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Chapter 700: Examination of Applications

Summary

Rankings

Frequency

Training

Video Digest

Mind Map

Objectives

Key Terms

Summary:

What happens after the application is filed? 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.

The patent bar exam places major emphasis on this section. The examination of applications is one of the most thoroughly tested sections on the exam. The details of RCE’s should be paid close attention to. The sections on abandonment and extensions will be referenced several times. Making amendments to the application is also very important and the process of swearing back, rule 37 C.F.R. 1.131, will be tested.

Chapter Ranking Chart:

Importance Ranking:

5-Stars

Volume of Material:

3-Stars

Complexity:

4-Stars

Overall Score:

4.0

MPEP Section Frequency:

Key

15 Questions

Patent Training Workshop Videos:

Request for Information
Office Actions
Final Rejection
Petition to Make Special
Accelerated Examination
Prioritized Examination
Extensions of Time
Abandonment
Interviews
Amendments

Video Digest:

Digest 1
Digest 2
Digest 3
Digest 4

Mindmap:

Click on image to see full-size view or download the mindmap PDF.
Download the PDF outline.

Objectives

Learn about the requirements for presenting information to the PTO.
Know the intricacies of requests for continued examinations (RCE’s).
Become familiar with patentability rejections (35 U.S.C. 101).
Learn each section of 35 U.S.C. 102 and how to overcome 35 U.S.C. 102
rejections.
Know the details of 35 U.S.C. 103 and how to overcome rejections based on
the obviousness of the claimed subject matter.
Study abandonment and the differences between unavoidable and
unintentional delay.
Learn about “petitions to make special” and “swearing back”.
Know how to make proper amendments to an application.
Know the following laws and rules:

37 C.F.R. 1.85	Corrections to drawings.
37 C.F.R. 1.103	Suspension of action by the Office.
37 C.F.R. 1.105	Requirements for information.
37 C.F.R. 1.111	Reply by applicant or patent owner to a non-final Office action.
37 C.F.R. 1.113	Final rejection or action.
37 C.F.R. 1.114	Request for continued examination.
37 C.F.R. 1.115	Preliminary amendments.
37 C.F.R. 1.116	Amendments after final action or appeal.
37 C.F.R. 1.121	Manner of making amendments in application.
37 C.F.R. 1.130	Affidavit or declaration to disqualify commonly owned patent or published application as prior art.
37 C.F.R. 1.131	Affidavit or declaration of prior invention.
37 C.F.R. 1.136	Extensions of time.
37 C.F.R. 1.137	Revival of abandoned application, terminated reexamination proceeding, or lapsed patent.
37 C.F.R. 1.702	Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, on or after May 29, 2000).

37 C.F.R. 1.703	Period of adjustment of patent term due to examination delay.
35 U.S.C. 101	Inventions patentable.
35 U.S.C. 102	Conditions for patentability; novelty and loss of right to patent.
35 U.S.C. 103	Conditions for patentability; non-obvious subject matter.
35 U.S.C. 104	Invention made abroad.
35 U.S.C. 133	Time for prosecuting application.

Key Terms