in 37 CFR 1.17(g)."

It's crucial to provide a valid reason for the suspension request and pay the required fee when filing after a non-final Office action.

To learn more:

suspension of action
non-final Office action
USPTO procedure
patent application

Question 11

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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Question 12

How does the USPTO handle multiple pending reexamination proceedings for the same patent?

Accepted Answer

The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent:

Multiple ex parte reexamination proceedings are generally merged into a single proceeding.
If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations.
The USPTO may suspend one proceeding in favor of another to promote efficiency.

The MPEP states: "If multiple ex parte reexamination proceedings are pending concurrently on a patent, the proceedings will generally be merged. If a reissue application is pending concurrently with a reexamination proceeding, the USPTO will usually merge the two proceedings."

This approach ensures a coordinated examination and helps prevent conflicting outcomes.

To learn more:

Patent Law FAQ

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

Adjustments (1)

What happens if a patent is determined to be ineligible for term extension?

And Extensions (1)

What happens if a patent is determined to be ineligible for term extension?

MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (1)

How does the USPTO handle multiple pending reexamination proceedings for the same patent?

MPEP 2254 – Conduct Of Ex Parte Reexamination Proceedings (1)

How does the USPTO handle multiple pending reexamination proceedings for the same patent?

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?

MPEP 2700 – Patent Terms (1)

What happens if a patent is determined to be ineligible for term extension?

MPEP 2756 – Correspondence Between The Uspto And The Regulatory Agency (1)

What happens if a patent is determined to be ineligible for term extension?

Patent Law (3)

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

What happens if a patent is determined to be ineligible for term extension?

How does the USPTO handle multiple pending reexamination proceedings for the same patent?

Patent Procedure (3)

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

What happens if a patent is determined to be ineligible for term extension?

How does the USPTO handle multiple pending reexamination proceedings for the same patent?