When should a rejection based on lack of diligence be made in reissue applications?
According to MPEP 1403, rejections based on lack of diligence should generally not be made by patent examiners, especially for reissue applications filed within two years of the original patent grant. The MPEP states: “When a reissue application is filed within 2 years from the date of the original patent, a rejection on the grounds…
Read MoreCan a reissue application be granted a filing date without all required documents?
Yes, according to MPEP 1403, a reissue application can be granted a filing date even if certain documents or fees are missing. The MPEP states: “A reissue application can be granted a filing date without an oath or declaration, or without the basic filing fee, search fee, or examination fee being present. See 37 CFR…
Read MoreWhat is the purpose of requiring a provisional election when traversing a restriction?
The requirement for a provisional election, even when traversing a restriction, serves several purposes: It allows examination to proceed on at least one set of claims while the restriction requirement is under review. It helps streamline the examination process by ensuring that some substantive examination can occur regardless of the outcome of the traversal. It…
Read MoreWhat is required when traversing a restriction requirement?
When traversing a restriction requirement, an applicant must still make a provisional election. This is explicitly stated in MPEP 818.01(b): “As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.” This means that even if you disagree with the restriction requirement and plan…
Read MoreWhat are the possible outcomes of a Pre-Appeal Brief Conference?
What are the possible outcomes of a Pre-Appeal Brief Conference? According to the MPEP, there are four possible outcomes of a Pre-Appeal Brief Conference: Proceed to Board: The application will proceed to appeal with the reasons for the rejection set forth by the examiner in the Office action from which the appeal was taken. Prosecution…
Read MoreCan a patent application’s classification be changed after the first action on the merits?
Generally, a patent application’s classification is not changed after the first action on the merits has been issued. The MPEP 909.01(c) states: “Generally, after a first action on the merits has been mailed C* classification will not be removed from an application’s classification picture.” This guideline suggests that the USPTO aims to maintain consistency in…
Read MoreWhat options do I have if my new claims are withdrawn due to election by original presentation?
If your new claims are withdrawn due to election by original presentation, you have several options: Request reconsideration: You can argue that the new claims are not directed to a different invention and request that the examiner reconsider the withdrawal. File a divisional application: You can pursue the new claims in a separate divisional application.…
Read MoreWhat is the difference between a non-responsive amendment and a non-compliant amendment?
It’s important to distinguish between a non-responsive amendment and a non-compliant amendment in patent prosecution: Non-responsive amendment: This occurs when the amendment fails to address the substance of the previous Office action, such as by canceling all elected claims and presenting only non-elected claims. It is a matter of substance. Non-compliant amendment: This refers to…
Read MoreWhat happens if a lack of unity is found in a national stage application?
What happens if a lack of unity is found in a national stage application? If a lack of unity is found in a national stage application, the examiner will take specific actions as outlined in the MPEP 1893.03(d): “If the examiner finds that a national stage application lacks unity of invention, the examiner may in…
Read MoreWhat happens if a Pre-Appeal Brief Request is not proper?
What happens if a Pre-Appeal Brief Request is not proper? If a Pre-Appeal Brief Request is not proper, the Office will notify the applicant. According to the MPEP, If a request is not proper, the Office will notify the applicant of the deficiency by issuing a notice. (MPEP 1204.02) Specifically: The applicant will be given…
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