Q) Smith's Drawings (10.01.3p)

by patentbar on September 4, 2008 · 3 comments

in Exam Questions

3. Practitioner Smith filed a utility patent application on January 5, 2001, with informal
drawings. Upon review of the drawings, the USPTO concluded that the drawings were not in
compliance with the 37 CFR 1.84(a)(1) and (k), and were not suitable for reproduction. In an
Office communication, Smith was notified of the objection and given two months to correct the
drawings so that the application can be forwarded to a Technology Center for examination.
Which of the following complies with USPTO practices and procedures for a complete bona fide
attempt to advance the application to final action?

(A) Smith timely files a response requesting that the objections to the drawings be
held in abeyance until allowable subject matter is indicated.
(B) Smith timely files a response requesting that the objections to the drawings be
held in abeyance since the requirement increases up- front costs for the patent
applicant, and the costs can be avoided if patentable subject matter is not found.
(C) Smith timely files a response requesting that the objections to the drawings be
held in abeyance until fourteen months from the earliest claimed priority date.
(D) Smith timely files a response correcting the drawings to comply with 37
CFR 1.84(a)(1) and (k), and making them suitable for reproduction.
(E) All of the above.

3. ANSWER: (D). Under 37 CFR 1.85(a), correcting the drawings to comply with 37 CFR
1.84(a)(1) and (k), and making them suitable for reproduction is a bona fide response. (A), (B),
and (C) are not the most correct answer. In each, Smith seeks to hold the requirement in
abeyance. As stated in 37 CFR 1.85(a) (effective November 29, 2000), “Unless applicant is
otherwise notified in an Office action, objections to the drawings in a utility or plant application
will not be held in abeyance, and a request to hold objections to the drawings in abeyance will
not be considered a bona fide attempt to advance the application to final action.” See also,
“Changes to Implement Eighteen-Month Publication of Patent Applications; Final Rule,” 65 F.R.
57024, 57032, “Section 1.85.” (E) is not the most correct answer inasmuch as (A), (B), and (C)
are not the most correct answers.

{ 3 comments… read them below or add one }

1 qwackerNo Gravatar October 26, 2011 at 8:16 pm

is this still showing up on exams given the distinction between formal and informal drawings was eliminated?

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2 jkpatentlawNo Gravatar June 15, 2012 at 9:17 pm

Cannot hold objections to drawings in abeyance…period.

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3 youngNo Gravatar May 14, 2016 at 3:24 pm

An informal drawing is subject to an objection by OPAP. See below.
MPEP 507 Drawing Review in the Office of Patent Application Processing [R-07.2015]
If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application.

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