What constitutes a valid ‘reply’ for a petition to excuse unintentional delay in an international design application?
A valid ‘reply’ for a petition to excuse unintentional delay in an international design application can take two forms, as specified in 37 CFR 1.1051(c): Filing a continuing application (with additional requirements if the original application hasn’t been internationally registered) A grantable petition under 37 CFR 1.1052 for applications filed indirectly with the USPTO The…
Read MoreHow does the filing date of a U.S. parent application affect the pre-AIA 35 U.S.C. 102(e) date in a continuing application?
The filing date of a U.S. parent application can be used as the pre-AIA 35 U.S.C. 102(e) date in a continuing application, but only if certain conditions are met. The MPEP states: “For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C.…
Read MoreCan I file a continuing application based on an international design application?
Yes, you can file a continuing application based on an international design application that designates the United States. The MPEP 2920 states: “An applicant may file a continuing application that claims priority to an international design application designating the United States in accordance with 35 U.S.C. 386(c).” This means that you can file continuation, divisional,…
Read MoreHow does filing a continuing application affect patent term adjustment?
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14): “Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”…
Read MoreCan a losing party in a patent interference pursue claims in a continuing application?
A losing party in a patent interference may pursue claims in a continuing application, but with significant limitations due to estoppel. According to MPEP 2308.03, the following restrictions apply: Claims that would have been anticipated or rendered obvious by the subject matter of the lost count are barred due to estoppel on the merits. Claims…
Read MoreWhen can I file a Notice of Appeal?
You can file a Notice of Appeal after any of your claims has been twice rejected, regardless of whether the rejection is final or not. The MPEP states: “A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected.“ It’s important…
Read MoreHow does withdrawing a patent application from issue affect the patent term?
Withdrawing a patent application from issue can potentially affect the patent term in several ways: If the withdrawal leads to continued examination, it may result in patent term adjustment (PTA) under certain circumstances. The filing of a Request for Continued Examination (RCE) stops the accrual of “B delay” for PTA purposes. If the withdrawal results…
Read MoreHow does a continuing application affect double patenting considerations?
How does a continuing application affect double patenting considerations? Continuing applications, such as continuations, divisionals, and continuations-in-part (CIPs), can significantly impact double patenting considerations. According to MPEP 804.02: “A continuation-in-part application filed as a utility application is examined in the same manner as a continuation application… with respect to double patenting.” Key points to consider:…
Read MoreWhen can a first Office action be made final in a continuing application?
A first Office action can be made final in a continuing application when: The new application is a continuing application of, or a substitute for, an earlier application, and All claims of the new application are either identical to or patentably indistinct from the claims in the earlier application, and The claims would have been…
Read MoreWhat is the difference between a first action final rejection and a regular final rejection?
What is the difference between a first action final rejection and a regular final rejection? A first action final rejection occurs when an examiner issues a final rejection in the first Office action of a continuing application, while a regular final rejection typically comes after at least one non-final rejection. The MPEP 706.07(b) states: ‘The…
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