Comments on: Examination of Applications (MPEP 700) http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/ Patent Bar Review and Study Guide Sat, 19 May 2012 22:04:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: verty http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-37746 verty Sat, 07 Apr 2012 22:56:40 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-37746 Superconductivity is also free. The outline says it requires a fee. Superconductivity is also free. The outline says it requires a fee.

]]> By: Michael http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-13437 Michael Mon, 18 Jul 2011 03:17:29 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-13437 Is the information in this outline (and every other one I've found) for petition to make special really outdated?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. Is the information in this outline (and every other one I’ve found) for petition to make special really outdated?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.

]]> By: Michael http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-13436 Michael Mon, 18 Jul 2011 03:12:09 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-13436 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 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

]]> By: littleyellowduck http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12778 littleyellowduck Sat, 02 Jul 2011 18:47:31 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12778 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. 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.

]]> By: littleyellowduck http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12774 littleyellowduck Sat, 02 Jul 2011 18:14:17 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12774 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. 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.

]]> By: zan http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12274 zan Fri, 17 Jun 2011 02:06:47 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12274 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? 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?

]]> By: zao http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12173 zao Mon, 13 Jun 2011 21:31:19 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12173 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 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

]]> By: littleyellowduck http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12172 littleyellowduck Mon, 13 Jun 2011 21:07:27 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-12172 Can substitute application contain new matter other than the original application? Can substitute application contain new matter other than the original application?

]]> By: KW http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-2307 KW Fri, 14 May 2010 05:30:08 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-2307 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. 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.

]]> By: JP http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-1207 JP Thu, 09 Jul 2009 08:02:55 +0000 http://mypatentbar.com/2007/12/05/examination-of-applications-mpep-700/#comment-1207 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) 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)

]]>