Why is the mailing date important for USPTO Office actions?
The mailing date on USPTO Office actions is crucial for several reasons: It marks the official start of the response period for applicants. It’s used to calculate statutory deadlines in the patent examination process. It provides a clear record of when the USPTO communicated with the applicant. The importance of accuracy in applying the mailing…
Read MoreHow can I request an extension of time to reply to a USPTO Office action?
How can I request an extension of time to reply to a USPTO Office action? To request an extension of time to reply to a USPTO Office action, you need to follow specific procedures. According to MPEP 704.13: “Extensions of time may be granted only pursuant to petition under 37 CFR 1.136(a) or (b).” Here’s…
Read MoreHow should applicants prepare for a patent examiner interview?
How should applicants prepare for a patent examiner interview? Proper preparation is crucial for a successful patent examiner interview. The MPEP provides guidance on this topic: “The attorney or agent should be fully prepared to discuss the issues raised in the Office action.” (MPEP 713.01) To prepare effectively: Review the Office action: Thoroughly understand the…
Read MoreHow are copies of cited references provided to patent applicants?
According to MPEP 707.05(a), copies of cited foreign patent documents and non-patent literature are automatically furnished without charge to applicants with the Office action. However, copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants. The MPEP states: Copies of cited foreign patent documents and non-patent literature references (except…
Read MoreHow is the statutory period for reply to an Office action computed?
The statutory period for reply to an Office action is computed from the notification or mail date printed on the Office action to the date of receipt by the Office of the applicant’s reply. According to MPEP 710.01(a): No cognizance is taken of fractions of a day and applicant’s reply is due on the corresponding…
Read MoreHow do extensions of time affect the statutory period for reply?
Extensions of time can be granted to extend the statutory period for reply to an Office action. According to MPEP 710.01(a): If the period for reply is extended, the time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due…
Read MoreHow should patent examiners handle new grounds of rejection?
How should patent examiners handle new grounds of rejection? Patent examiners must carefully consider how to handle new grounds of rejection during the examination process. According to MPEP 706: “The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a…
Read MoreHow is an incomplete reply to a 37 CFR 1.105 requirement handled?
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. The MPEP states: “An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in…
Read MoreHow should an examiner handle formal requirements in Office actions?
According to MPEP 707.07(a), examiners should handle formal requirements in Office actions as follows: Include any form that lists informalities and additional formal requirements in the first action. When indicating allowable subject matter, call attention to 37 CFR 1.111(b) and state that a complete reply must either comply with all formal requirements or specifically traverse…
Read MoreWhat is Form Paragraph 7.91 used for in patent examination?
Form Paragraph 7.91 is a standardized text used by patent examiners to notify applicants that their reply is not fully responsive to a prior Office action. As described in MPEP 711.02(a), this paragraph is titled “Reply Is Not Fully Responsive, Extension of Time Suggested” and serves several purposes: It informs the applicant that their reply…
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