What are the requirements for amending claims in response to a rejection?
When amending claims in response to a rejection, an applicant must: Clearly point out the patentable novelty they believe the claims present in view of the state of the art disclosed by the cited references or objections made Show how the amendments avoid such references or objections As stated in 37 CFR 1.111(c): In amending…
Read MoreWhat should an examiner do if applicant’s arguments are persuasive but a new ground of rejection is necessary?
When an examiner finds an applicant’s arguments persuasive but determines that a new ground of rejection is necessary, they should follow a specific procedure. As outlined in MPEP 707.07(f): If applicant’s arguments are persuasive and the examiner determines that the previous rejection should be withdrawn but that, upon further consideration, a new ground of rejection…
Read MoreWhat are the time limits for responding to Office actions in accelerated examination?
In the accelerated examination program, applicants must adhere to strict time limits for responding to Office actions. According to MPEP 708.02(a): Applicants must file a reply to Office actions within 1 month of the mailing date or abandonment will result No extensions of time will be permitted For final Office actions, the reply must be…
Read MoreCan drawing objections be held in abeyance in a patent application?
No, drawing objections cannot typically be held in abeyance in a patent application. According to 37 CFR 1.85(a): Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will…
Read MoreCan I use email to respond to Office actions from the USPTO?
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met: You must have a written authorization on file for Internet communication. The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web). The email must include all necessary information and…
Read MoreWhat does it mean for a patent application to be ‘amended’?
MPEP 203.03 defines an ‘amended’ patent application as follows: An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the…
Read MoreHow does the USPTO acknowledge receipt of foreign priority claims?
The USPTO acknowledges receipt of foreign priority claims in several ways: If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26 For priority documents filed in a parent application, the examiner may use form paragraph 2.27 If…
Read MoreWhat is the status of a new nonprovisional patent application?
A “new” nonprovisional patent application is one that has not yet received an action by the examiner. Its status as a “new” application continues until the examiner takes action, even if the applicant files an amendment prior to the first Office Action. A request for continued examination (RCE) under 37 CFR 1.114 is not considered…
Read MoreWhen is a patent application considered ‘rejected’?
MPEP 203.02 defines a ‘rejected’ application as follows: A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a ‘rejected’ application. Its status as a ‘rejected’ application continues as such until acted upon by the applicant in reply to the examiner’s action (within…
Read MoreHow does an application become ‘amended’?
MPEP 203.03 defines an ‘amended’ application as: An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or…
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