What happens to inventions for which the required fee is not paid in transitional applications?
In transitional applications, if the required fee for examining additional inventions is not paid, those inventions will be withdrawn from consideration. According to 37 CFR 1.129(b)(3): “Each additional invention for which the required fee set forth in 37 CFR 1.17(s) has not been paid will be withdrawn from consideration under 37 CFR 1.142(b). An applicant…
Read MoreWhat are transitional applications under 37 CFR 1.129?
Transitional applications are those filed on or before June 8, 1995, with an effective U.S. filing date of June 8, 1992, or earlier. These applications are subject to special provisions under 37 CFR 1.129, which allows for examination of more than one independent and distinct invention in certain cases. According to the MPEP, “37 CFR…
Read MoreAre the transitional application provisions applicable to applications filed after June 8, 1995?
No, the transitional application provisions are not applicable to applications filed after June 8, 1995. The MPEP clearly states: “37 CFR 1.129(c) clarifies that the provisions of 37 CFR 1.129(a) and (b) are not applicable to any application filed after June 8, 1995.“ However, it’s important to note that while these specific provisions do not…
Read MoreWhat options do applicants have under 37 CFR 1.129(b)(2) for transitional applications?
Under 37 CFR 1.129(b)(2), if an application contains claims to more than one independent and distinct invention, and no requirement for restriction or for filing divisional applications can be made or maintained, applicants have three options: Elect the invention(s) to be searched and examined, if no election has been made prior to the notice, and…
Read MoreCan applicants request a refund for fees paid in transitional applications?
Yes, in certain circumstances, applicants can request a refund for fees paid in transitional applications. The MPEP provides two scenarios where refunds may be requested: Rejoined Inventions: According to MPEP 803.03(a), “Whenever divided inventions in a transitional application are rejoined because a linking claim is allowable (MPEP § 809, § 821.04, and § 821.04(a)) and…
Read MoreWhat are the exceptions to the transitional application provisions?
There are three main exceptions to the transitional application provisions under 37 CFR 1.129(b)(1). An applicant will not be permitted to have additional inventions examined in an application if: (A) The requirement was made in the application or an earlier application relied on under 35 U.S.C. 120, 121, or 365(c) prior to April 8, 1995;…
Read MoreAre there any more FAQs about MPEP 803.03 – Transitional Applications?
No, all relevant information from MPEP 803.03 – Transitional Applications has been covered in the previously generated FAQs. The existing questions and answers have thoroughly addressed the key points and procedures related to transitional applications as described in this section of the MPEP. To learn more: MPEP transitional applications patent examination
Read MoreWhat constitutes ‘actions by the applicant’ under 37 CFR 1.129(b)(1)?
Under 37 CFR 1.129(b)(1), certain actions by the applicant can prevent the application of transitional application provisions. The MPEP provides examples of what constitute “actions by the applicant”: Abandoning the application and continuing to refile it such that no Office action could be issued Requesting suspension of prosecution under 37 CFR 1.103(a) such that no…
Read MoreWhat is the significance of 37 CFR 1.17(s) in transitional patent applications?
37 CFR 1.17(s) is a regulation that sets forth certain fees in patent applications. In the context of transitional applications, as mentioned in MPEP 803.03(b), this regulation is significant because it relates to fees paid for additional species claims: Whenever claims drawn to an additional species in a transitional application for which applicant paid the…
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