Brief Summary:
Learn about the many aspects of the examination process including; appropriate replies to a first Office action, second Office action and final rejections. Rejections are commonly made under 35 U.S.C. 101, 102 and 103. These laws are very intricate as are the procedures for overcoming the rejections. Swearing back and making amendments are possibilities for overcoming rejections. Both of these options are discussed in great detail.
Several petitions are available related to the examination process. These include a petition to make special that can be used to speed up the examination process if the application meets specific criteria.
If an applicant needs more time to reply to an Office action there is a petition to file for an extension of time as well as one for reviving an application that was abandoned due to missing a deadline.
In addition, a few miscellaneous topics are touched upon here also, such as requests for suspension of action, requests for continuing examination (RCE), interviews, and amendments.
Key Terms:
Abandonment | Abandonment refers to the intentional relinquishment of a patent application or patent rights, often due to failure to respond to office actions or pay required fees. |
Amendments | Amendments refer to changes made to a patent application or its claims during the examination process to address issues raised by the patent office, such as clarifying language or narrowing the scope of the claims. |
Interviews | Interviews are discussions between the patent applicant (or their representative) and the patent examiner to clarify issues, negotiate claim language, and expedite the examination process. |
Prosecution | Prosecution refers to the process of negotiating with the patent office to obtain a patent, including the preparation, filing, and examination of a patent application. |
Rejections | Rejections are official notifications from the patent office indicating that a patent application does not meet certain legal requirements, often requiring the applicant to amend claims or provide arguments to overcome the objections. |
37 CFR (Code of Federal Regulations):
37 CFR 1.136 – Extensions of time. |
37 CFR 1.136 provides guidelines for extending the time period to respond to actions by the United States Patent and Trademark Office, detailing automatic and petition-based extensions. |
37 CFR 1.114 – Request for continued examination. |
37 CFR 1.114 allows applicants to request continued examination of a patent application after prosecution is closed, enabling further consideration of the application with additional fees. |
35 USC (United States Code):
35 USC 101 – Inventions patentable. |
35 USC 101 defines the types of inventions eligible for patents, stating that any new and useful process, machine, manufacture, or composition of matter can be patented. |
35 USC 132 – Notice of rejection; reexamination. |
35 USC 132 requires the United States Patent and Trademark Office to notify applicants of any patent application rejections, providing reasons for the rejection and allowing applicants to amend their applications or request reexamination. |
Quick Statistics:
Number of Pages: 310
Sections: 701 – 724
List of Sections:
701 | Statutory Authority for Examination | |
702 | Requisites of the Application | |
• 702.01 Obviously Informal Cases | ||
703 | [Reserved] | |
704 | Search and Requirements for Information | |
• 704.01 Search • 704.02 – 704.09 [Reserved] • 704.10 Requirements for Information • 704.11 What Information May Be Required | ||
• 704.11(a) Examples of Information Reasonably Required • 704.11(b) When May a Requirement for Information Be Made | ||
• 704.12 Replies to a Requirement for Information | ||
• 704.12(a) Relationship of Requirement for Information to Duty of Disclosure • 704.12(b) What Constitutes a Complete Reply • 704.12(c) Treatment of an Incomplete Reply | ||
• 704.13 Time Periods for Reply • 704.14 Making a Requirement for Information | ||
• 704.14(a) Format of the Requirement • 704.14(b) Examiner’s Obligation Following Applicant’s Reply • 704.14(c) Petitions to Requirements Under 37 CFR 1.105 • 704.14(d) Relationship to Information Disclosure Statements | ||
705 | Patentability Reports | |
• 705.01 Instructions re Patentability Reports | ||
• 705.01(a) Nature of P.R., Its Use and Disposal • 705.01(b) Sequence of Examination • 705.01(c) Counting and Recording P.R.s • 705.01(d) [Reserved] • 705.01(e) Limitation as to Use • 705.01(f) Interviews With Applicants | ||
706 | Rejection of Claims | |
• 706.01 Contrasted With Objections • 706.02 Rejection on Prior Art | ||
• 706.02(a) [Reserved] • 706.02(a)(1) [Reserved] • 706.02(a)(2) [Reserved] • 706.02(b) [Reserved] • 706.02(b)(1) [Reserved] • 706.02(b)(2) [Reserved] • 706.02(c) [Reserved] • 706.02(c)(1) [Reserved] • 706.02(c)(2) [Reserved] • 706.02(d) [Reserved] • 706.02(e) [Reserved] • 706.02(f) [Reserved] • 706.02(f)(1) [Reserved] • 706.02(f)(2) [Reserved] • 706.02(g) [Reserved] • 706.02(h) [Reserved] • 706.02(i) [Reserved] • 706.02(j) [Reserved] • 706.02(k) [Reserved] • 706.02(l) [Reserved] • 706.02(l)(1) [Reserved] • 706.02(l)(2) [Reserved] • 706.02(l)(3) [Reserved] • 706.02(m) [Reserved] • 706.02(n) [Reserved] | ||
• 706.03 Rejections Not Based on Prior Art | ||
• 706.03(a) [Reserved] • 706.03(b) [Reserved] • 706.03(c) [Reserved] • 706.03(d) [Reserved] • 706.03(e) [Reserved] • 706.03(f) – 706.03(j) [Reserved] • 706.03(k) [Reserved] • 706.03(l) – 706.03(n) [Reserved] • 706.03(o) [Reserved] • 706.03(p) – 706.03(r) [Reserved] • 706.03(s) [Reserved] • 706.03(t) [Reserved] • 706.03(u) [Reserved] • 706.03(v) [Reserved] • 706.03(w) [Reserved] • 706.03(x) [Reserved] • 706.03(y) [Reserved] | ||
• 706.04 Rejection of Previously Allowed Claims • 706.05 Rejection After Allowance of Application • 706.06 Rejection of Claims Copied From Patent • 706.07 Final Rejection | ||
• 706.07(a) Final Rejection, When Proper on Second Action • 706.07(b) Final Rejection, When Proper on First Action • 706.07(c) Final Rejection, Premature • 706.07(d) Final Rejection, Withdrawal of, Premature • 706.07(e) Withdrawal of Final Rejection, General • 706.07(f) Time for Reply to Final Rejection • 706.07(g) Transitional After-Final Practice • 706.07(h) Request for Continued Examination (RCE) Practice | ||
707 | Examiner’s Letter or Action | |
• 707.01 Primary Examiner Indicates Action for New Assistant • 707.02 Applications Up for Third Action and 5-Year Applications • 707.03 ‑ 707.04 [Reserved] • 707.05 Citation of References | ||
• 707.05(a) Copies of Cited References • 707.05(b) Citation of Related Art and Information by Applicants • 707.05(c) Order of Listing • 707.05(d) Reference Cited in Subsequent Actions • 707.05(e) Data Used in Citing References • 707.05(f) Non-Patent Documents Having a Lengthy Citation • 707.05(g) Incorrect Citation of References | ||
• 707.06 Citation of Decisions, Orders Memorandums, and Notices • 707.07 Completeness and Clarity of Examiner’s Action | ||
• 707.07(a) Complete Action on Formal Matters • 707.07(b) – 707.07(c) [Reserved] • 707.07(d) Language To Be Used in Rejecting Claims • 707.07(e) Note All Outstanding Requirements • 707.07(f) Answer All Material Traversed • 707.07(g) Piecemeal Examination • 707.07(h) Notify of Inaccuracies in Amendment • 707.07(i) Each Claim To Be Mentioned in Each Office Action • 707.07(j) State When Claims Are Allowable • 707.07(k) Numbering Paragraphs • 707.07(l) Comment on Examples | ||
• 707.08 Reviewing and Initialing by Assistant Examiner • 707.09 Signing by Primary or Other Authorized Examiner • 707.10 Entry • 707.11 Date • 707.12 Mailing • 707.13 Returned Office Action | ||
708 | Order of Examination | |
• 708.01 List of Special Cases • 708.02 Petition To Make Special | ||
• 708.02(a) Accelerated Examination • 708.02(b) Prioritized Examination • 708.02(c) Patent Prosecution Highway Program | ||
• 708.03 Examiner Tenders Resignation | ||
709 | Suspension of Action | |
• 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee | ||
710 | Period for Reply | |
• 710.01 Statutory Period | ||
• 710.01(a) Statutory Period, How Computed | ||
• 710.02 Shortened Statutory Period and Time Limit Actions Computed | ||
• 710.02(a) [Reserved] • 710.02(b) Shortened Statutory Period: Situations in Which Used • 710.02(c) Specified Time Limits: Situations in Which Used • 710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits • 710.02(e) Extension of Time | ||
• 710.03 [Reserved] • 710.04 Two Periods Running | ||
• 710.04(a) Copying Patent Claims | ||
• 710.05 Period Ending on Saturday, Sunday, or a Federal Holiday • 710.06 Situations When Reply Period Is Reset or Restarted | ||
711 | Abandonment of Patent Application | |
• 711.01 Express or Formal Abandonment • 711.02 Failure To Take Required Action During Statutory Period | ||
• 711.02(a) Insufficiency of Reply • 711.02(b) Special Situations Involving Abandonment • 711.02(c) Termination of Proceedings | ||
• 711.03 Reconsideration of Holding of Abandonment; Revival | ||
• 711.03(a) Holding Based on Insufficiency of Reply • 711.03(b) Holding Based on Failure To Reply Within Period • 711.03(c) Petitions Relating to Abandonment • 711.03(d) Examiner’s Statement on Petition To Set Aside Examiner’s Holding | ||
• 711.04 Public Access to Abandoned Applications | ||
• 711.04(a) Date of Abandonment • 711.04(b) Ordering of Patented and Abandoned Files • 711.04(c) Notifying Applicants of Abandonment | ||
• 711.05 Letter of Abandonment Received After Application Is Allowed • 711.06 Abstracts, Abbreviatures, and Defensive Publications | ||
• 711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References | ||
712 | [Reserved] | |
713 | Interviews | |
• 713.01 General Policy, How Conducted • 713.02 Interviews Prior to First Official Action • 713.03 Interview for “Sounding Out” Examiner Not Permitted • 713.04 Substance of Interview Must Be Made of Record • 713.05 Interviews Prohibited or Granted, Special Situations • 713.06 No Inter Partes Questions Discussed Ex Parte • 713.07 Exposure of Other Cases • 713.08 Demonstration, Exhibits, Models • 713.09 Interviews Between Final Rejection and Notice of Appeal • 713.10 Interview Preceding Filing Amendment Under 37 CFR 1.312 | ||
714 | Amendments, Applicant’s Action | |
• 714.01 Signatures to Amendments | ||
• 714.01(a) Unsigned or Improperly Signed Amendment • 714.01(b) [Reserved] • 714.01(c) Signed by Attorney or Agent Not of Record • 714.01(d) Amendment Signed by Applicant but Not by Attorney or Agent of Record • 714.01(e) Amendments Before First Office Action | ||
• 714.02 Must Be Fully Responsive • 714.03 Amendments Not Fully Responsive, Action To Be Taken | ||
• 714.03(a) Supplemental Amendment | ||
• 714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty • 714.05 Examiner Should Immediately Review • 714.06 [Reserved] • 714.07 Amendments Not in Permanent Ink • 714.08 – 714.09 [Reserved] • 714.10 Claims Added in Excess of Claims Previously Paid For • 714.11 Amendment Filed During Interference Proceedings • 714.12 Amendments and Other Replies After Final Rejection or Action • 714.13 Amendments and Other Replies After Final Rejection or Action, Procedure Followed • 714.14 Amendments After Allowance of All Claims • 714.15 Amendment Received in Technology Center After Mailing of Notice of Allowance • 714.16 Amendment After Notice of Allowance, 37 CFR 1.312 | ||
• 714.16(a) Amendments Under 37 CFR 1.312, Copied Patent Claims • 714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 • 714.16(c) Amendments Under 37 CFR 1.312, Additional Claims • 714.16(d) Amendments Under 37 CFR 1.312, Handling • 714.16(e) Amendments Under 37 CFR 1.312, Entry in Part | ||
• 714.17 Amendment Filed After the Period for Reply Has Expired • 714.18 Entry of Amendments • 714.19 List of Amendments, Entry Denied • 714.20 List of Amendments Entered in Part • 714.21 Amendments Inadvertently Entered, No Legal Effect • 714.22 – 714.24 [Reserved] • 714.25 Discourtesy of Applicant or Attorney | ||
715 | Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) | |
• 715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits | ||
• 715.01(a) Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor • 715.01(b) Reference and Application Have Common Assignee • 715.01(c) Reference Is Publication of Inventor’s Own Invention • 715.01(d) Activities Applied Against the Claims | ||
• 715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims • 715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question • 715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations • 715.05 U.S. Patent or Application Publication Claiming Same Invention • 715.06 [Reserved] • 715.07 Facts and Documentary Evidence | ||
• 715.07(a) Diligence • 715.07(b) Interference Testimony Sometimes Used • 715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country • 715.07(d) Disposition of Exhibits | ||
• 715.08 Decided by Primary Examiner • 715.09 Timely Presentation • 715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode | ||
716 | Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections | |
• 716.01 Generally Applicable Criteria | ||
• 716.01(a) Objective Evidence of Nonobviousness • 716.01(b) Nexus Requirement and Evidence of Nonobviousness • 716.01(c) Probative Value of Objective Evidence • 716.01(d) Weighing Objective Evidence | ||
• 716.02 Allegations of Unexpected Results | ||
• 716.02(a) Evidence Must Show Unexpected Results • 716.02(b) Burden on Applicant • 716.02(c) Weighing Evidence of Expected and Unexpected Results • 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention • 716.02(e) Comparison With Closest Prior Art • 716.02(f) Advantages Disclosed or Inherent • 716.02(g) [Reserved] | ||
• 716.03 Commercial Success | ||
• 716.03(a) Commercial Success Commensurate in Scope With Claimed Invention • 716.03(b) Commercial Success Derived From Claimed Invention | ||
• 716.04 Long-Felt Need and Failure of Others • 716.05 Skepticism of Experts • 716.06 Copying • 716.07 Inoperability of References • 716.08 Utility and Operability of Applicant’s Disclosure • 716.09 Sufficiency of Disclosure • 716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 | ||
717 | Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) | |
• 717.01 Affidavit or Declaration Under 37 CFR 1.130 | ||
• 717.01(a) Declarations or Affidavits under 37 CFR 1.130(a) – Attribution • 717.01(a)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) • 717.01(b) Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure • 717.01(b)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) • 717.01(b)(2) Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure • 717.01(c) Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations • 717.01(d) U.S. Patent or Application Publication Claiming Same Invention • 717.01(e) Passed Upon (or Decided by) by Primary Examiner • 717.01(f) Seasonable (or Timely) Presentation | ||
• 717.02 Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) | ||
• 717.02(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) • 717.02(b) Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked • 717.02(c) Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) • 717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) | ||
718 | Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) | |
719 | File Wrapper | |
• 719.01 Papers in Image File Wrapper • 719.02 Residence of Inventor Changed • 719.03 Classification During Examination • 719.04 Index of Claims • 719.05 Field of Search | ||
720 | Public Use Proceedings | |
721 – 723 | [Reserved] | |
724 | Trade Secret, Proprietary, and Protective Order Materials | |
• 724.01 Completeness of the Patent File Wrapper • 724.02 Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials • 724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 • 724.04 Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 | ||
• 724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122 • 724.04(b) Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) • 724.04(c) Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) | ||
• 724.05 Petition To Expunge Information or Copy of Papers in Application File • 724.06 Handling of Petitions To Expunge Information or Copy of Papers in Application File |