Examination of Applications (MPEP 700)

by patentbar on December 5, 2007 · 18 comments

in MPEP 0700

Overview MPEP 700 (detailed outline follows)

Rejection of Claims

Rejection of claims is based on subject matter (substance) and is subject toappeal. Note: objections are based on form and may be reviewed only bypetition to the director. Examiners object to new matter.

  • Rejection = Appeal
  • Objection = Petition

Foreign Filing License –

US application will be rejected if applicant files in another country before receiving a foreign filing license (if the invention was made in US). Licenses are obtained automatically 6 months after the filing date. They can also be obtained retroactively with a petition (countries filed, dates, not secret, license was diligently sought, filing was in error w/o deceptive intent) and fee.

Final Rejection –

A final rejection is any second or later rejection, unless: new rejection of claim that was not added or substantively amended; rejection is based on newly cited art other than info submitted and IDS.

A final rejection can be the first action in a continuing or substitute application, if all claims are to the same invention as the parent application and could have been finally rejected in parent.

A final rejection is NOT proper if it is: 1) the first office action in a CIP and at least one claim includes subject matter not present in parent; 2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter.

Appeal –

An applicant can appeal after two or more actions on the merits; and after any final rejection.

Order of Examination

Applications are examined in order in which they are filed in the US.(Applications are examined on a first come, first served basis.)

Types of Special Applications –

“Special” applications include: made special by petition; reissued applications; transferred to different examiner; interference; ready for allowance; ready for final rejection; pending more than 5 years; and reexaminations.

Petitions to make Special –

Petitions to make special need to be in writing and identify the application by number and filing date.

  • Petitions to make special that DO NOT require a fee: Applicant’s health(w/ doctor’s certificate); Applicant is 65 or over; invention will materially enhance the quality of the environment; invention will materially contribute to energy resource development or conservation.
  • Petitions that DO require a fee: Safety of recombinant DNA research; superconductivity; HIV/AIDS or cancer; counter-terrorism; biotechnology (small entities); and
  • Prospective manufacture (w/ statement alleging): sufficient capital/facilities; will not manufacture w/o granted patent; will manufacture if patent is granted; AND made a prior art search or has good knowledge of prior art
  • Actual infringement (w/ statement alleging): infringing product/method is on the market/in use; comparison to claims made; AND search of prior art or good knowledge
  • Any new (not previously examined) application if: claims are to a single invention; a search was made; provides copies of closest references; AND provide detailed discussion of references and why claims are patentable over them. If not met, applicant gets a second chance to try to meet them.

Suspension of Action by Examiner

Suspension of action can be from the applicant, the PTO, or overlapping applications by Same Applicant or Assignee.

By Applicant –

  • 1.103(a) – may be allowed on petition if: good and sufficient cause; applicant must specify time of requested suspension (not to exceed 6 months); must pay fee (unless PTO’s fault); no response can be due from applicant (i.e., no outstanding Office Actions)
  • 1.103(b) – may be allowed by request if: filed along with a request forCPA; must specify time of requested suspension (no more than 3 months); fee
  • 1.103(c) – may be allowed by request if: filed along with a request for continued examination (RCE); specify time requested (3 months); fee
  • 1.103(d) NEW – Deferral of Examination of Application; max of 3 years from earliest filing date from which benefit is claimed; fees; won’t be granted after mailing of office action or notice of allowance; must be in condition for publication; no non-publication request; regular (utility) and plant apps or international app that entered national stage – on or after Nov 29, 2000

By PTO –

  • Max period is 6 months; office will notify applicant
  • Suspension for public safety or defense if: application owned by US; publication may be detrimental to public safety; AND appropriate agency requests suspension
  • Suspension for Statutory Invention Registration (SIR) if: PTO accepts a request to publish an SIR in the application.

Period for Reply

  • Due dates are calculated from PTO mailing date
  • EOT cannot exceed the 6 month statutory period for Office actions
  • If a timely reply is not filed, it is considered abandoned
  • An authorization to charge all required fees to a deposit account will be treated as a constructive petition for extension of time
  • Notice of Allowability – time is not extendable for: submitting an oath or declaration; and submitting formal drawings

Requirements for Information

  • Examiner may require the submission of information that is reasonably necessary to properly examine or treat the matter (including: reissues, patents, reexams)
  • Any reply that states that the information required to be submitted is unknown or is not readily available will be accepted as a complete reply – safe harbor
  • Applicant generally has 3 months to reply if it comes with OA and 3 months if it comes separately; EOT’s are available; if no reply – abandoned
  • After applicant’s reply – examiner must respond within 2 months of receipt; examiner may not make next action a final rejection if it relies on the new material

Request for Continued Examination (RCE)

A RCE provides a way for an applicant to obtain continued examination of an application after prosecution has closed by filing a submission and paying a fee. If a subsequent action is made final, an applicant can get continued examination again by filing submission and fee. No limit as long as done before abandoned.

RCE is not available for-

  • Adding new matter to an application (must use a CIP for that)
  • Provisionals
  • Design applications
  • Patents under reexaminations (reissues are okay)
  • Patents and international applications filed before June 8, 1995
  • Application after the filing of notice of appeal or civil suit unless appeal or suit is terminated while application is still pending

What is needed to get RCE?

  • Prosecution must be CLOSED: application is under appeal; last office action is final; notice of allowance; or another action that closes prosecution
  • 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).
  • RCE is entitled to benefit of a certificate of mailing (CPAs are not)
  • A request for a CPA filed in an app having a filing date on or after May 29, 2000 for which CPA practice is not available (utility) will be treated as a RCE

Submissions with a request for RCE

  • Allowed: IDS; amendments; arguments in a previously filed appeal or reply brief submitted in reply to a final rejection
  • Not allowed: appeal briefs under §1.192; reply briefs under 193(b)
  • If a reply to an OA is outstanding, submission must meet requirement of §1.111 in order to continue prosecution. Payment of the fee for an RCE does NOT toll the running of any time period set for reply.

What does RCE do?

  • PTO will withdraw the finality of any Office action
  • Will be treated as a request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision
  • If filed after a decision but before filing an appeal, it will serve to reopen prosecution. However, applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board should be removed.


Abandonment of an application (not of an invention)

Failure to Reply –

  • If an applicant fails to respond within the appropriate time periods, the application will automatically become abandoned
  • If applicant replies within the time period but the reply is not fully responsive, the application still may be abandoned (extension of time may be given if response appears to be a bona fide attempt to respond)

Express Abandonment –

  • How is it done? By filing a written declaration identifying the application; however, express abandonment of the application may not be recognized by the Office unless it is actually received in time to act before date of issue or publication. For express abandonment after receipt of Notice of Allowance, applicant should submit declaration along with a petition to withdraw the application from issue and fee.
  • Who can do it? Applicant (with Assignee’s consent); Owner/Assignee; Attorney/Agent of record; Attorney/Agent Not of record, who acts in a representative capacity when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application

Special Abandonment Situations –

  • Termination of Proceedings – terminated when: 1) Issue fee is not paid when due (can be revived is fee is accepted with petition), 2) Application in a interference where all claims corresponding to the count lose, 2) After decision by Board or court.
  • Revival of Abandoned Applications – can happen sometimes


  • Interviews in conference room, videoconferencing are okay (amended)
  • Interviews do not occur before a first office action unless it’s a continuation (or CPA) or substitute application
  • Examiner may require that an interview be scheduled in advance
  • No right to an interview after a final rejection
  • Not normally allowed after filing an appeal brief
  • After an Interview: applicant must ensure the substance of the interview is made of record in the app – often the examiner agrees to do it. Full response to OA is still required.
  • If examiner thinks applicant’s statement is not complete, he may give the applicant a 1 month time period to complete the reply

Who can interview?

  • Inventor/applicant
  • Registered attorney/agent: of record, or using his file, or known by examiner to be local representative of record attorney

Amendments and Other Actions by Applicant

Requirements of Response –

  • Every response must: Reply to every rejection and objection in OA; Be a bona fide attempt to advance case to final action; Be in writing, typed or written in permanent ink and proper size paper; and Be properly signed by: Applicant(s); Owner(s); Attorney of record; or attorney not of record but acting in representative capacity.
  • The entry of second or supplemental responses is discretionary with the PTO

Non-responsive reply

  • If intentional, must remedy within statutory period to avoid abandonment
  • If unintentional, examiner can either accept it or require reply within remaining period or set a new 1 month time limit (extendable); new time limit cannot be given after final OA

Types of Amendments –

Preliminary Amendment – received by PTO before first OA is mailed

  • Not considered part of original disclosure unless filed with original app and later filed oath refers to it
  • Should be filed after app gets app number and filing date if not filed with original app
  • Should be filed with original app if claims are canceled to reduce the filing fee
  • For CPA’s, preliminary amendments must be filed on the filing date of the CPA
  • A preliminary amendment will not be entered if it cancels all claims and fails to simultaneously submit any new claims
  • A preliminary amendment generally will not be disapproved if it is filed no later than: 3 months from filing date; filing date of CPA; OR 3 months from date the national stage is entered. NOT extendable time periods
  • Factors to be considered in whether a preliminary amendment “unduly interferes” with preparation of first OA: nature of changes to claims or spec that would result from entry of amendment; state of preparation of first OA as of date of receipt or pre. Amendment

Amendments after Final Rejection – no unrestricted right to entry of amendments after final rejection unless:

  • Amendment cancels claims or complies with objections as to form
  • Places case in condition for allowance or better form for appeal
  • Adopts suggestions by examiner
  • Period for reply cannot be extended more than 6 months from the date of the final action
  • If applicant replies within 2 months from date of mailing of final rejection, and the PTO does not issues an advisory action until after the end of the 3 month shortened period for reply, any extension fee will be calculated from the mailing date of the advisory action

Amendments After Allowance of All Claims – you have no right to have amendment entered after mailing of Notice of Allowance – it’s a matter of grace, good and sufficient reason in petition and fee

  • If amendment is received in PTO before NOA is mailed, but does not get to examiner until after NOA is mailed, it has same standing as if NOA was not mailed
  • If filed after NOA, must also submit a showing as to: why it’s necessary; why it requires no additional search or examination; why claims are patentable; why claims were not presented earlier
  • A supplemental oath or declaration is NOT treated as an amendment, but a supplemental reissue oath or decl. is so treated

Affidavit or Declaration of Prior Invention

  • Purpose is to prove that applicant was the first inventor when faced with a reference dated earlier than the application filing date
  • Constructive RTP – filing a US patent application
  • Needed when any claim of an application or patent under reexam is rejected based on prior art before the date of invention
  • Who may file? Inventor; Assignee (when affidavit from inventor cannot be produced); Owner of patent under reexam; and Party qualified when inventor is dead, insane, or refuses to sign
  • What may be filed? Oath or declaration established invention of the subject matter; and If conception – applicant must SHOW (alleging is not enough) evidence of facts establishing diligence
  • Geographical Limitations – prior invention may not be established under this section before Dec 8, 1993 in a NAFTA country or before Jan 1, 1996 in a WTO country.
  • Swearing behind can not be used if: The rejection is based upon a US patent claiming same invention (interference); or Statutory bar (102(b))
  • Must be filed before final rejection; before appeal; after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195; under 129

Affidavits or Declarations Traversing Rejections

  • Purpose is to demonstrate any fact to justify patentability; e.g., commercial success, unexpected results, the cited reference is the applicant’s own work or was derived from applicant
  • Needed when claims are rejected or objected to
  • Objective evidence must be considered: comparative date; unexpected results; commercial success; long-felt but unsolved need; failure of others; skepticism of experts, etc.
  • Opinion evidence is also entitled to be considered
  • May not be submitted if the rejection is based on a US patent to others claiming same patentable invention (interference)
  • Must be timely filed: before final rejection; before appeal; after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195; under 129
  • Attorney arguments cannot take the place of objective evidence
  • Presumptions of validity must be rebutted by a preponderance of evidence

Public Use Proceeding

A public use proceeding determines whether an invention claimed in an application had been in public use or on sale over 1 year before filing of application.

Trade Secret, Proprietary, and Protective Order Material

  • Proprietary information can be submitted if it is believed to be material to patentability:
  • If it is material, it will be made of record in app
  • If it is NOT material, it will be resealed and retained in case applicant files a petition to expunge
  • Will not be made available to public until issuance of the patent
  • Info submitted in reissue or reexams will be sealed. If important to reasonable examiner, it will become permanent part of app; if not, it will be resealed pending possible petition to expunge
  • Info that is only favorable to patentability should not be submitted

Petition to expunge information –

  • must have fee
  • available for: Information properly submitted that was not found to be material; Info unintentionally submitted in application; Info submitted in incorrect application; Cannot be used for info forming part of the original disclosure, however, applicant can try to petition for a waiver to get originally filed material expunged

Examination Procedures: 700-706

The basics of the Examination Process:

  • Examiner will review the file to make sure all the necessary elements (oath, spec, claims, drawings, etc.) are present.
  • The claim then gets put on a storage rack waiting for the first Office action.
  • When the examination begins, the examiner (1) reads the spec and claims, and then (2) searches prior art.

Requests for Info (704.10-12; 37 CFR 1.105 in Charts):

  1. When the examiner needs more information needs more information that is reasonably necessary to conduct the examination, he may request the info from any applicant or assignee of the patent app.
    1. The examiner may be allowed to compel the disclosure of information if it is reasonably necessary
    2. This information does not have to be the same type of info that is already required to be disclosed in an IDS.
    3. The burden of production for a request is finding ifno that isreasonably and readily available, which is a much lower burden than required under 37 CFR 1.56(c) disclosure statements.
  2. The examiner may require any info reasonably necessary for: pending apps, abandoned apps, apps entering the National stage under 35 U.S.C. 371, in a patent, or in a reexamination (basically in any situation where an examiner needs info). The requests for information are made at the examiner’s discretion.
  3. Replying to the Request:
    1. Making the Reply: The applicant may reply to the request with a complete reply (704.12) that gives all the information needed for each enumerated request.
    2. Requesting an extension: The initial time period for reply is set for a shortened statutory time period of 2 months, with the 37 CFR 1.136(a) option to extend by an additional 4 months.
    3. Petitioning that the request is unfair: The applicant my petition under 37 CFR 1.181 that a request for information is unfair, but the petition is not a response, and the time period keeps on going while the petition is being considered.

Rejecting Claims (706):
The main sequence for how claims are treated by the USPTO is this:
1. examine patent, claims, search prior art –> 2. If rejecting a claim, issue first rejection –> 3. Applicant may appeal under 37 CFR 1.111, may have amendments (but no new matter!) to back the appeal –> 4. If not accepted, a second rejection (that is usually a final rejection) is issued –> 5. If there is a final rejection, then the applicant has 1 more chance under the (narrower) 37 CFR 1.116 to appeal the final rejection.

2 Main forms of Rejection: Assuming a claim is actually properly made and supported by the patent app, the claim will usually only be rejected for 2 reasons:

  1. 1. Prior Art: Under 35 U.S.C. 102 if there is even one single reference that establishes that there is valid prior art to a claim, then the claim may be rejected.
    1. Prior art might include: already granted patents or published patent apps (either in the U.S. or abroad), publications describing the invention (usually in English), sale of the invention (even if the applicant is selling the invention himself, if he waits > 12 months he cannot patent it).
  2. 2. Obviousness: Under 35 U.S.C. 103, this is trickier, while there is not one single source showing the invention, many sources that each show parts of the claim when put together would be obvious to someone skilled in the art. So if the claim is for already-existing components A+B+C, if the combination of A+B+C would be obvious to a normal professional skilled in the art, then the claim fails on obviousness.


  • A. If applicant is filing a continuation/divisional of one or more U.S. or international apps, (and if the apps are valid on their own for having filing dates under 35 U.S.C. 120 for U.S. or 35 U.S.C. 365 for IA) then the effective filing date is: the earliest filing date in the line of continuation or divisional apps. (Remember that these apps are not allowed to have any new matter in them)
  • B. If the app is a CIP of a proper U.S. app or IA, any claims in the new app that are not supported by the parent app (new matter) will get the filing date of the new application (new matter, new filing date). However, other claims that are fully supported by the parent apps (not new material) are still given the effective filing date of the earlier parent application.
  • C. If the applicant is claiming foreign priority (35 U.S.C. 119(a)-(d); 35 U.S.C. 365(a), (b)) then the effective filing date is still the date of the U.S. application (unless also claiming a U.S. patent seen above). Remember: foreign priority dates are not the same as claiming a benefit, and have fewer privileges.
  • D. (Provisional apps) If the app is claiming priority of a 35 U.S.C. 119(e) PA, the effective filing date for any claims that are fully supported by specific information in the PA is the same as the filing date of the PA

The Law on Prior-Art 35 U.S.C. 102: An inventor is entitled to a patent on the invention unless…

  1. (a): the invention was known or used by others in this country(meaning the U.S. only), or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, OR
  2. (b): the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, OR
  3. (c): the inventor abandons the invention OR
  4. (d): The applicant already patented or applied for patent on the invention in a foreign country more than one year prior to the date of the application for patent in the United States, OR
  5. (e): (In plain English): If somebody else files a U.S. patent app or international patent app that has an effective filing date before theeffective filing date of the current patent app that claims the same invention, whichever app has the earliest filing date will win.
    1. For apps in the US the earliest U.S. filing date is the effective date (including the earliest filing where an app is able to claim the benefit of the earlier filing date).
    2. For International Apps (IA) there is the possibility of getting a date earlier than the US date with these caveats for a date cutoff of 20001129:
      1. Before 20001129: NO claiming back to a previous IA, either by bringing the IA onto the national stage, OR by filing a new US app and claiming foreign priority on the IA.
      2. On or After 20001129: This is more fun. Look at the original IA filing date. If the IA specifies the US, and if the PCT/WIPO publishes it in ENGLISH (even if the original app is not English) then the original filing date of the IA will be effective for 102(e) purposes. If it is not in ENGLISH then no dice!
    3. 9 CRUCIAL Examples Showing 102 in action: (pages 231-240):
      1. File a valid U.S. app on 20001208, no claiming of benefits/priority. The effective filing date is simply 20001208 (nice & easy).
      2. Now, file a valid U.S. app on 20010101 that properly claims the benefit of a previous NPA (or claims priority on a previous PA) that was given a filing date of 20000101 (1 year earlier). The effective filing date is allowed to be the earlier 20000101 date! (Everything is within the U.S. here).
      3. File a foreign application in a foreign country (Japan) on 19980622. Then later on (but within 1 year to allow for claiming priority on a foreign app) you file a normal NPA in the U.S. on 19990621. The U.S. filing date is the effective filing date even if you are able to claim priority on the foreign filing.
      4. File an IA (remember an IA is different than just filing a foreign app) in Sweden (in Swedish) on 20001201 (after the 20001129 date), and it designates the US. On 20010220 WIPO publishes the app IN ENGLISH. Then later on, the app is brought into the U.S. national stage (35 U.S.C. 371(c)). The earliest effective filing date is allowed to be the original IA filing date of 20001129!
      5. Take the above example, change the language that WIPO uses in publishing to anything other than English. NOW THERE IS NO DATE AT ALL FOR THE IA BEING BROUGHT TO THE U.S. STAGE UNDER 102(e). The dates used in 102(a) and 102(b) still apply in this case, they will be from the date that WIPO published (200010220), even though it was not published in English.
      6. Same IA as seen in 4-5 BUT it was filed before the 20001129 cutoff date: IA filed in Sweden designating the U.S. filed on 20000101. WIPO publishes it on 20010701 (language does not matter). The app is then brought onto the U.S. Stage on 20020701. The earliest effective date under 102(e) is the date that the patent was brought onto the US national stage (20020701). However, remember that for 102(a),(b) the date is still when WIPO published on 20010701.
      7. New example: IA is filed in Sweden, with the U.S. designated on 20010301 (after the cutoff). WIPO then publishes IN ENGLISH on 20020901. Later on, on 20030501, there is a BRAND NEW APPLICATION filed under 35 U.S.C. 111 (the normal way to file an app) in the U.S. that claims the benefit of the earlier IA filing. Because WIPO published in English, the U.S. app under 102(e) gets the 20010301 date from the original IA app.
        1. Remember: Normally for foreign filings all you can do is get a foreign priority (with the filing date NOT going back to the foreign filing date), and even then it has to be done within 12 months (this is longer than 12 months). This situation allows a normal U.S. NPA to actually claim the benefit on an IA.
      8. Same example as above, but WIPO DOES NOT PUBLISH IN ENGLISH: Because WIPO did not publish in English, the new 102(e) date is now 20030501, the date of the U.S. filing with no benefit claimed to the earlier IA. However, remember that 102(a)(b) are still in play with the date that WIPO published, which in this case is 20020901.
      9. Now assume the IA gets filed BEFORE 20001129: IA filed on 20000301 (before the cutoff!) designating the U.S.. On 20010901 WIPO publishes the app (it does no matter what the language is). Later on 20011201 there is a brand new 35 U.S.C. 111 app in the U.S. trying to claim the benefit or priority of the original IA. The IA date doesnot apply, the 102(e) effective date is the same as the U.S. filing date of 20011201! (Before the 20001129 cutoff there was no claiming of a previous IA). However, the WIPO publishing date of 20010901 can still be used under 102(a)(b).

Prior Art: How to protest a rejection based on prior art? (706.o2(b))
For 102(a), (b) prior art (already known or published, or known by the inventor for > 12 months before the effective filing date) there are 4 major ways to fight a rejection:

  1. A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
  2. B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
  3. C. Perfecting Priority (35 U.S.C. 120) within the time period of 37 CFR 1.78(a), by amending the spec to make a specific reference to a prior app (or by filing an ADS with the reference) and by establishing that the prior app satisfies enablement and description requirements ofr 35 U.S.C. 112. (Try to refer back to a previous app, remember there needs to be at least 1 common inventor/assignee, and the claims have to be supported by the prior valid application).
  4. D. Perfecting a priority claim under 35 U.S.C. 119(e) for a prior PA. Remember that to get priority the NPA the NPA has to be filed within 12 months of the original PA. So, under a 102(b) rejection (which is for an invention being known for > 12 months) there is always going to have to be an intermediate NPA in there somewhere that keeps the chain intact to get the original filing date of the PA.

For a 102(e) (Somebody already filed for a patent) there are 6 ways to fight the rejection:

  • A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
  • B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
  • C. Filing an affidavit under 37 CFR 1.132 to show the earlier app is not by “another” (Claim that the applicants for the new invention are the same applicants as for the prior app too. There probably needs to be at least 1 inventor/assignee in overlap).
  • D. File an Affidavit under 37 CFR 1.131 showing that this applicantactually invented the invention before the other prior applicant. (This is what Dad was talking about as being stupid and may potentially be fixed). The applicant needs to have some pretty good evidence (that would stand up in court) to show that he actually made the invention before the other competing app. was filed.
  • E. See C above, amending to claim the benefit of a valid earlier NPA. (See also the big things about international applications too!)
  • F. See D. above, amending to claim priority over a valid PA.

More on Obviousness: (706.02(j)(k):
To get a prima facie case of obviousness there are 3 elements that must be met:

  1. A. some suggestion or motivation in the references themselves, or on generally available knowledge to modify the reference or combine teachings of the reference. (Either the invention is just putting known items together (like peanut-butter & jelly) OR somebody who is skilled in the art would know how to put the things together.
  2. B. There must be a reasonable expectation of sucess (putting all the stuff together oughta work to make it obvious, if some magic unexpected result occurs then the patent might not be obvious at that point.)
  3. C. Prior art reference(s) must teach or suggest all the limitations that are in the claim. The teaching to to make the combination of items seen in the claim AND the suggestion that success would be likely both have to be found in the prior art, not based simply on the info in the applicant’s disclosure. (This is saying that somebody else has to have already mentioned the possibility of the combination AND that it would likely work in prior art, it is not simply enough to eyeball the application and say: duh this is obvious).

Common Ownership & Joint Research Agreements used to Defuse problems with Prior Art (706.02, with 706.03)

Review of 35 U.S.C. 102(e)(f)(g):
102(e): If somebody else has an app in already covering the same claims the earlier app wins. (no patent for later app)
102(f): If the applicant did not actually invent the invention, no patent.
102(g): If someone other than the applicant made the invention in the U.S. and did not abandon, suppress, conceal it. (your neigbor invents a widget, you cannot claim to have invented it in your application).

And now 35 U.S.C. 103(c):

  • After 19991129: Take a claim that has been rejected under any of 102(e)(f)(g). If it turns out that there was a common owner of the prior inventions that would create prior art, AND that this common owner also owned the new invention at the time it was actually invented, then the common owner can still get the patent.
    • Imagine that A got the rights to original invention X and then invents X’ which would be considered derived from X or obvious from X. Because A owned X, and owned X’ at the time X’ was invented, the objections under 102(e)(f)(g) would be cancelled out.
    • Before 19991129: The exceptions only worked for 102(f)(g), if there was a prior app (102(e)) that would still be considered prior art.
    • Common Ownership: This means that a party or multiple parties had 100% ownership of both the prior invention and the the new invention at the time the new invention was invented.
      • Example: A & B are wholly-owned subsidiaries of MegaCo, and A invents invention X, followed by invention X’ (an obvious improvement on X) from B. Since MegaCo owned A & B fully, it is the common owner of both X & X’ and will not have prior art problems.
      • It works for assignment too: Companies A & B have an agreement to assign each other all inventions made. Employee X of company A has an agreement to assign all of his inventions to company A (but the agreement says nothing about company B). The invention goes from: X –> A <–> B and A & B are both common owners of the invention. Either A or B may then invent X’ and not have to worry about prior art from X.
      • However: Same example as above, but say that the assignment agreement is only concluded after B has invented X’. In this case, B was not a common owner of X, and A was not a common owner of X’, so X’ would fail on the 102(e)(f)(g) claims.
  • 3 Major needs for common ownership:
    • 1. prior art to the claimed invention must be commonly owned (100% by the same party or joint parties) OR
    • 2. subject to assignment to the common owner (like when an employee makes an invention that is assigned to the employer who is the common owner of multiple inventions). OR
    • 3. There was a JRA in place (see below)
  • More Changes After the CREATE Act of 20041210:
    • Now common ownership is not always necessary if there is a Joint Research Agreement (JRA) between Parties.
    • 3 Major points needed for the JRA:
      • 1. claimed invention was made on behalf of the parties to the JRA and
      • 2. the invention was made due to activities of the JRA (not just invented at random, but as part o f the JRA) and
      • 3. The app has to be amended to clearly disclose the names of the parties to the JRA.
    • A JRA is different than common ownership in that multiple parties do not have to share or assign ownership of inventions back & forth. For example, if a University A has a JRA with corp. B, then A can invent X under the JRA, but retain ownership of X, while B may invent X’ (normally defeated under 102(f)(g)) and still get a patent on it because of the JRA. B still does not own X, and A still does not own X’.
      • However: If there is a JRA that comes into effect AFTER the new invention is made, the new invention is not covered.
      • Also: JRA’s are often narrow, so a JRA covering invention Y will not allow the partner to make a new invention X’ based on the partner’s previous invention X. (Look at thetime and scope of the JRA to determine if it works).

Evidence Needed to Prove Common Ownership:
Remember: The evidence must prove there was common ownership at the time of the later invention, it is not enough just to show the applicant owns both inventions at the present time.
In order to prove this, (1) the applicant or applicant’s atty/agent of record must make a statement to the effect that the prior inventions and the new invention were all commonly owned; (2) the statement should be clear & conspicuous (on a separate sheet as part of the app) to notify the examiner.
Example: “Application X and Patent A were, at the time the invention of Application X was made, were both owned by Corp. Z (common owner)”

Evidence Needed to Prove the JRA:
Once the examiner has the prima facie case of obviousness made, the burden of overcoming the obviousness is back on the applicant. Just as with the common ownership, the applicant must clearly show that the invention is within the scope of the JRA, and that the JRA was in effect before the later invention was made.

When is something considered “invented” for the purposes of finding common ownership or JRA?
The invention must be at a stage where the inventor has prepared drawings or other descriptions that are sufficient to enable a person skilled in the art to practice the invention.

Biotechnology Apps (706.02(n)):
Short note: A biotech app has to contain both the process and the compositioninformation for the invention together in 1 app OR if it is in 2 apps they both must have the same effective date. Both the process and the composition also have to be owned/assigned to the common owner.

When you have an invention, but you still won’t get a Patent: Non-patentable inventions. (706.03)

  • Subject Matter Eligibility: Some subject matter CANNOT be patented:
    • Printed Matter: The text of a book is not patentable (a mechanism to make a book might be, but not the text itself).
    • Naturally Occurring Articles: You cannot patent a plant/animal found in nature (genetically engineered ones are different). Example: Peeled shrimp are not patentable (although a new mechanism to actually peel the shrimp could be).
    • Scientific Principles: Theoretical discoveries that are not actual inventions cannot be patented.
  • Utility:
    • Every patent must have utility to be valid. This requirement is very loose and generally is only used to stop patents on things like perpetual motion machines (although some do get through anyway).
    • Just because an invention is ‘immoral’ or could be used for illegal purposes it can still be patented.
    • Exception: Written straight into the statute, any invention that is useful only for making nuclear weapons is not patentable.

Steps in the Examination (706.07-708)

The following list comprises the main steps in a patent examination process (assuming no interference claims):

  1. 1. Investigation of the app and of prior art (37 CFR 1.104 in Charts):
    1. This is where the examiner initially examines the patent app and the prior art.
    2. Almost all the time, the examiner will issue an initial rejection of the claims in the First Office Action taken after the app is received.
    3. The applicant gets back copies of the best references found to support the rejection.
    4. After the first office action, the applicant has the 3 month Shortened Statutory Period (SSP) in which to reply to the Office Action. The SSP may be extended by an extra 3 months under 1.136(a) by paying a fee.
    5. The initial rejection is usually non-final BUT (706.07(b)) sometimes an app may receive a final rejection on the first Office action when:
      1. the new app is a continuation or substitution for an earlier app AND
      2. all claims in the new app:
        1. are drawn on the same invention as the earlier app AND
        2. the claims were already properly given a final rejection in the earlier app.
      3. But it is not proper to give final rejection on the first action when:
        1. New issues were raised that required further searching
        2. New matter was introduced.
  2. 2. After an initial rejection (non-final), the applicant must reply to the Office Action (37 CFR 1.111 in Charts):
    1. This reply must have an answer for every ground mentioned in the rejection of the app.
    2. If there is no reply under the SSP + 3 month extension, the app is abandoned.
  3. 3. Replies to the intial Office Action (37 CFR 1.112):
    1. the reply will be reconsidered and reexamined.
    2. Notification will be made to the applicant of allowances/rejections and the applicant can replu under 37 CFR 1.111 unless the action is final.
  4. 4. Final Rejections: (37 CFR 1.113, 706.07(a))
    1. Usually the second rejection after a 1.111 reply is considered a Final Rejection.
    2. At this point, things are more limited:
      1. Filing a reply under 37 CFR 1.116, unlike the broader 1.111, this reply is only to fix formal errors in the app (like an Ex parte Quayle situation); or if the applicant got some of the claims, it might cancel the finally rejected claims in order to have a formally correct patent.
      2. Filing an appeal that the final rejection should not have been made (requires notice of appeal & brief).
      3. OR: Under 37 CFR 1.114 file a Request for Continued Examination (RCE) to keep examination alive.
      4. Any of the above must be filed withing the 3 month SSP + 3 month extension under 37 CFR 1.136(a).
    3. Actual practice:
      1. The applicant will file amendment(s) to reply to final rejections, and the amendments may be non-entered (not part of the official app). This is to buy time to either file an appeal, or to file an RCE under 37 CFR 1.114, possibly a CIP with new matter (37 CFR 1.53(b)), or for design patents a CPA under 37 CFR 1.53(d).
    4. Time to Reply when there is a final Rejection (706.07(f)):
      1. Whenever there is a final rejection, the normal 3 month SSP applies, but in addition to the 3 month period:
        1. If there is a reply filed within 2 months of the final Office action, the SSP will expire at the end of 3 months on the FOA or on the mailing date of the Advisory Action whichever is later. (Basically, if the reply is within the shortened 2 month window, then if the Advisory Action is somewhat late, you can get the later date of the Advisory Action or the normal SSP to file appeals or RCE’s in addition to normal replies.
          1. However, the 6 month total time period (SSP + 3 month extension) is still the final time limit after the final rejection

More on RCE’s: (37 CFR 1.114, 706.07(h))
An RCE has to be filed when prosecution of an app is closed. “Closed” means:

  1. 1. the app is under appeal
  2. 2. there has been a final rejection under the last Office action.
  3. 3. there has been a notice of allowance (the claims are being allowed)
  4. 4. Any action that closes prosecution (meaning no more exams are being made). Example: Ex parte Quayle where the claims are substantively OK, but the app needs to have formal corrections made before it is finalized.

Remember: an RCE is not the same thing as a 37 CFR 1.53(b) continuation. For design patents, the CPA is sued instead, but remember, there is no CPA for a utility or plant patent.

RCE Deadlines: These are different than for just a normal reply! The RCE must be filed before the earliest of:

  1. 1. Payment of the issue fee (when you actually get a patent). Exceptions may be made if the Office grants a petition under 37 CFR 1.313.
  2. 2. Abandonment of the app (The reason all of those replies above matter is that they keep the app alive instead of abandoning it. This buys time to get the RCE filed).
  3. 3. A filing of notice of appeal to the Federal Circuit or commencement of a civil action (RCE’s cannot happen while court proceedings are going on). However, if the court proceeding is terminated, the RCE could be filed if the patent is not abandoned.

What does the applicant have to submit in the RCE?
The submission usually has: (a) an IDS; (b) an amendment to written descriptions, claims, or drawings; (c) new arguments or new evidence in support of patentability; (d) Of course, a fee too (37 CFR 1.17(e)).
The RCE may not have new matter! If there is new matter, there must be a CIP instead (with the later filing date).

Improper RCE’s:
If an RCE is not filed properly, the Office notifies the applicant. The improper RCE does not toll the deadline for getting a proper reply in to the Office!

Proper RCE’s:
After a final rejection, if a proper RCE is entered to the Office, the Office will withdraw the finality of the action, and begin re-examining the application with the amendments in the RCE. (With a proper RCE you get a new examination).
Remember, the proper RCE needs to include (or to have an earlier filed) response to EVERY ground stated in a final rejection in order to make it viable to be re-examined.

When a reply is not responsive to every point made in a final rejection:
Normally the reply must reply to every point in the rejection. If it does not, then only a bona fide response will work to toll the time limits (3 month SSP) before the app is considered abandoned. If the submission is considered bona fide, the office will give notice, and 1 month (or 30 days whichever is longer) to complete the reply.

Appeals & RCEs:
An RCE creates a new examination, so an appeal and an RCE really don’t make sense at the same time. When an RCE is filed during an appeal (but before the appeal decision is made) it effectively withdraws the appeal. Even if the RCE is improper the appeal is withdrawn too!!

Order of examination of applications (708, and 37 CFR 1.102 in Charts):
Briefly, normally apps will be examined in the order in which they are filed and assigned to examiners. However, under some circumstances (seen in 37 CFR 1.102, like apps that are very important to a branch of public service, or apps that have a special petition) then those special-case apps may jump to the front of the line for examination.

Posted by Chuckula at 8:04 AM 0 comments

Suspending the Examination and Time Limits & Extensions (708-710.04)

Review: Remember that upon first filing the app will often consist of: The app itsef (description/claims/drawings), an IDS, an ADS, oaths/decls, statement claiming SES (small entity), and a petition to make special (see below).

Getting an App Examined in an Expedited Manner (Making Special)(37 CFR 1.102 in charts; 708):
The usual operation for patent examinations is a FIFO where applications go to the appropriate Technology Center (TC) and often sit on the document racks for months+ waiting to be examined. However, under some circumstances (37 CFR 1.102) applications for certain types of inventions can move ahead in the queue. In order to do so, there must be a petition with a good-faith statement that the app in question should qualify for expedited review. Sometimes there is also a petition fee, but for some types of inventions the fee is waived by statute.
What absolutely has to be in the Petition to make Special? 1. Has to be in writing; 2. Has to identify the app by the the app # and the filing date.

  1. Manufacture: an application for an invention that has prospects of going into manufacture soon could get expedited treatment as long as there is a fee (37 CFR 1.17(h)) paid and a statement by applicant, assignee, atty/registered agent says:
    1. A. that there is sufficient capital/materials/facilities to make the invention now, or that if the patent is granted there will be sufficient capital/materials/facilities to make the invention. AND
    2. B. That the invention will not get manufactured, or that manufacture will not increase, unless the patent is granted. AND
    3. C. That the prospective manufacturer has obligated itself to manufacture the invention in quantity in the US, and to begin immediately upon allowance of the claims or the issuance of the patent. AND
    4. D. The applicant or assignee has already made or caused to be made a careful & thorough search of prior art, or has a good knowledge of the pertinent prior art.
      1. The applicant has to supply a copy of each reference if not already on file with the USPTO (sounds similar to an IDS).
  2. Infringement: In a situation where the app will disclose an invention that is already being actually infringed (not just potential infringement) on the open market, then a petition by the applicant, assignee, atty/agent of record accompanied by the fee (37 CFR 1.17(h)) may be made to make the app special if the petition states:
    1. A. That there is an infringing product actually on the market or in use.
    2. B. That a rigid comparison of the infringing product with the claims of the current app will show that the subject matter disclosed & claimed in the app is unquestionably infringed upon by the other product.
    3. That the applicant has made a careful & through search of prior art or has good knowledge of pertinent prior art. (one copy of each referenced prior art necessary).
  3. Applicant’s Health: I don’t feel so good! If the applicant makes a petition with evidence (like a doctor’s certification) that she is in poor enough health that she may not be able to assist in the prosecution process, then the app may be made special. No fee required.
  4. Applicant’s Age: Get off my lawn! If the applicant is >= 65 years old, a petition along with proof (like a birth certificate or sworn statement) may make the app special. No fee required.
  5. Environmental Quality: Any app that has a petition showing the app will disclose an invention that would “materially enhance the quality of the environment”. No fee required.
  6. Energy: Any app that will: (A) contribute to discovery or development of energy resources; (B) more efficient utilization of and conservation of energy resources. No Fee Required.
  7. Recombinant DNA: If the app relates to safety of research in the field of Recombinant DNA (not every single app related to DNA, just safety of research). These apps need to have the 37 CFR 1.17(h) fee along with the petition.
  8. Certain New Applications getting Accelerated Examinations: If there is a new app that needs examination the applicant, assignee, or atty/agent may get accelerated examination if he:
    1. Submits petition to make special & 37 CFR 1.17(h) fee.
    2. Presents all claims to only 1 single invention (no divisionals happening) or if the Office decides there are multiple inventions, the applicant will make an election without traverse as a prerequisite (agree to choose (elect) just one invention if the USPTO thinks the claims are for > 1 invention).
    3. Submit a statement saying that a pre-exam search was already made, listing the field of search by class, subclass, publication, Chemical Abstracts, foreign patents, etc (Basically: the applicant submits info from a search done before the examination would begin instead of having the search happen after the examination).
    4. Submit one copy each of the references deemed most closely related to the subject matter disclosed in the app if those references are not already on record. (Sounds like an IDS)
    5. Submist a detailed discussion of the references, and the discussion should point out with the particularity needed in 37 CFR 1.111(b)(c) how the claimed subject matter is still patentable given those references. (How my invention is different enough from the prior art that it should still get a patent).
  9. Superconductivity: If you invent a superconductive material, or a process to manufacture or apply superconductivity, then file the petition for making it special. No fee required.
  10. HIV/AIDS & Cancer inventions: File the petition to make it special. The 37 CFR 1.17(h) fee is required.
  11. Inventions for Countering Terrorism: Take that Osama! File the petition, No Fee Required.
  12. Special Status for a Small Entity making a Biotech Patent:
    1. Applicant must make petition & pay 37 CFR 1.17(h) fee. AND:
    2. state that SES has already been established, or include a statement to establish SES; AND
    3. state that the subject of the patent is a ‘major asset’ of the small entity; AND
    4. state that development of the technology will be severely impaired if examination is delayed, and include evidence for why the statement is true.

Hitting the Pause Button: Suspending & Deferring Action on an App(37 CFR 1.103 in Charts; 709):
Under some circumstances the applicant may request that the Office suspend or defer action (the examination process) on a patent app. HOWEVER: suspension cannot be made if there is an outstanding reply to an Office action that is due (you can’t suspend when you owe a response to the USPTO). Also, unless the suspension is requested at the same time as a valid CPA or RCE request, the Office will require the applicant to show “good cause” for why the suspension should be granted.

  1. Requesting Suspension with Good & Sufficient Cause (37 CFR 1.103(a)):
    1. The petition must be presented as a separate paper (not be part of an app or a request for continuation). AND
    2. Be accompanied with a 37 CFR 1.17(g) petition fee. AND
    3. Request a specific & reasonable period of delay not > 6 months. AND
    4. Present good & sufficient reasons why suspension should be granted.
  2. Other Requests for Suspension when there is a CPA or RCE (37 CFR 1.104(b)(c)):
    1. Applicant may request a suspension for up to a maximum of 3 months at the time it files for a CPA or RCE. The request has to be filed at the same time as the CPA/RCE.
    2. This is to allow up to 3 months to give the applicant time to write amendments or arguments to put in the CPA/RCE for the next round of examination.
  3. Procedural Requirements for a Suspension:
    1. If there is a CPA or RCE, the request must be filed along with those filings either with a check box on the transmittal form, or as a separate paper.
      1. If given with an RCE, the RCE must be valid under 37 CFR 1.114 including the 37 CFR 1.17(e) fee that cannot be deferred. Also, a request for suspension does not mean the RCE itself does not need the filing fee.
      2. if the request is with the CPA, the office must give a filing date to the CPA (it must be a valid CPA).
    2. The request should specify a whole-number of months (e.g. 2 months) for suspension, and 3 months is the maximum, if no number is given then 3 months is assumed:
      1. The request needs a processing fee in 37 CFR 1.17(i).

Deferral of Examination instead of Suspension of Examination (37 CFR 1.103(d)):
For a new patent app, the applicant may claim a deferral for a period up to 3 years after the earliest relied-upon filing date (earliest date the app claims the benefit of, claims foreign priority over, or claims priority over for PAs).
Example: A new app claims foreign priority over a foreign app filed on 20000103. The action will resume on 20030104 (next working day after the 3 year time period).


  • Period of suspension must be a whole-number of months (36 months max) from the earliest effective filing date.
  • Publication fee (37 CFR 1.18(d)) AND
  • Processing fee (37 CFR 1.17(i).

TIME (Limits), Periods of Reply, SSPs, Getting Extensions, and Computation (701, 35 U.S.C. 133, 37 CFR 1.135, 1.136(a)(b), 1.137):

By Law (35 U.S.C. 133) there is a statutory time limit for replying to office actions of 6 months. However, the USPTO is allowed to use SSPs (Shortened Statutory Periods) and does so in almost all cases.

37 CFR 1.135: If there is no response to an Office Action within the time period specified, the application is abandoned.
37 CFR 1.135(b): (A) An admission or denial of amendment to an app after final rejection, is not enough to save the app from abandonment; (B) admission of or refusal to admit an amendment that is not responsive to the last Offie action is also not enough to save the app from abandonment. (Get it within the deadline, just because the USPTO accepts an amendment will not absolve the applicant from having to meet deadlines.)

710.01(a): How statutory periods are computed: This is review! Remember: If the end of the statutory period falls on a Sat/Sun/Federal Holiday in D.C. then simply find the next day that the USPTO is open (next business day) and that day becomes the last day that a response will be accepted. (Remember: Express Mailing with Certificates of Mailing or Faxes with Certificates of Transmission to get the effective date of the response too!).
When months are mentioned this can get a little tricky. Remember: The last day of any month corresponds to the last day of the target month only if the first month has more days than the last month so a 3 month limit: Nov. 30 —> Feb. 28 (29 in leap years); Dec 31 –> Mar. 30; BUT: Feb 28 –> May 28!!.

Examples on Extensions to these time periods:
1. Office action mailed on 0131 would normally be due on 0430. But, if the applicant gets a 1 month extension, it would push the due date back to 0531. Note 1: The ‘31′ is the last day of the month, the extension time is based on the ORIGINAL date (0131) not on the date of the end of the original time period (0430). Note 2: If the extension is granted it does not matter whether 0430 is on a Sat/Sun/Holiday. The Weekend/Holiday rule only applies on the last day of the ENTIRE time period (original + extensions).

2. Assume that the above example has the 0531 due date (assume it is not on a weekend/holiday), and that the response is not in on time, AND that there are no further extensions to get to the maximum 6 month limit. In this case, the application is considered abandoned the day after the deadline (0601). The weekend/Holiday rule does not apply after the deadline has passed, so the app may be considered abandoned on a weekend/holiday calendar date.

3. For 30 day extensions, once again the original deadline being extended does not use the calendar rule (so if the original deadline is on a Saturday, the 30 days start from the following Sunday NOT the following work day). Also, as usual if the 30 days end on a weekend/holiday, then the actual deadline will be the next business day.

SSPs (710.02(b)): The statutory max is 6 months, but the default deadlines are almost always shorter

  1. 1 Month Deadlines (not less than 30 days for Feb. months):
    1. A. requirements for restriction or election of species in a patent (deciding on which invention to keep in a patent and which other ones to split into divisional apps).
    2. B. If a reply to an action is bona fide, but there is an inadvertent omission, the examiner may allow 1 month to correct it.
  2. 2 Month Deadlines:
    1. Winning PArty in a terminated interference (MPEP 2300)
    2. To Reply to an Ex Parte Quayle action (714.14)
    3. A multiplicity rejection (but no other rejection) See 2173.05(n)
  3. 3 Month Deadlines:
    1. To reply to any Office Action on the merits (3 months is the most common one).

Restarting the Period: If the Office makes a mistake in an action (like a missing reference or some defect in the document) then if the applicant brings this to the Office’s attention within 1 month, the Office will correct the action and restart the time period.

SSPs vs. Specified Time Limits: (710.02(d))
The big difference is that Specified Time Limits are not directly written in law, and are made with the examiner’s discretion. If an applicant misses a Specified Time Limit, the app is generally not abandoned, but the subject matter that the deadline covered could be lost (like making a disclaimer that no claims may rely on certain subject matter). Also, if an applicant is late by a short time the examiner may still allow the submission at his own discretion.
SSPs are statutory time limits, and as such are much stricter. Also, since SSPs cover responses to Office actions, if the applicant does not respond in time, the application is considered fully abandoned, not just one part of it.

Getting Extensions of Time (1.136):

  • Remember, the SSPs are shortened periods, the statutory max is still 6 months. So, under 37 CR 1.136(a) the applicant may request an extension of time such that the SSP + Extension == 6 months total.
    • A 37 CFR 1.136 request is automatic as long as it is properly made and the fee is paid.
    • The request for extension does not have to come during the SSP! It may be allowed at any date up until the last day of the 6 month statutory period.
    • The 1.136(a) request may be filed along with the reply in question, before it is filed, or even after it is filed. However: if the 1.136 request is filed after the reply, then the reply’s effective date will be considered the date that the extension was requested (this effectively bars making a 1.136(a) request after the max 6 month period is over).
  • Under 37 CFR 1.136(b) there are other ways to request an extension, but 1.136(b) is not automatic, the applicant usually has to show good cause for why an extension should be granted. Remember: 1.136(b) only applies when 1.136(a) is not available, AND the 6 month maximum is still absolute, 1.136(b) cannot defeat it.

NONStatutory Time Periods:
Not every time period is specified under the 35 U.S.C. 133 statute with the 6 month limit. In some cases (like a “Notice to File Missing Parts” when anapplication is incomplete (this is not a response to an Office action and is therefore not under the statute)). The Office has more discretion and in that case a 2 month shortened period may receive an automatic 5-month extension under 37 CFR 1.136(a), and if there is good cause the USPTO might even grant a further extension under 37 CFR 1.136(b).

37 CFR 1.136(a) Procedures: (710.02(e))

  1. These are automatic unless prohibited by statute, a CFR rule, or if the applicant has been informed that there is no extension by the Office.
  2. The applicant may include the request for extension within the time period of the extended request, along with a fee (which is reduced by 50% for SES applicants). The request may be on a separate paper, included as part of the cover letter, or anywhere else on the submission.
  3. The applicant can make the requests preemptively in the applicantion by:
    1. A. authorizing in the original app that any reply requiring a petition for time extension should be treated as having the request automatically.
    2. B. There is also an authorization for charging the extension fee that should be made indicating the Patent Deposit Account number to use in making the withdrawals for the fee.
  4. Simply paying the 37 CFR 1.136(a) extension fee at the time of submitting the response (assuming it is after the SSP and before the 6 month max) the applicant is constructively making a request for extension.

Posted by Chuckula at 12:39 PM 0 comments

When apps are abandoned; How to say an App was not actually abandoned; When it is possible to Revive an Abandoned App (710.05-711.06)

Getting a Reply Period Changed because of problems in Communications: (710.06)

  1. When an Office Action from the USPTO is defective:
    1. If there are incorrect citations/references or other errors in an Office action:
      1. If the applicant notifies the Office within 1 month of the action, then the Office will correct the error and restart the full time period from the date of the corrected OA.
      2. If the applicant notifies the Office after 1 month (but still within the reply period), then the Office will correct the error, and give a new time period that is roughly equal to the amount of time that was left in the reply period. Example:
        1. There is an error in an OA brought to the Office’s attention 5 weeks after the OA was sent (> 1 month). Assuming a 3 month time period, the office will correct the OA, and then give a new time limit of 2 months (roughly 1 month for the original time + 2 months remaining) from the date that it corrected the OA to get the reply in.
    2. If there is a substantial delay in the Applicant receiving an OA: The Office will restart the original time period for reply to run from the actual receipt date by the applicant under the following circumstances:
      1. Petition is filed within 2 weeks of the actual receipt of the OA.
      2. substantial portionof the reply period had already elapsed (like 1 month out of a 2 or 3 month reply period). AND
      3. The petition itself has to include:
        1. 1. Evidence showing the actual date of receipt of the OA, like copy of the envelope, some evidence showing that the receipt actually was on the later date. AND
        2. 2. A statement setting forth the date of the receipt of the OA, and explanation of how the evidence show the receipt was on the later date.
    3. If the postmark of the OA is later than the actual date stamped on the OA: (it got sent late, not necessarily delayed in transit) The previously set time period is reset if:
      1. The petition is filed within 2 weeks of receipt of OA; and
      2. the reply period had to be for: payment of the issue fee (getting a granted patent), or the reply period was only a 1 month/30 day reply period; and
      3. The petition includes this evidence:
        1. 1. Evidence showing the actual date of receipt at the correspondence address
        2. 2. A copy of the original envelope showing the postmark date (used to prove the date on which the OA was actually sent)
        3. 3. Statement setting forth the fact that the OA was received on the date show by the evidence in (1) and that the envelope in (2) actually contained the OA.

I Give Up: Abandonment of Patent Apps (711, 37 CFR 1.135, 1.137, 1.138 in Charts):

Express (Formal) Abandonment of an App (711.01; 37 CFR 1.138):
The assignee, all applicants, or the atty/agent of record may sign a letter of abandonment. When the Office takes action on the letter, or for some letters related to continuations on the date the letter specifies, the app is expressly abandoned.
Common Example:
When filing an RCE, CPA, or CIP, the prior application is usually abandoned after the continuation is filed (they are still copending at the time the continuation gets filed to make the continuation valid). Once the continuation is recognized, the old app is abandoned as of the same date as the new app is filed. The letter may be mailed to the USPTO or faxed.

Express Abandonment after the issue Fee is paid: If the issue fee has already been paid, then the applicant will have to issue the express abandonment letter, along with a 37 CFR 1.313(c) petition to withdraw the patent (and the 37 CFR 1.17(c) fee).

Avoiding Publication on an Abandoned App: Remember: EVEN ABANDONED APPS GET PUBLISHED BY DEFAULT. Unless the abandonment happens early enough that the Pre-Grant Publication Division is notified of the abandonment early enough, the application will still get published.

Abandonment for Failing to Reply During a Statutory Period: (711.02; 37 CFR 1.135)
If either (A) the applicant never replies to an OA, or (B) the reply is considered insufficient (not everything needed for the reply is given) then the USPTO

Abandonment when all proceedings terminate:

  1. A. if issue fee is never paid, proceedings terminate the day the fees are due, app is abandoned as of midnight on the due date.
  2. B. If the app was in interference and lost on all of its claims. The app is abandoned on the date that filing for appeal or review was due (assuming appeal is allowed).
  3. C. Proceedings are completely terminated by the Board of Patent Appeals & Interferences.
  4. D. Proceedings terminated after a court decision.

When the applicant argues that the app was not truly abandoned (Reconsideration of Holding of Abandonment): (711.03)

  1. A. If the holding was due to an insufficient reply: The applicant may argue that the reply was actually sufficient.
  2. B. If the holding was due to a late reply:
    1. If there is no question that the reply was non-existent or late, then there is no further appeal.
    2. If the applicant and the examiner disagree as to the dates for the response period and the applicant has a case to show he could have met the deadline, the applicant may attempt to argue the reply was actually on time.
  3. Petition to Withdraw Holding of Abandonment: (37 CFR 1.181(a))
    1. Here’s a rare find: no fee required to file these petitions.
    2. Allegations that an OA was never received by the applicant may be in these petitions.
    3. Also: If the applicant can show proof (using the infamous postcard receipt that establishes a prima facie case for the USPTO receiving documents) that the reply actually was sent to the USPTO on time.
    4. Or: A certificate of mailing may be used as well. The statements made must be based on the personal knowledge related to the mailing.
    5. 2 Month Deadline: If the applicant fails to file the petition to withdraw the abandonment within 2 months of the mailing date of the Notice of Abandonment, then the petition will not be considered timely, and may be dismissed outright.

When the app was actually abandoned, but circumstances allow the app to be Revived: (37 CFR 1.137)
In order to get a patent app revived, the applicant must first show that the app was abandoned: 1. Due to unavoidable circumstances (37 CFR 1.137(a)); 2. Due to uninentional oversight in not replying. (37 CFR 1.137(b)). Additionally, since these abandonments are always related to failing to respond or pay a necessary fee on the app, the petition must be accompanied by the proper response for whatever underlying reason created the abandonment in the first place (like if you owed a fee, the fee should be included with the revival petition).

Unavoidable Abandonment: “If unexpectedly or through the unforeseen fault or imperfection of these agencies (referring to the mail system, to worthyemployees, etc.) and instrumentalities, there occurs a failure, it may be said to be unavoidable”

  • Unavoidable means that it was not possible to file a response all the way up until the petition to revive is filed with the necessary response.
  • There has to be the petition fee (37 CFR 1.17(l))
  • There may have to be a terminal disclaimer too.
  • The burden for unavoidable is higher to meet than unintentional, and its fee is lower too.

1. When an employee makes a clerical error that is the sole cause of the delay in making the reply, and the business had a process that would normally work to get the reply made, and that the employee was trained and exercided due care then the delay could be seen as unavoidable.

Unintentional Abandonment: In this case the applicant unintentionally failed to respond to an OA. The applicant could offer proof, or will (if responding promptly enough) be able to swear a statement that the delay was unintentional. Remember, that bad faith on the applicant’s part will usually end in the patent being revoked.

  • Petition fee under 37 CFR 1.17(m) (higher than for an unavoidable delay)

The Required Response the must accompany the 37 CFR 1.137 Petition: (See 711.03(c) for full list)

  • In an NPA that was abandoned for (1) failure to prosecute (e.g. failure to reply to OA), or (2) file an appeal brief: The required reply is met by:
    • Filing the reply that was expected by the OA
    • Filing an appeal brief if one was expected
    • OR: for final rejections where prosecution would close, filing an RCE on the application (the revival will make the application copending with any continuing app)
  • For a PA: Filing any outstanding reply on a provisional app.
  • In an application that was abandoned for failing to pay the issue fee, publication fee, or a maintenance fee: The reply should have whatever fees are owed to the Office.

What if ALL of this fails and the App Cannot be Revived?
Step 1: Request a reconsideration of the revival under 37 CFR 1.137(e). This has to be made within 2 months of the denial of the petition (extendable under 37 CFR 1.136(a)).
Step 2: If the reconsideration also fails, you are SOL. At this point, it is possible to file a substitute application that matches the original app. BUT: The substitute cannot benefit from the filing date of the abandoned app!!

Deadlines & Considerations for a 1.137 petition to revive:

  • Consider the delay that caused the original abandonment
  • Consider the actual delay in filing the 37 CFR 1.137 petition to revive the app itself (anything > 3 months will be read against the “unintentional” or “unavoidable” claims)
  • Under 37 CFR 1.137(d) the petition needs to have a terminal disclaimer(remember a terminal disclaimer will shorten the life of the patent from the normal 20 years from filing time).
    • This disclaimer fee only applies to design patents OR other patent apps that were filed before June 8, 1995 (modern apps do not need the disclaimer fee anymore)

Interviews (713)

The examiner and inventors or attys/agents may have interviews to get more information on the background of the invention, or to hear how the disclosed matter differs from prior art references. The meeting may also involve the examiner giving advice on what needs to be done to have claims that will not be rejected.

Who may be in the interview?

  • Applicants or assignees
  • Attys or agents of record (most common)
  • Just because a party has permission to review a patent app, that party does not automatically get the right to conduct interviews.
  • Examiners may not have interviews with unregistered or suspended registration attys/agents! (unless that person is also the applicant, in which case it is just an interview with an applicant).

When interviews are (and are not) Granted: (713.05)

  • Before Filing: Interviews are not allowed before an app is filed, but an examiner may (at his discretion) give limited information on which field a patent should be filed in.
  • Before first OA: If the app is a continuation or substitute app (there already was a previous app) then interviews are normally granted before the first office action in these cases.
  • After first OA, but before final OA: The most common time for an interview is after the initial OA (usually where claims receive initial rejection) and before the final actions are taken on the app.
  • After a final Rejection: Normally 1 interview is allowed, but the examiner should be notified as to the specific subject matter of the meeting (preferably in writing). The interview must be held before the 6 month statutory time limit after the final rejection, but there is no need to get a 37 CFR 1.136(a) extension of the SSP just to have the interview. Further interviews may be granted at the examiner’s discretion if he believes it will expedite resolution of appeal or disposal of the app.
  • On Appeal after brief is filed: If the applicant has filed a brief related to an appeal on the patent, then generally interviews are notgranted (the patent is now being examined by parties other than the examiner)
  • After App goes to Issue: If the patent has gone to issue, nointerviews (once again, it is outside of the examiners purview at that point)

What forms of communication are allowed?

  • Face to face interviews are the standard
  • Phone interviews and remote teleconferencing are also available
  • Email: is not allowed for interviews without the express prior written consent of applicant or atty/agent of record.
  • Video Tapes: The applicant must be able to show the content of the video has a bearing on outstanding issues related to the app.

What has to be Recorded from the Interview? (713.04):

  • It is the applicant’s or atty/agent of record’s duty to make records of the substance of the interview.
  • The substance of the interview on the merits has to be recorded, whether or not agreement on claims was reached or not. (points raised purely on procedure or discussion of typos in the app do not have to be recorded)
  • The examiner should review the record made by the interviewee and under 37 CFR 1.135(c) should give notice & 1 month to have the interviewee correct deficiencies in the record if there are any.

Amendments (714.01-714.13)

714: Amendments: (All amendments follow the form and rules set in 37 CFR 1.121)

When are you allowed to Amend the app?

  1. 1. Before or after the first examination and OA is made.
    1. 714.01(e): A preliminary amendment (37 CFR 1.115) is one made before the first OA and it may even be made on the same day as the filing. However, in order to keep an NPA alive (and to give it a filing date) if an prelim amendment cancels out all the original claims without adding any new claims, the Office will ignore it.
      1. Remember than after 20040921 a preliminary amendment filed on the same day as the app itself is considered part of the original disclosure meaning that (just for this one amendment) it is allowed to have new matter, although the oath/declaration must expressly cover the amendment too in those cases.
    2. 714.01(e): The best advice is to get the preliminary amendment in early. The examiner may reject a preliminary amendment if it is submitted too close to the time when the examiner was going to issue an OA. The main reasons for rejection of an amendment are:
      1. The examiner has already spent a bunch of time preparing the OA
      2. The amendment would require a significant amount of additional time in preparing the OA (like substantive changes to claims, specifications, arguments, etc. not just corrections of typos and minor changes that would not require much work to check).
    3. However, there are situations when the applicant can always submit the amendment:
      1. Preliminary amendment is OK as long as it is <>
      2. Also OK if it is <>
      3. If it is filed at the same time as the filing date of a CPA (only for design patents)
      4. If there was a suspension and the amendment is filed on the last day of that suspension.
  2. Amendments that are filed after a Final Rejection (714.12, 714.13) (like a 37 CFR 1.116 amendment in response to the final rejection):
    1. The applicant no longer has a right to file amendments, but they are still generally allowed in some instances for amendments that:
      1. Cancel claims (to make all the remaining claims valid for issuance)
      2. Comply with formal requirements (fix typos and other mistakes that do not affect the merits of the app)
      3. Presenting claims in a better form for appeal (if the applicant will appeal the final rejection, this amends the claims to be ready to go into the appeal).
    2. If the amendment actually will affect the merits of the app, it will be accepted only if there is a showing of a good and sufficient reason for why the amendment was not made sooner. (37 CFR 1.116(c))
    3. Amendments that put the app into the correct for for allowance (granting of the patent on whatever claims have been allowed) or for appeal is allowed after final rejection.
    4. ANY OTHER AMENDMENTS that do not meet the above criteria will not be allowed. The Office will issue an Advisory Action to inform the applicant that the amendment is not allowed.
  3. Amendments requested by Examiner:
    1. The examiner can also make requests for amendments too.
  4. Review: When amendments are not fully responsive: (37 CFR 1.135)
    1. An amendment being used in reply to an OA must be fully responsive to every issue raised in the OA.
    2. The examiner may accept the amendment to avoid abandonment (this is when the response is bona fide but still missing some items to be fully complete, the examiner will then notify the applicant about the problem and have the applicant fix it).
      1. Bona fide usually means unintentional omission, if the applicant is deliberately leaving something out it is not the same thing.
      2. This does not apply for amendments after the Final Office Action, those amendments (37 CFR 1.116) are only for fixing formal problems that make the application more suited for either allowance or appeal. If an invalid amendment is entered then, the deadline for getting in the amendment continues to run.
    3. For non-final actions, the examiner may notify the applicant that the amendment is incomplete (the applicant has the rest of the SSP + 1.136(a) extension period to file a correct response)
    4. Setting a new time period (only for inadvertent omissions)

More on 37 CFR 1.121 (how to actually make amendments):
The amendment should have a coversheet (see example in MPEP) that clearly says AMENDMENT at the top, and that lists out all the amendments to the specifications, drawings, claims and where they go in the original app (like what pages an amendment applies to). At the end of the amendment, there is usually a section called: Remarks/Arguments that gives a brief description of why the amendments were added.
Each amendment should begin on a separate sheet for its given section (1 for specs, 1 for claims, 1 for drawings)

Amendments to the Specification:

  1. Must be made by adding/deleting/replacing a ¶ or §, or by substituting in an entirely new spec.
    1. A ¶ or § must be unambiguously identified using page & line numbers or a ¶ number.
    2. To make a big deletion and use underline for new material
    3. Where the change is [[var]]very small (<>
    4. If you are amending just one ¶, try to use its number (the following amends ¶ 013)
    5. If you are amending one ¶, but are adding in an additional ¶ then the new paragraph gets a decimal number: Original ¶ 013, newly amended ¶¶ 013.1, 013.2 …
  2. Substitute Specifications:
    1. There needs to be 2 copies: one that is marked up with all the changes (As above) and then the final substitute which is a clean copy.
  3. Taking back amendments:
    1. Once something is changed by an amendment, you can’t withdraw the changes. The only solution is to file another amendment that changes the app back to the way you want it.

Amendments to the Claims:

  1. Any amendments to claims need to reproduce all of the claims that have ever existed in the patent app (basically amending claims means putting in a new substitute set of claims)
  2. Each claim has to be listed in the following format:
    1. Claim (): canceled or not entered in which case the claim is never written out)>
    2. Example: Claim 1 (previously presented): A spoon that is too big.
  3. Claims have to be in numerically ascending order
  4. If you have a bunch of canceled or not entered claims that are consecutive, they can be grouped together.
  5. The accepted words to use for the claim’s status are:
    1. original (has never been amended)
    2. currently amended (the claim is being updated in this amendment)
    3. previously presented (was amended in a previous round of amendments but is not changed in the current amendment)
    4. withdrawn (even though the claim is withdrawn it must still be written out)
    5. new (a brand-new claim being added by this amendment)
    6. canceled (claim was canceled, it is not written out)
    7. not entered (claim was never formally entered, not written out

Examples of Amended Claims:
Claims 1-5 (canceled)
Claim 6 (withdrawn): A method for throwing cheese.
Claim 7 (previously presented): A cheese catapult.
Claim 8 (currently amended): A cheese catapult with a rubber band.
Claim 9 (withdrawn): A process for making the rubber band of claim 8.
Claim 10 (original): The catapult loaded with mozarella.
Claim 11 (not entered)
Claim 12 (new): A wheel carriage for the catapult of claim 7.

Amdendments to the Drawings:

  1. Drawings must be updated on separate sheets with each amended drawing sheet having: “Replacement Sheet” at the top
    1. The replacement sheets must be entered no matter what kind of changes are made to an existing drawing (even if it is only to redraw the same picture with better quality)
  2. Completely New drawings must be on new sheets
  3. Annotated (marked-up) copies may also be included with the replacement sheets, and may be required if the examiner requests the annotated copies. They should be labeled as “Annotated Sheet”
  4. The amendment or the previously mentioned “Remarks & Arguments” section should explain the changes made to the drawings.

714.03: Supplemental Amendments to Replies:
Say you make a reply, and then before the Office can fully consider it you supplement the reply with a new amendment. The Office usually prefers the original reply to be correct on its own, but supplemental replies are allowed when:
A. During a suspension period (like before entering an RCE) a supplemental reply is allowed by right
B. Otherwise supplemental amendments are not allowed by right, but could be considered if the amendment is limited to:

    1. cancellation of a claim
    2. adoption of examiner’s suggestions
    3. placement of the app into the condition of allowance (correcting the app to allow it to issue)
    4. reply to an OA that was made after the original reply was filed
    5. correction of typos and other formal errors; OR
    6. simplification of issues for appeal.

Cleanup on Amendments and Swearing Back (714.14-715.03)

714.14: Amdendments After all Claims are allowed (Ex Parte Quayle):
Once the remaining claims have been allowed, then amendments are not allowed on the merits of the patent, only for correcting formal errors.

714.15: When amendments are received by the Office AFTER the mailing of allowance (but the amendment’s effective date is before the allowance):
Generally entry into the record for these amendments is up to the examiner, who may reject them. The rule for these amendments matches the rule for ones that actually are sent after the allowance is made (37 CFR 1.312 below).

714.16 Amendment after notice of Allowance (37 CFR 1.312):

  • The amendments must be made before the issue fee is paid
  • The applicant may attempt to file amendments after allowance, but remember Ex Parte Quayle, there is no right to have the amendment examined and added, just the ability to request at the exmainer’s discretion.
  • The applicant has to make a detailed statement as to how the new amendment is needed for: (A) proper disclosure and protection of the invention, and (B) require no substantial work on the part of the office.

Smack Talkin’: Under 37 CFR 1.3, any paper that violates the decorum rules of the USPTO will not be entered into the apps record, and will never be published.

Swearing Back of a Reference: (715)

What it is: “Swearing Back” means that under some circumstances the applicant can file an affidavit (under 37 CFR 1.131 or sometimes 37 CFR 1.132) that the applicant actually invented the matter that is discussed in the prior art before the prior art was published (swearing back in time before the prior art was published). The date sworn back to will actually be earlier than the effective filing date of the patent.

Requirements for being able to Swear Back under 37 CFR 1.131:

  • The invention has to have been created in either the U.S., a member of NAFTA (Canada & Mex), or in a WTO country for apps after 19960101 (If a country joined the WTO after that date, then whatever date that country joined is the effective date for inventions made in that country).
    • For example: If I make a Kim Jong Il Pez dispenser in North Korea, I can’t swear back to it.
  • When the statutory bar from 35 U.S.C. 102(b) does not apply. Remember, that 102(b) gives a 12 month deadline from the first time the applicant itself publishes or puts the invention on sale to file for a patent. When trying to swear back, the 12 month limit still applies, so swearing back will only ever work for prior art that was made less than 12 months before the app was filed. (You can’t claim to have invented something 10 years ago and swear back to it, the statutory bar is in place!)
  • First Main Situation: There is a prior art reference under 35 U.S.C. 102(a) (some prior art published on the subject matter taught by the patent). If the prior art was made < style=”font-weight: bold;”>claims of the earlier patent must not cover the same invention as the later patent for this to work.
  • Second Main Situation: With 102(e) prior art (prior filed patent app is the prior art), if the prior filed app discloses the prior art, but does notclaim the prior art as its own (which would cause an interference case) then it is possible to swear back that the invention was made before the filing date of the 102(e) referenced app. Important: Remember, disclosures in apps that are not claimed can be used as prior art, but they are not something that can actually be sued over unless they fall under a claim!

10 Important cases where you CANNOT swear back:

  1. 1. If the reference publication for the prior art is > 1 year older than the effective filing date (statutory bar under 35 U.S.C. 102(b)).
  2. 2. Where the referenced U.S. patent or application (102(e) prior art)claims the same invention as the app under question. (this would create an interference case).
  3. 3. If the prior art is a foreign patent or app (it could even be owned by the same applicant or the same assignees) that was filed > 12 months prior to the U.S. application date. (Remember the 102(b) statutory bar as well as the 12 month requirement for claiming priority over foreign apps!!)
  4. 4. If it is proven that the effective filing date for the app is actually priorto the date of the referenced prior art, then the affidavit is actually not necessary since the prior art should never have been referenced in the first place. (Remember, the affidavit is only for when the actual invention is before the prior art, if the effective filing date is already early enough, no need to swear anything back!)
  5. 5. Where the reference is to a prior U.S. patent or app issued to the same entity claiming the same invention. (This is known as “double patenting” and obviously, you can only get the patent once).
  6. 6. Where the reference is the disclosure of a prior U.S. patent to the same applicant (At this point, you should be trying to claim the benefit of the earlier app since it is not logical to swear back on your own invention).
  7. 7. Where the applicant has clearly admitted on the record that the subject matter in the reference is prior art (Something like an IDS statement or a statement in an interview. Think: Equitable Estoppel).
  8. 8. Where the subject matter in the prior art is covered under 35 U.S.C. 102(f) (remember: f is where the applicant or common owner did not actually invent the earlier invention)
  9. 9. Where the subject matter is prior art under 35 U.S.C. 102(g) (This isinterference where the same subject matter exists in 2 different patent apps. There are separate procedures for interference so swearing back is not an option).
  10. 10. Similar to #9 but in this case, the applicant has already lost the interference claim. (102(g) is when there is an interference on a claim and the applicant loses, under res judicata the issue has already been decided by the USPTO, so it is not possible to swear back at this point).

A narrow Alternative: Affidavits under 37 CFR 1.132: (715.01)

  • These are similar in function to 37 CFR 1.131 (they defeat prior art) but are not the same thing as swearing back.
  • A 1.132 affidavit is that the invention that is the subject of the prior art reference was actually invented by the same entity responsible for the current application (could be the same inventors or the inventions could have the same assignee)
    • Remember from the earlier lessons on 103, 102(e)(f)(g) where normally the prior art would defeat the claims, but the same entity (common owner, JRA) was responsible for the earlier invention.
  • Co-authorship: (What are the rules for deciding if it is the same inventive entity):
    • If the applicant is one of the co-authors of the prior art, he may file the 37 CFR 1.132 affidavit if the work referenced by the claim was his own work. (Another method is a normal 37 CFR 1.131 affidavit claiming to have invented the item before the prior art got published).
  • Derivation:
    • If there is subject matter in a prior patent or patent app that isnot covered in the claims of that patent then if there is evidence submitted showing that the applicant for the new patent was the source of the same material in the prior app, then that evidence can defeat the prior art reference.
    • Example: I worked on a big project that got a patent, but the description of some of my contributions was never actually claimed in the prior patent application, just put in to describe the invention. Later on I use that same work to make a new invention. Normally, the prior art in the previous app would defeat my later app, but since I created both (common inventor) then evidence showing I made the earlier unclaimed material will defeat the prior art reference.

More on Swearing Back (715.04-716.02)

Who is allowed to swear back a reference? (715.04 who can file the 37 USC 1.131 affidavit)

  1. All of the inventors of the subject matter claimed
  2. An aff/decl by less than all the inventors where it is shown that less than all of the named inventors on the app actually invented the subject matter being sworn back to.
  3. When there is a 37 CFR 1.47 petition that is accepted (when the inventor refuses to sign or cannot sign) then the aff can be signed by the 37 CFR 1.47 applicant, or by legal representative.
  4. When it is not possible to produce the inventor, then the assignee or other party with proprietary interest may sign.

Formally, the affidavit just has to be a sworn, written statement (may be an oath or declaration)

715.05: When your Patent App claims the same invention as another app or patent:

  • Remember: you cannot file an affidavit in this situation!Instead, see 37 CFR 41.202 (interferences) for how to resolve issues when the prior art is a claimed previous invention.
    • Also remember: this is different from a case where a previous patent/app has prior art, but is not actually claiming the prior art for the same invention. IF the 2 inventions are shown to be substantially different, then as long as the previous app does not claim the subject matter, it can be sworn-behind.
  • Remember the 1 year bar. the 1 year time limit includes the anniversary date of the prior art (just like Rule 6 from FRCP) so prior art on June 10 2005 can still be sworn back for an app on June 10, 2006.
  • The “same invention” here does not mean the prior and current apps are identical, it just means that the two are not “patently distinct”.

715.07: What evidence do you need to show in the Affidavit?
In order to successfully swear back, the applicant must show facts that the invention was actually made and practiced in the U.S., NAFTA Country, or WTO country prior to the referenced prior art being available. Here are the types of evidence that can show this:

  • A. attached sketches
  • B. attached blueprints
  • C. attached photos
  • D. attached reproductions of notebook entries (inventor’s notebooks are a big deal)
  • E. an accompanying model
  • F. attached supporting statements by witnesses (verbal disclosures)
  • G. testimony from an interference proceeding. The applicant must clearly show which parts of the testimony are being relied upon.
  • H. Disclosure documents (see infra 1706) may used as documentary evidence of conception.

Establishing the Dates (important if you want ot beat the prior art):
For swearing back, the inventor does not have to always give the actual date of an invention, just show that the invention happened before the referenced art. However, for showing diligence in the invention (see below) the applicant must have actual dates.

Three ways to show Prior Invention:
Remember, the Ofifce cares about facts that the invention was conceived & completed in the US/NAFTA/WTO country. When it comes to how far along the invention was: At least the conception has to antedate the prior art, but if the invention was not complete before the prior art, the applicant also has to showdiligence in completing the applicant until it was either fully reduced to practiceor was diligent up to the date of filing of the patent app. Basically: You didn’t have to be done with the invention before the prior art, as long as you havefactual evidence that you had already conceived it, and that you diligentlyworked on the invention until it was doen, or you filed for the patent.

  1. A. Actual reduction to practice of teh invention prior to the effective date of the reference (you finished the invention before the prior art, easiest when you can show it); OR
  2. B. Conception of the invention happened before the date of the prior art, and there was due diligence prior to the reference date in actually reducing the invention to practice (you weren’t done with the invention but kept working on it prior to the referenced art, and got the invention done (‘reduction to practice’)); OR
  3. C. Conception of the invention happened before the date of the prior art, and there was due diligence prior to the reference date all the way up until the date of filing the patent app. (you conceived of the invention first, and were diligent all the way up until the app was filed).

For sufficiency, the conception needs to be more than a vague idea, but has to show an understanding of how the parts of the invention interact with each other.

More on Diligence:
Just like with other forms of evidence in the affidavits, it is not sufficient to merely allege diligence, there must be facts showing the diligent work. For example, even if the applicant is doing nothing, he may be ‘diligent’ if he can show evidence that there is a valid reason for inaction, and that this reason means the applicant was actually being diligent.

715.10: Review of Affidavit for evidence of Public sale/use or failure to describe best mode:
The examiner should review the affidavits under 37 CFR 1.131 for evidence that the applicant was selling or publicly using the invention in the U.S. > 12 months prior to the actual invention.

716: What is needed for affidavits under 37 CFR 1.132

  • If there is objective evidence of: (especially for defeating obviousness)
    • criticality
    • unexpected positive results
    • commercial success
    • long-felt but unsolved need that this invention addresses
    • failure of other inventions to meet the need
    • expert opinions, etc.
  • The (watch out McCoy) nexus requirement: Pretty simple: the evidence the applicant puts forth must have a common nexus with the actual invention being claimed.

716.01: Quality of Evidence:
Any Objective Evidence must be Supported by actual proof!
Any of the above points has to have proof to support the claim. A simple opinion or atty argument is not enough to count as actual proof for objective evidence. While factual evidence is the best, expert opinions might be allowed as long as they are not on the ultimate legal conclusion (e.g. an expert can testify about science in general, but the expert cannot be used to conclude that the invention is non-obvious).

Prima Facie Case: Remember, the 37 CFR 1.132 affidavit may be filed totraverse a rejection (get around an objection). That sometimes include evidence that the same person invented the prior art that is being referenced, or that the new invention is actually non-obvious. However, the evidence must be weighed against the prima facie case that the invention is obvious.

  1. The weight is a preponderance of evidence
  2. After the prima facie case is established, the burden is on theapplicant to meet the weight of the evidence in his favor.

716.02: Unexpected Results:

  • When an invention that might otherwise seem obvious has unexpected positive results then as long as the applicant can produce the objective proof that the positive results occurred and were not actually expected by prior art, then that can go against prior art.
    • This can include: A much greater effect than expected by prior art (like prior art anticipated a 2x gain, but I got an 8x gain)
    • Having superior properties than is expected.
    • Also: absence of a property that actually was expected can also work (like a drug that the prior art taught would be addictive, but unexpectedly turned out not to be addictive).
  • (716.02(b)) Remember, just as with any other prima facie case, the burden is on the applicant to actually hork up the evidence showing that the results were both: unexpected and significant.
  • As usual, the evidence from the prima facie prior art references that says the invention is obvious has to be weighed against the evidence that the results were not expected and significantly different from the teachings of the prior art.
  • One last point: Remember: If the prior art teaches that there is anexpected beneficial result then even if the invention produces the beneficial result, that is evidence showing the invention is obvious. The applicant’s best bet is to try to show that the magnitude of the beneficial effect was so significantly different than what was expected that it ought to be non-obvious.

More on a 37 CFR 1.132 affidavit; Affidavits under 37 CFR 1.130; Public Use Proceedings (nailing 102(b) violators) (716.02-720.01)

More on Unexpected Results with a 37 CFR 1.132 affidavit: (716.02(d))

  1. It is not just that the results are unexpectedly positive, but the claims of the new patent must properly cover the actual results that the applicant can prove:
    1. Example: An invention claims an unexpected benefit in a chemical process at “elevated temperatures”. In one claim the application actually says: “In excess of 100C”. The court tossed out the claims that only said “elevated temperatures” since the term was too vague in defining the actual temperatures that created the unexpected benefit. The claim that was specific as to giving a precise temperature or range was allowed in though.
  2. Make sure the scope of the claims is narrowly tailored to meet the actual results from the invention to keep the claims valid.
  3. Genuses & Species when it comes to results:
    1. A broader claim (genus) than what is actually disclosed in specific parts of the specification (species) can sometimes be claimed when there appears to be a trend that the ordinary person skilled in the art would be able to determine keeps going.
    2. Example: For chemical mixtures, by changing the ratios of chemicals from 2:1, 3:1, 4:1, if the applicant establishes a clear trend that there is an unexpected benefit in changing the ratios, then the claim may be broader (like going to an 8:1 ratio) than is actually disclosed in the specification. However, if there is notrend in the data, or if the trend is not going towards unexpected results, then the claim cannot go beyond the scope of the specification.
  4. Comparing with the ‘closest’ Prior Art: (716.02(e))
    1. If you want to rebut the prima facie case of obviousness, then 37 CFR 1.132 affidavits must rebut the closest prior art available.
    2. The applicant may in fact use prior art that is closer to the invention in his own patent than what the examiner relied upon in forming the prima facie case for obviousness.
    3. When prior art references are equally close:
      1. If there are 2 or more references, then showing unexpected results that are only unexpected by 1 of those references is not sufficient to rebut the prima facie case. However, if 2 or more references are equally close, and are sufficiently similar to each other that showing unexpected results against 1 will also result in unexpected results against the other, then the applicant need only use one of the prior art references.
  5. Another point for defeating obviousness: Commercial Succes (716.03):
    1. It is up to the applicant to show that there has been commercial success with the invention as one of the points in defeating the prima facie case of obviousness (35 U.S.C. 103 rejection) Basically, commercial success is one indicator that the invention is actually non-obvious since you are making more $$$ off of it.
    2. There must be a nexus between the actual claims of the invention and the commercial success to show causation. For example, it won’t work to claim commercial success on an invention when you were already a market leader or the success was attributable to marketing instead of the new invention.
    3. The scope of success must be commensurate with the claims. Example: A patent on foam “containers” tried to show success because of improved sales in foam cups used in vending machines. This was not found to be in the same scope since the ‘containers’ claim was much broader than the commercial success with ‘cups’.
  6. The ‘Long Felt Need’ Requirement:
    1. The invention must meet a ‘long felt need’ that had not already been met by another invention.
    2. Once again, there must be objective evidence (in the form of proof) that the art recognized the problem or need that this invention solves.
      1. persistent need recognized by those with an ordinary skill in the art.
      2. This basically means other people normally skilled in the art have to recognize the problem (not just the applicants)
    3. Remember: nobody else can have solved the problem. Even if the solution is a different technique from the one being patented, if the long felt need has been solved by prior art, it is no longer a long felt need!
      1. Example: Window shading material that could be easily adjusted by hand. The patent was rejected on obviousness grounds due to the fact that another form of windowshade allowed for manual cutting via scored plastic. Because the long-felt need had already been met, the prior art defeated the claim.
    4. Experts: If an expert claims ‘disbelief’ that an invention will work (and if it actually is proven to work) then that will also go towards a non-obvious meeting of the long-felt need.

716.10 Attribution: This is when there is prior art or a previous patent app where the subject matter is not being claimed and it turns out the inventor of the invention is the same author of the prior art. Assuming the 102(b) statutory bar is not in place, then the author has 2 options: (1) swear back the reference under 37 CFR 1.131 or (2) make an unequivocal affidavit that the same applicant for the patent created the referenced art under 37 CFR 1.132.

718: Another Alternative: Affidavits under 37 CFR 1.130:
These affidavits are more limited than the 1.131, 1.132 since they only describe narrow situations:

  1. This is where the applied for inventions are not identical but they are also very similar (a 1.131 affidavit requires the inventions to be significantly different, this is an in-between, it is not a double-patent since the claims are not identical, but the claims are still very close together).
  2. There has to be a terminal disclaimer on claims that are very similar to the prior art (shortening the life of the claims to that of the prior patent)
  3. There has to be an oath of common ownership between the prior art and the new patent.
  4. However, to get the 37 CFR 1.130 affidavit there are 2 important points that are easier to meet:
    1. 1. There does not have to be a common owner or JRA at the time the new invention is made, just a common owner at the present time.
    2. 2. The inventions do not have to be patently distinct like is required in 37 CFR 1.131. (terminal disclaimer takes care of that)

720: Public Use Proceedings (37 CFR 1.292; continued in next lesson):
Any member of the public can file a 37 CFR 1.292 petition to try to show that an invention was actually on sale or in use in the U.S. > 12 months prior to the effective filing date of the patent. Basically it allows outside parties to submit evidence showing that the app or patent should not hold up due to the 35 U.S.C. statutory bar.

  1. 1. The principal (who can remain anonymous) or the principal’s atty files a petition, including information and proof showing the invention was in use/on sale > 12 months prior to the filing date.
  2. Petition must have fee under 37 CFR 1.17(j)
  3. The applicant must be served with the petition directly, or if service is not possible it should be filed with the Office.
  4. Deadlines: The petition must be submitted prior to the earliest of either: the application being published, OR the notice of allowance (application is being granted).

Posted by Chuckula at 12:47 PM 0 comments

More on Public Use Proceedings; Protecting Trade Secrets & Other Info from Publication (720-724.05)

More 37 CFR 1.292 Public Use Proceedings:

  1. After the petition is properly filed it is up to the examiner to make a determination if the evidence in the petition creates a prima facie case that the invention was in use or on sale in the U.S. > 12 months before the effective filing date.
    1. If the determination is that the prima facie case is not established…. the process is over, nothing more will be done (no appeal by the 37 CFR 1.292 petitioner)
  2. If the prima facie case is established, then there is a preliminary hearing on the matter. Both parties will be notified that the hearing will take place. The Office of Patent Legal Administration (OPLA) handles the hearing and will make the decision on the petition. At the hearing there can be testimony taken using similar procedures to testimony in interference hearings.
  3. Final Decision: The examiner makes the final decision. If the examiner makes a final finding that the app is barred, his rejection of the claims will state that reason. If the examiner finds in favor of the applicant, the petition will be noted in the record but prosecution may proceed. There is no further review after this decision is made.

724: Keeping Trade Secrets and other Proprietary Info out of Published Apps (When you can & can’t do it):
When submitting papers containing trade secrets the applicant must:

  1. 1. clearly label the information as ‘trade secret’, ‘proprietary’, ’subject to protective order’
  2. 2. File the materials in a separate sealed envelope with a cover letter that identifies the documents.
  3. 3. See MPEP 724.02 for more info
  4. 4. When the material is submitted, a petition & fee under 37 CFR 1.59 to have the material expunged can be sent at the same time as the material itself.

What types of material are covered & what is the process on their use?

  • This is generally information that is material to patentability but that isnot considered favorable to patentability
    • The info that goes into the 37 CFR 1.56 “duty to disclose” statements (IDS; prior art submitted by the applicant) can be put into the sealed envelope for a 724 request
    • Basically: This is information that needs to be disclosed to let the examiner properly conduct the examination (it’s material) but it isnot the favorable basic information needed to actually get the patent (like the parts of the disclosure that the claims directly rely on for patentability).
  • The Office has to determine if the information is important to the reasonable examiner in deciding whether or not to issue the application (this is the favorability issue, favorable information that is important to deciding the allowance has to get published).
    • If it is important: Tough, the material is going to be cited in the next Office action and will end up in the file history, and will eventually get published. (Info important to the determination cannot be kept secret just because of its proprietary nature. Of course, recall the national security issues which would prevent publishing of the app at all, however, those are different considerations).
    • If it is not important: The office will re-seal the info back into the envelope, and then hold it waiting for a petition to expunge the record of the proprietary information.

Petitions to Expunge Info from the Record: (37 CFR 1.59(b))

  • These are filed in order to get any of the material from a 724.02 request expunged from the record
  • The information to be expunged has to be clearly identified (usually in the same way it came in under the sealed envelope, it IDs the information without divulging the actual protect info.)
  • There is a requisite fee (37 CFR 1.17(g))
  • Statement that the request to expunge is submitted by or on behalf of the party who originally submitted the information.
  • The USPTO has to have determined that the information is not important to deciding whether or not to issue the patent.
    • One exception: if the patent is being expressly abandoned, then the office will usually grant petitions to expunge.
1 DYNo Gravatar March 23, 2009 at 11:40 pm

Re: as per inventions aiding in the countering of terrorism requiring a fee to make special: as per MPEP 708.02, I don’t think this is the case (they don’t seem to require a fee):

(c) A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy
resources; or
(iii) Contribute to countering terrorism.<

2 KWNo Gravatar May 14, 2010 at 1:30 am

I noticed this discrepancy as well. In the April 2003 exam, the answer to this question was that it would require a fee because the CFR (1.102(c)…http://mpep.patentbargroup.com/pdf/mpep_e8r2_appxr_508.pdf) at that time did not list “countering terrorism” as an exception. The current version does not require a fee.

3 vertyNo Gravatar April 7, 2012 at 6:56 pm

Superconductivity is also free. The outline says it requires a fee.

4 JPNo Gravatar July 9, 2009 at 4:02 am

Thanks for sharing this great outline with everyone!

Re: section on revivals and terminal disclaimers. A part of the section may be misleading or incorrect if I understand the revival requirements in 37 CFR 1.137(d). I think both the terminal disclaimer and accompanying fee apply only if it’s a design patent OR other patent app filed before 19950608.

According to the outline:
Under 37 CFR 1.137(d) the petition needs to have a terminal disclaimer (remember a terminal disclaimer will shorten the life of the patent from the normal 20 years from filing time).
o This disclaimer fee only applies to design patents OR other patent apps that were filed before June 8, 1995 (modern apps do not need the disclaimer fee anymore)

5 littleyellowduckNo Gravatar June 13, 2011 at 5:07 pm

Can substitute application contain new matter other than the original application?

6 zaoNo Gravatar June 13, 2011 at 5:31 pm

whatever is added in the substitute application has to be supported by the original paten disclosure. can’t be new matter that is not supported

7 zanNo Gravatar June 16, 2011 at 10:06 pm

I thought applications related to the following were free:
conservation, health, energy, age, terrorism, superconductivity. Have the reasons for “free or fee” petition to make special changed recently?

8 littleyellowduckNo Gravatar July 2, 2011 at 2:14 pm

A final rejection is mailed on Feb 3rd 98 setting a shortened statutory period of 3 months to respond. On May 6th, 98, an interview was held with the examiner and on 6.7.98 following the interview a response was filed together with a 2-months extension of time. On July 24, 98 the examiner telephones the agent and indicated that he was preparing to make additional amendments by Examiner’s amendments, which will place the application in condition for allowance. Which of the following is true?

A. No extension of time is necessary for the interview, but the deadline must be extended 3 months if the examiner made the amendments.

I don’t understand why no extension of time is necessary for the interview.

9 mimiNo Gravatar September 25, 2012 at 1:06 am

You need not to pay an extension fee or time for the interview if you pay an extension fee and file a request for extension.

10 littleyellowduckNo Gravatar July 2, 2011 at 2:47 pm

Another Q about EOT
A Notice of Appeal is properly filed on 1. 12. 98. Your Client is in biosphere and won’t emerge until 9 23 98 at which time you expect to obtain the necessary information to file a brief, what would the most appropriate action to take, assuming you will be ready to respond by 10.1.98.
Answer: On or before 8 12 98, file a request for a 5-month extension of time to file an appeal brief under 37 CFR 1.136(a), pay the required fee for that extension and file a request for an additional two-month extension under 1.136(b) setting forth the reasons for that additional 2-month extension.

1.136 (b) states “In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute.” I don’t understand why additional 2-month extension can for reasons under this situation.

11 MichaelNo Gravatar July 17, 2011 at 11:12 pm

The appeal brief for a notice of appeal does not fall under the 6-month statute limit set by U.S.C 133. Therefore it can be extended using the 5 month extension under 1.136a, and then (with valid reason) under 1.136b

12 MichaelNo Gravatar July 17, 2011 at 11:17 pm

Is the information in this outline (and every other one I’ve found) for petition to make special really outdated? MPEP e8r8 seems to suggest that 708.02 only applies to patents filed before 2006, and patents filed after 08/25/2006 has to comply with 708.02(a), which doesn’t have any subject matter limitations.
Any clarification would be appreciated.

13 DJEBNo Gravatar April 2, 2013 at 8:46 pm

According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?

(A) A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to the effective filing date of the U.S. patent application.

(B) A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before the effective filing date of the application. The patent discloses, but does not claim, the invention.

My answer key says (B) is correct. Why is it (B) and not (A)?

14 JTrain9000No Gravatar May 10, 2013 at 7:19 pm

I think it should be (A)… I’m pretty sure you can’t 1.131 (swear behind) a 102(b) reference.

15 PugnitopoNo Gravatar August 11, 2013 at 7:08 pm

A) is correct. See MPEP § 715,under “Situations Where 37 CFR 1.131 Affidavits or Declarations Can Be Used,” it says that an affidavit under 37 CFR § 1.131 may be used to antedate a reference that qualifies as prior art under 35 U.S.C. §102(a) but not 35 U.S.C. § 102(b)

16 JoshNo Gravatar October 6, 2014 at 12:43 am

What is the meaning of this section?

>However, there are situations when the applicant can always submit the >amendment:
>Preliminary amendment is OK as long as it is
>?Also OK if it is
>If it is filed at the same time as the filing date of a CPA (only for design >patents)
>If there was a suspension and the amendment is filed on the last day of that >suspension.

17 joshNo Gravatar October 6, 2014 at 12:44 am

Can someone explain this to me.

However, there are situations when the applicant can always submit the amendment:
Preliminary amendment is OK as long as it is
Also OK if it is
If it is filed at the same time as the filing date of a CPA (only for design patents)
If there was a suspension and the amendment is filed on the last day of that suspension.

18 AaronNo Gravatar October 18, 2014 at 12:47 pm

Basically a preliminary amendment will only be accepted so long as it does not burden the examiner, this means that it will be due when you’re filing the application only…unless those circumstanes listed above.

Previous post:

Next post: