What does “restriction becomes proper at a later stage” mean in patent prosecution?

In the context of patent prosecution, the phrase “restriction becomes proper at a later stage” refers to a situation where circumstances change during the examination process, making a previously improper restriction requirement now appropriate. This concept is addressed in MPEP 811.03, which states: “Where a requirement to restrict is made and thereafter withdrawn as improper,…

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How are references handled in continuation applications?

In continuation applications, the handling of references is crucial, especially when significant prior art is on record in the parent case. MPEP 1302.12 provides guidance on this matter: In the rare instance where no art is cited in a continuation application, all the references cited during the prosecution of the parent application will be listed…

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What is the “recapture rule” in broadening reissue claims?

The “recapture rule” is an important concept in broadening reissue claims. According to MPEP 1412.03: “A reissue will not be granted to ‘recapture’ claimed subject matter which was surrendered during prosecution of the original application.” This rule prevents patent owners from using reissue applications to regain subject matter that was deliberately given up during the…

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Can an applicant rebut a prima facie showing of serious search or examination burden?

Yes, an applicant can rebut a prima facie showing of serious search or examination burden made by the examiner. The MPEP 803 states: “A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant.” This means that if an applicant believes the examiner’s justification for…

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Under what circumstances can a patent appeal be dismissed?

A patent appeal can be dismissed under various circumstances, including: Failure to file a timely appeal brief Submission of an incomplete or non-compliant appeal brief Lack of jurisdiction by the Patent Trial and Appeal Board (PTAB) Failure to respond to a requirement or order from the PTAB Abandonment of the application The specific reasons for…

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