MPEP Q & A 208: Filing a Petition to Make an Application Special Without a Fee

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Question:

Is it possible to file a petition to make an application special without a fee?

Answer:

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.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 708.01 of the MPEP.  The following is a brief summary of section 708.01.

708.01 List of Special Cases

This section references 37 C.F.R. 1.102 which discusses the advancement of examination. It includes a list of special cases which are advanced out of turn for examination.

MPEP Q & A 207: When Can a Practitioner Enter a Business Transaction with a Client

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Question:

When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client?

Answer:

A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client unless:

  • The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client;
  • The client is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in the transaction; and
  • The client gives informed consent, in a writing signed by the client, to the essential terms of the transaction and the practitioner’s role in the transaction, including whether the practitioner is representing the client in the transaction.

Chapter Details:

The answer to this question can be found in a USPTO supplement. This chapter covers correction of patents.

The answer is from the 9th Edition, Revision 08.2017 USPTO supplement. Depending on future changes to the MPEP and the tested supplements, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules

Changes to Representation of Others Before the USPTO Final Rules

The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association’s (ABA) Model Rules of Professional Conduct (ABA Model Rules).

The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings.

MPEP Q & A 206: Requirements for an Applicant to Rescind Nonpublication Requests

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Question:

What are the requirements for an applicant to rescind a nonpublication request?

Answer:

The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must:

  1. Identify the application to which it is directed;
  2. State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and
  3. Be signed in compliance with § 1.33(b).

Chapter Details:

The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1123 of the MPEP.  The following is a brief summary of section 1123.

1123 Rescission of a Nonpublication Request

An applicant may rescind a previously-filed nonpublication request at any time. This section outlines how an applicant may rescind nonpublication requests. For instance, applicants are strongly encouraged to provide a notice of foreign filing whenever rescinding a nonpublication request in anticipation of filing a counterpart application in an eighteen-month publication country.

MPEP Q & A 205: Meaning of Claims Limited to Species

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Question:

What is the meaning of claims limited to species?

Answer:

Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim).

Species always refer to the different embodiments of the invention. Species may be either independent or related as disclosed.

Chapter Details:

The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 806.04(e) of the MPEP.  The following is a brief summary of section 806.04(e).

806.04(e) Claims Limited to Species

Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim).
Species always refer to the different embodiments of the invention. Species may be either independent or related as disclosed.

MPEP Q & A 204: Definition of a National Application

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Question:

What is the definition of a national application as described in chapter 200 of the MPEP?

Answer:

A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.

Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 201.01 of the MPEP.  The following is a brief summary of section 201.01.

201.01 National Applications

This section covers application types filed under 35 U.S.C. 111. It briefly discusses the difference between provisional and nonprovisional applications. In addition, this section covers the difference between national applications filed before and on or after September 16, 2012.

MPEP Q & A 203: Rejections of Dependent Claims Not Specifying a Further Limitation

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Question:

Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)?

Answer:

Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).

When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim.

Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. A mere difference in scope between claims has been held to be enough.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 706.03(k) of the MPEP.  The following is a brief summary of section 706.03(k).

706.03(k) Duplicate Claims

A dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).

When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

MPEP Q & A 202: Components of Examiner’s Answer in an Appeal

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Question:

What should an examiner’s answer in an appeal include?

Answer:

An examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

(1) Grounds of Rejection to be Reviewed on Appeal.

A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”

The examiner must treat all pending, rejected claims as being on appeal, and must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.

This section must also include New Grounds of Rejection – Under the subheading “NEW GROUNDS OF REJECTION,” the examiner must set forth any new grounds of rejection. An examiner’s answer that contains a new ground of rejection must be approved and signed by the Director (or their designee). For each new ground of rejection, a complete explanation supporting the rejection must be provided with a proper reference to the applicable statute, prior art references relied upon, and the claim numbers of the claims that are subject to the rejection in the examiner’s answer.

(2) Response to Argument.

A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.

Chapter Details:

The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1207.02 of the MPEP.  The following is a brief summary of section 1207.02.

1207.02 Contents of Examiner’s Answer

The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

(1) Grounds of Rejection to be Reviewed on Appeal.

  • Withdrawn Rejections
  • New Grounds of Rejection

(2) Response to Argument.

MPEP Q & A 201: Drawings Essential Elements of Design Patent Applications

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Question:

Is a drawing an essential element of a design patent application?

Answer:

Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.

The design must be represented by a drawing that complies with the requirements and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.

Chapter Details:

The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers Design Patents.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

 

This question and answer comes from section 1503.02 of the MPEP.  The following is a brief summary of section 1503.02.

1503.02 Drawing

This section covers drawings in design patent applications. It covers topics such as views, the use of surface shading and surface treatments, using broken lines, and photographs and color drawings. For instance, drawings are normally required to be submitted in black ink on white paper.

MPEP Q & A 200: When Drawings Are Not Considered Necessary Under 35 USC 113

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Question:

When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)?

Answer:

It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 U.S.C. 113 (first sentence). The same practice has been followed in composition applications. Other situations in which drawings are usually not considered necessary for the understanding of the invention under 35 U.S.C. 113 (first sentence) are:

  • (A) Coated articles or products: where the invention resides solely in coating or impregnating a conventional sheet (e.g., paper or cloth, or an article of known and conventional character with a particular composition), unless significant details of structure or arrangement are involved in the article claims;
  • (B) Articles made from a particular material or composition: where the invention consists in making an article of a particular material or composition, unless significant details of structure or arrangement are involved in the article claims;
  • (C) Laminated structures: where the claimed invention involves only laminations of sheets (and coatings) of specified material unless significant details of structure or arrangement (other than the mere order of the layers) are involved in the article claims; or
  • (D) Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material: where the invention resides solely in the use of a particular material in an otherwise old article, apparatus or system recited broadly in the claims, for example:
    • (1) A hydraulic system distinguished solely by the use therein of a particular hydraulic fluid;
    • (2) Packaged sutures wherein the structure and arrangement of the package are conventional and the only distinguishing feature is the use of a particular material.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 601.01(f) of the MPEP.  The following is a brief summary of section 601.01(f).

601.01(f) Applications Filed Without Drawings

An “applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.” Applications filed without drawings are initially inspected to determine whether a drawing is referred to in the specification, and if not, whether a drawing is necessary for the understanding of the invention.

This section covers what happens in instances where the application does not require a drawing as well as those that do require drawings, but was filed without.

MPEP Q & A 199: The Difference Between Applicant Information, Correspondence Information, and Application Information

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Question:

What is the difference between applicant information, correspondence information, and application information?

Answer:

Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (when dealing with pre-AIA 37 CFR 1.33(a)).

Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 601.05(b) of the MPEP.  The following is a brief summary of section 601.05(b).

601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012

This section covers details about an application date sheet (ADS) in applications filed before September 16, 2012. Topics covered include supplemental application data sheets and their submission and treatment of inconsistent information.