How 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…
Read MoreCan the time period for responding to an Office action be extended?
Can the time period for responding to an Office action be extended? Yes, the time period for responding to an Office action can often be extended. According to MPEP 704.13: “Extensions of time may be available under 37 CFR 1.136(a) or (b) to extend the period for reply up to 6 months from the Office…
Read MoreAre there any exceptions to the standard reply periods for USPTO Office actions?
Are there any exceptions to the standard reply periods for USPTO Office actions? Yes, there are exceptions to the standard reply periods for USPTO Office actions. The MPEP 704.13 outlines several situations where different time periods may apply: “Shortened statutory periods are those so designated in Office actions. The time periods set forth on form…
Read MoreWhat is the examiner’s responsibility regarding completeness of actions?
The examiner’s responsibility regarding completeness of actions is outlined in 37 CFR 1.104(b), which states: The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before…
Read MoreWhat evidence is required to establish non-receipt of an Office action in a patent application?
What evidence is required to establish non-receipt of an Office action in a patent application? To establish non-receipt of an Office action in a patent application, the USPTO requires specific evidence. This is crucial when filing a petition to withdraw the holding of abandonment based on non-receipt. According to MPEP 711.03(c): ‘The showing required to…
Read MoreWhat is the difference between Form Paragraph 7.91 and Form Paragraph 7.95?
Form Paragraphs 7.91 and 7.95 are used in different scenarios during patent examination, as indicated in MPEP 711.02(a): Form Paragraph 7.91 is used when the reply is not fully responsive to the Office action and there appears to be no bona fide attempt to respond. Form Paragraph 7.95 is used when the reply appears to…
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