Test takers report two questions on how to extend your patent life by deleting a claim of benefit and a variant about reclaiming benefit. (MPEP 200/700, Extend Patent Term)
Question 1 –
Test takers report a question involving “Joe Blockhead.” Fact pattern: you represent Joe Blockhead who files a nonprovisional application which claims the benefit of a provisional application. You receive a Notice of Allowance and Blockhead decides that he wants to extend the term of his patent and remove the benefit. How do you enter an amendment to do this?
a) Pay the issue fee then file a RCE with the amendment.
b) Don’t pay the issue fee, and file a RCE with the amendment.
c) Juggle watermelons (not really, but something out there)
d) Pay the issue fee then file an the amendment.
e) Don’t pay the issue fee, and file the amendment.
After the notice of allowance, entry of an amendment or ADS is not a matter of right, so in order to be sure that it is entered you would need to file an RCE. I know it doesn’t specifically say that in the MPEP, but I made an inference based on what it says in 201.11 and 714.16(a).
What is needed to get RCE (MPEP 700)? Prosecution must be CLOSED (Notice of Allowance), and applicant must request RCE by filing a submission and fee PRIOR TO the earliest of the: 1) payment of the issue fee (unless petition to withdraw is granted); 2) abandonment of application; or 3) filing of notice of appeal or start of civil suit (unless terminated while application is still pending). So the answer is “B,” don’t pay the issue fee and file an RCE with the amendment.
Note: MPEP 201.11 reads that removing a filing benefit can be done by amendment (by amending specification or submitting a new application data sheet to delete any references to prior applicants) before the notice of allowance, but this is a matter of grace and not a matter of right. If the amendment or ADS is submitted after the application has been allowed, the amendment or ADS will be treated under MPEP 714.16.
Question 2 –
Test takers report a second variant of deleting a benefit claim that hinges on the following:
- Realize the 4 months/16 months deadlines (see 1.55(a) and 1.78(a)(2)(ii)),
- figure out these deadlines are exceeded, and
- realize that because the applicant removed the claim himself he cannot avail himself of adding the claim as unintentional (new ground of rejection is applied after the application withdraws his claim, and he has no way to put the claim back).
In 201.11 G. Deleting Benefit Claims – As a result of the 20-year patent term, it is expected, in certain circumstances, that applicants may cancel their claim to priority by amending the specification or submitting a new application data sheet (no supplemental declaration is necessary) to delete any references to prior applications. […]
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim because the delay was not unintentional.
Question 3 (Reclaiming Benefit) –
Test takers also report a variant of “deleting a benefit claim” concerning reclaiming a benefit claim. [see also MPEP 201.11 G.] In this question, the applicant deletes benefit a claim then the examiner rejects it with prior art. The applicant now wants to reclaim the benefit. How can he do it?
(?) RCE is the answer but one of the options was “applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim” which I think is wrong answer (trap).