When should an applicant raise the issue of a premature final rejection?
According to MPEP 706.07(c), an applicant should raise the issue of a premature final rejection as soon as possible: Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This guidance emphasizes the importance of addressing the issue promptly. Applicants…
Read MoreWhen should an issue of premature final rejection be raised?
According to MPEP 706.07(c), any question regarding the prematurity of a final rejection “should be raised, if at all, while the application is still pending before the primary examiner.” This means that applicants or their representatives should address this issue as soon as they become aware of it, and before the examination process moves beyond…
Read MoreWhen can a patent examiner make a second or subsequent action final?
A patent examiner can make a second or subsequent action final in the following circumstances: When the examiner introduces a new ground of rejection that is necessitated by the applicant’s amendment of the claims. When the examiner introduces a new ground of rejection based on information submitted in an information disclosure statement (IDS) filed during…
Read MoreWhen can a final rejection be withdrawn in a patent application?
A final rejection in a patent application can be withdrawn under specific circumstances. According to MPEP 706.07(e): “Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b).” However, the examiner…
Read MoreWhen can an examiner withdraw the finality of a rejection?
An examiner can withdraw the finality of a rejection under the following circumstances: Upon the applicant’s request for reconsideration If the primary examiner finds the final rejection to have been premature While the application is still pending As stated in MPEP 706.07(d): “If, on request by applicant for reconsideration, the primary examiner finds the final…
Read MoreHow many submissions are allowed under the Transitional After-Final Practice?
The Transitional After-Final Practice allows for up to two submissions after a final rejection. According to MPEP 706.07(g): An applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions. However, it’s important to note: If such an applicant…
Read MoreWhat can be included in a submission under the Transitional After-Final Practice?
A submission under the Transitional After-Final Practice can include various types of information and amendments. According to MPEP 706.07(g): The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement (IDS), an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence in support…
Read MoreWhat happens to the finality of rejection after a submission under the Transitional After-Final Practice?
When a submission is made under the Transitional After-Final Practice and the appropriate fee is paid, the finality of the previous rejection is withdrawn. According to MPEP 706.07(g): The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r).…
Read MoreWhat is the Transitional After-Final Practice?
The Transitional After-Final Practice, as described in MPEP 706.07(g), is a procedure that allows applicants with certain pending applications to have submissions considered after a final rejection. This practice was introduced to ease the transition between 17-year and 20-year patent terms. Specifically, the MPEP states: In order to facilitate the completion of prosecution of applications…
Read MoreWho is eligible for the Transitional After-Final Practice?
The Transitional After-Final Practice applies to specific patent applications. According to MPEP 706.07(g): Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits,…
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