How does the USPTO count second or subsequent First Actions on the Merits (FAOM)?

The USPTO has a specific system for counting second or subsequent First Actions on the Merits (FAOM). According to MPEP 1705: “A second/subsequent FAOM usually occurs when the first action is a mailed restriction/election action and the second action is an action on the merits. The USPTO’s automated data management system will automatically determine if…

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Can a patent application’s classification be changed after the first action on the merits?

Generally, a patent application’s classification is not changed after the first action on the merits has been issued. The MPEP 909.01(c) states: “Generally, after a first action on the merits has been mailed C* classification will not be removed from an application’s classification picture.” This guideline suggests that the USPTO aims to maintain consistency in…

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What factors are considered for making a requirement for information prior to the first action on the merits?

According to MPEP 704.11(b), several factors are considered when determining the appropriateness of a separate requirement for information prior to the first action on the merits. These include: Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool Whether the applicant submitted an Information Disclosure Statement…

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What is the optimal timing for making a requirement for information during patent examination?

According to MPEP 704.11(b), the optimal timing for making a requirement for information is: “The optimum time for making a requirement is prior to or with a first action on the merits because the examiner has the maximum opportunity to consider and apply the response.” This timing allows the examiner to: Gather necessary information early…

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