What is a ‘holding of abandonment’ in patent applications?
A ‘holding of abandonment’ in patent applications occurs when the USPTO determines that an application has been abandoned due to the applicant’s failure to respond within the specified time period. As implied in MPEP 711.03(b), this can happen when: An amendment or reply is received after the expiration of the period for reply There is…
Read MoreWhat are the filing date requirements for patent applications filed on or after December 18, 2013?
For nonprovisional applications (except design applications) filed on or after December 18, 2013, the filing date is the date on which a specification, with or without claims, is received in the Office. This change was implemented as a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA). The MPEP states: Except for design…
Read MoreWhat is the deadline for responding to a final rejection in a patent application?
The deadline for responding to a final rejection in a patent application is typically three months from the date of the final action. However, the MPEP states: “A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION.” It’s important to note that this…
Read MoreWhat are the time limits for extensions under 37 CFR 1.136(a)?
According to 37 CFR 1.136(a), an applicant may extend the time period for reply up to five months after the time period set for reply, unless: Prohibited by statute Prohibited by one of the items listed in the rule The applicant has been notified otherwise in an Office action The MPEP states: 37 CFR 1.136(a)…
Read MoreAre drawings required for a patent application to receive a filing date under the new rules?
For applications filed on or after December 18, 2013, drawings are not required to receive a filing date, except for design patent applications. However, it’s important to note that drawings may still be necessary for understanding the invention. The MPEP clarifies: Also, for applications filed on or after December 18, 2013, an application (other than…
Read MoreWhat happens when a new patent application is received in a Technology Center?
When a new patent application is received in a Technology Center, two key actions are taken: The classification of the application is noted in the application file. The initials or name of the examiner who will examine the application, or other assigned docket designation, are recorded in the file. As stated in MPEP § 719.03:…
Read MoreHow is the date of abandonment determined for a patent application?
How is the date of abandonment determined for a patent application? The date of abandonment for a patent application is determined based on the following rules: If the application becomes abandoned for failure to prosecute, the date of abandonment is the day after the date set in the last Office action for a response. If…
Read MoreHas the importance of paper type for patent applications changed with digital record-keeping?
Yes, the importance of paper type for patent applications has diminished due to digital record-keeping practices at the USPTO. According to MPEP 714.07: Because application papers are now maintained in an Image File Wrapper, the type of paper is unlikely to be an issue so long as the Office is able to scan and reproduce…
Read MoreHow can an applicant overcome a rejection for lack of enablement?
To overcome a rejection for lack of enablement, an applicant must provide evidence that demonstrates the sufficiency of the disclosure. According to MPEP 716.09: Evidence to supplement a specification which on its face appears deficient under 35 U.S.C. 112 must establish that the information which must be read into the specification to make it complete…
Read MoreWhat are the options for responding to a final rejection in a patent application?
According to MPEP 714.13, there are three main options for responding to a final rejection: File an amendment: The amendment must comply with 37 CFR 1.116. File a Notice of Appeal: This must be accompanied by the appeal fee. File a Request for Continued Examination (RCE): This must be filed under 37 CFR 1.114 with…
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