How does the USPTO handle excess claims in a Prioritized Examination application?
The USPTO has specific procedures for handling excess claims in a Prioritized Examination application: According to MPEP 708.02(b): “If an application contains more than 4 independent claims or 30 total claims, the applicant will be notified and given a non-extendable time period of one month or thirty days, whichever is longer, to cancel the excess…
Read MoreWhat are the thresholds for excess claims fees in patent applications?
The thresholds for excess claims fees in patent applications are set by the USPTO. According to MPEP 714.10: Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). This means that: You can have up to…
Read MoreHow are excess claims fees calculated for multiple dependent claims?
The calculation of excess claims fees for multiple dependent claims is handled differently than for regular claims. According to MPEP 714.10: Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers (37 CFR 1.75(c)) and a separate fee is also required in each…
Read MoreWhat are excess claims fees in patent applications?
Excess claims fees are charges that applicants must pay for claims that exceed certain thresholds in a patent application. According to MPEP 714.10: Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). These fees are…
Read MoreAre there any exceptions to the rule of two periods running simultaneously in patent applications?
Yes, there is an exception involving suggested claims. According to MPEP 710.04: “For an exception involving suggested claims, see MPEP Chapter 2300.” This exception relates to interference proceedings, which are detailed in MPEP Chapter 2300. In such cases, the handling of suggested claims may affect the running periods differently than in standard examination scenarios. To…
Read MoreWhat happens if the number of claims exceeds the limit during prioritized examination?
What happens if the number of claims exceeds the limit during prioritized examination? If the number of claims exceeds the limit during prioritized examination, the application may lose its prioritized status. According to MPEP 708.02(b): “If an amendment is filed subsequent to the filing date of an application under prioritized examination that results in more…
Read MoreWhat are examples of trade secret materials submitted under MPEP § 724.02?
What are examples of trade secret materials submitted under MPEP § 724.02? According to MPEP 724.03, examples of trade secret materials that may be submitted under MPEP § 724.02 include: A new drug product A new method of making a drug product Drafts of proposed publications A computer program Customer lists Chemical or other compositions…
Read MoreWhat should examiners do when they identify patentable subject matter that hasn’t been claimed?
When examiners identify patentable subject matter that hasn’t been claimed, they should take a constructive approach. The MPEP advises: “If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note…
Read MoreHow does an examiner determine if a reply is complete under MPEP 704.14(b)?
According to MPEP 704.14(b), an examiner determines if a reply is complete by evaluating whether it addresses all the requirements set forth in the previous Office action. The MPEP states: Direct quote: “The examiner should determine whether the reply: (A) meets the requirements of 37 CFR 1.111, including: (1) An amendment to the claims or…
Read MoreCan evidence of unexpected results be presented after filing a patent application?
Yes, evidence of unexpected results can be presented after filing a patent application. MPEP 716.02(f) clarifies that evidence and arguments directed to advantages not disclosed in the original specification should not be disregarded. The Federal Circuit in In re Chu explicitly stated: “We have found no cases supporting the position that a patent applicant’s evidence…
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