How does one make a timely election to proceed under pre-AIA 35 U.S.C. 103(b)?
Making a timely election to proceed under pre-AIA 35 U.S.C. 103(b) is crucial for applicants seeking to benefit from this provision. The MPEP provides guidance on what is considered timely: An election will normally be considered timely if it is made no later than the earlier of either the payment of the issue fee or…
Read MoreWhen does an election become fixed in a patent application?
An election becomes fixed in a patent application when the claims have received an action on their merits by the USPTO. The MPEP § 818 clearly states: “Election becomes fixed when the claims in an application have received an action on their merits by the Office.” This means that once the examiner has examined the…
Read MoreWhat is an election in patent applications?
An election in patent applications is the process where the applicant designates one of two or more inventions or patentably distinct species for prosecution in the application. As stated in MPEP § 818: “Election is the designation by applicant of the one of two or more inventions or patentably distinct species, or of the group…
Read MoreWhat is a traverse in response to a restriction requirement?
A traverse is a request for reconsideration of a requirement to restrict that must include a written statement of the reasons for traverse. According to MPEP 818.01, a traverse must “distinctly and specifically point out the supposed errors upon which the applicant relies for concluding that the requirement is in error.” The MPEP states: “A…
Read MoreHow can an applicant respond to a restriction requirement?
When faced with a restriction requirement, an applicant has several options for response, as outlined in MPEP 817. The key elements of a proper response include: Electing an invention to be examined Identifying the claims encompassing the elected invention Optionally, traversing the requirement Form Paragraph 8.21 in the MPEP provides guidance on the applicant’s response…
Read MoreHow can an applicant respond to a restriction requirement in a design patent application?
When responding to a restriction requirement in a design patent application, an applicant has several options: Elect one group of designs for prosecution without traverse. Elect one group of designs for prosecution with traverse, providing arguments against the restriction. Petition to review the requirement. If electing with traverse, the MPEP advises: “If a response to…
Read MoreCan more FAQs be generated for MPEP 818.02(c)?
No more FAQs can be generated for MPEP 818.02(c) – Election By Optional Cancelation of Claims. All relevant information from this specific section has been covered in the previous questions and answers, and there are no significant topics or key information that have not been addressed. To learn more: MPEP patent examination election cancelation of…
Read MoreDo the guidelines for other substantive and procedural matters apply to national stage applications under 35 U.S.C. 371?
Yes, the guidelines for other substantive and procedural matters generally apply to national stage applications submitted under 35 U.S.C. 371. This includes guidance on: Double patenting rejections (MPEP § 804) Election and reply by applicant (MPEP § 818) Rejoinder of nonelected inventions (MPEP § 821.04) MPEP 823 states: “However, the guidance set forth in this…
Read MoreHow should an applicant respond to a restriction requirement?
When responding to a restriction requirement, an applicant must elect one invention for examination. If the applicant wishes to challenge the restriction requirement, they must also provide specific reasons for their disagreement. According to MPEP § 818: “In the reply to the restriction requirement, applicant must elect one invention for examination. If applicant wishes to…
Read MoreWhat happens after an applicant elects with traverse in a restriction requirement?
After an applicant elects with traverse in a restriction requirement, the examiner must reconsider the requirement. If the examiner maintains the restriction, they should: Make the requirement final in the next Office action Reply to the applicant’s arguments Use Form Paragraph 8.25 to make the restriction final As stated in the MPEP, “Where the initial…
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