What is the maximum statutory period for reply in patent applications?
What is the maximum statutory period for reply in patent applications? The maximum statutory period for reply in patent applications is six months. This is specified in MPEP 710, which states: 35 U.S.C. 133 and 35 U.S.C. 154(b)(2)(A)(ii) provide that no application shall be regarded as abandoned if the application includes a request for continued…
Read MoreWhat is the maximum statutory period for reply in patent applications?
What is the maximum statutory period for reply in patent applications? The maximum statutory period for reply in patent applications is six months. This is established in MPEP 710, which states: The maximum statutory period for reply to an Office action is 6 months. 35 U.S.C. 133. Shortened periods are currently used in most cases.…
Read MoreWhat happens if a reply to an Office action is filed after the expiration of the statutory period?
What happens if a reply to an Office action is filed after the expiration of the statutory period? If a reply to an Office action is filed after the expiration of the statutory period, it may still be accepted if it meets certain conditions. According to MPEP 710: “Any reply received in the Office after…
Read MoreIs increasing the number of claims in a response considered not fully responsive?
Increasing the number of claims in a response to a second or subsequent non-final action on the merits is not, by itself, a reason to consider the response not fully responsive. The MPEP states: An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the…
Read MoreHow should an applicant respond to an Office Action?
When responding to an Office Action, applicants should: Include the application number, 4-digit art unit number, and examiner’s name Include the 4-digit confirmation number on every paper filed Address all rejections and objections raised in the Office Action Provide arguments for allowability as required by 37 CFR 1.111 The MPEP section 707 states: Replies to…
Read MoreHow should an examiner handle persuasive arguments from an applicant?
When an examiner finds an applicant’s arguments persuasive, they should take appropriate action. According to MPEP 707.07(f): If applicant’s arguments are persuasive and upon reconsideration of the rejection, the examiner determines that the previous rejection should be withdrawn, the examiner must provide in the next Office communication the reasons why the previous rejection is withdrawn…
Read MoreWhat constitutes a fully responsive reply to a non-final Office action?
A fully responsive reply to a non-final Office action must address all objections and rejections raised by the examiner. According to MPEP 714.02: ‘The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.’ This means that applicants should: Respond to…
Read MoreCan the period for reply to an Office action be extended?
Can the period for reply to an Office action be extended? Yes, the period for reply to an Office action can be extended in many cases. According to MPEP 710: “Unless otherwise provided, the maximum statutory period for reply to an Office action is SIX MONTHS. The examiner may set a shorter time for reply,…
Read MoreWhat is the examiner’s responsibility when applicant traverses a rejection?
When an applicant traverses a rejection, the examiner has a responsibility to address the applicant’s arguments. As stated in MPEP 707.07(f): Where the applicant traverses any rejection, the examiner should, if they repeat the rejection, take note of the applicant’s argument and answer the substance of it. This means the examiner must carefully consider the…
Read MoreHow should an examiner respond to applicant’s arguments in patent prosecution?
According to MPEP 707.07(f), examiners should respond to applicant’s arguments as follows: If repeating a rejection, take note of the applicant’s argument and answer the substance of it. If withdrawing a rejection due to persuasive arguments, provide reasons for the withdrawal by referring specifically to the applicant’s remarks. If making a new ground of rejection…
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