When does the duty to disclose information end?

The duty to disclose information does not end when an application becomes allowed but extends until a patent is granted. According to 37 CFR 1.56(a): “The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned.” The MPEP further clarifies…

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Can the Board assume jurisdiction before an application is ready for allowance?

Yes, the Board of Patent Appeals and Interferences (BPAI) has the authority to assume jurisdiction over a patent application at any stage of the examination process. The MPEP 2312 explicitly states: “In an application this jurisdictional assumption may occur at any time, including before the application is otherwise in condition for allowance.” This means that…

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What is a “Printer Rush” in patent examination?

A “Printer Rush” occurs when issues need to be addressed after a patent application has been allowed but before it can be published. As stated in MPEP 1309.02: “A printer rush occurs when document(s) need to be addressed after a patent application has been allowed. The file is returned to the examiner, a ‘Printer Rush’…

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What does it mean for an application to be “substantially allowable”?

An application is considered “substantially allowable” when it is in condition for allowance, except for minor formal matters. According to MPEP § 1301, “When an application is in condition for allowance, except as to matters of form, the application will be considered special and prompt action taken to require correction of formal matters.” This means…

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What is rejoinder of claims in patent examination?

Rejoinder of claims refers to the process of bringing previously withdrawn claims back into consideration and allowing them in a patent application. This typically occurs when certain claims were withdrawn from examination due to a restriction requirement, but are now eligible for allowance. According to MPEP 1302.04(h), “Any previously withdrawn claims that are being rejoined…

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What options does an applicant have for non-elected claims when the application is in condition for allowance?

When an application with non-elected claims is in condition for allowance, the applicant has several options: The examiner may contact the applicant to advise them of their options regarding pending withdrawn claims. The examiner may use Form Paragraph 8.03 to notify the applicant, which gives them two months to: Cancel the non-elected claims Take other…

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