Chapter 700: Examination of Applications
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.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
Includes references to four statutes. 35 U.S.C. 131 essentially states that an application will be examined for entitlement to a patent. 35 U.S.C. 101 briefly covers patentable inventions and 35 U.S.C 100 and pre-AIA 35 U.S.C. 100 both cover definitions for commonly used terms.
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date.
This section covers the requirements for information including what information may be required, when the requirement may be made, time periods for reply, and more.
Where an application, properly assigned to one Technology Center (TC), is found to contain one or more claims, per se, classifiable in one or more other TCs, which claims are not divisible inter se or from the claims which govern classification of the application in the first TC, the application may be referred to the other TC(s) concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.
This section describes some of the various reasons why an examiner may reject the claims of an application and how the applicant can overcome these rejections.
The requirements for patentability include patent eligible, useful, novel, nonobvious, enabled, and clearly described. These criteria are outlined in 35 U.S.C. 101, 102, 103, and 112 and will determine the basis of an examiner’s rejection of the claims at any time during the prosecution of the application.
35 U.S.C. 101 deals with what is patentable. If the disclosed subject matter is not a process, manufacture, machine or composition of matter made by man, and/or it has no utility, it will be rejected under 35 U.S.C. 101.
35 U.S.C. 102 discusses the conditions for patentability; novelty and the loss of the right to patent. The 102 laws (see Appendix I – Prior Art Rejections and Appendix II: 35 U.S.C. 102) state that the inventor listed on an application will be granted a patent unless he or she was not the first to invent the subject matter.
35 U.S.C. 103 (see Appendix I – Prior Art Rejections and Appendix III: 35 U.S.C. 103) relates to the obviousness of the subject matter. If the invention is found to be obvious in relation to the prior art, the applicant will not be granted a patent.
35 U.S.C. 112 (see Appendix V: 35 U.S.C. 112) relates to the description of the subject matter. If the patent application does not meet the standards outlined in 35 U.S.C. 112, it will be rejected.
This section includes a brief discussion on the uniform application of the patentability standard, defects in form or omission of a limitation, patentable subject matter disclosed but not claimed, and reconsideration of claims after reply by applicant.
Nonprovisional applications that are accepted as complete applications by the USPTO will be assigned for examination. There are many different departments handling different classes of inventions (i.e., biotech, chemical, mechanical, etc.). Applications will be further classified to an individual examiner who will examine the application on a first come, first serve basis. Certain departments are so backed up that it may take well over a year (and in many instances much longer) for the applicant to receive just the first Office action. This section discusses petitions to make special, the accelerated examination program, and prioritized examination, all of which can be used to speed up the examination of an application.
This section discusses the suspension of an action. If an applicant waits a prolonged time for the examiner to send out an Office action, he or she may choose to file a request for a suspension of action. If it is granted, the request will cause a reduction in the patent term adjustment if any has accumulated. The reduction will be equal to the number of days beginning on the filing date for the request of the suspension of action and ending on the date of the termination of the suspension.
It would be easy to confuse a suspension of action with an extension of reply (which will be discussed next). To distinguish, a suspension of action applies to an impending Office action by the examiner while an extension of time applies to an action by the applicant.
If the examiner is taking an unduly long period of time to get back to the applicant, the applicant can file a suspension of action to gain back the time he or she lost on the patent term while waiting for the examiner to make the next move.
If an applicant needs more time to file an Office Action, he or she can in some cases be granted an extension of time for the reply. A petition for an extension of time will have to be properly filed.
There are circumstances where a petition for an extension of time will be denied by the Office, such as if the application is involved in a reexamination or an interference proceeding. If the applicant fails to file a reply by midnight on the date the period for reply was due, the application will be regarded as abandoned and the applicant may lose all of his or her rights to an invention. This section covers details on the period for reply.
If an application becomes abandoned it is essentially closed for further prosecution. This can happen for a number of reasons; the applicant or patent attorney may formally abandon the application or the applicant may accidentally abandon the application. This occurs when the applicant does not take the appropriate action within the allotted timeframe.
The Office has strict policies for petitions relating to the revival of an abandoned application. In order to revive an application that was abandoned due to a lack of response by the applicant, a petition may be sent in only when the delay in reply was unavoidable or unintentional. This section covers the revival of an abandoned application, unavoidable delay under 37 C.F.R. 1.137(a), and unintentional delay under 37 C.F.R. 1.137(b). The section includes a comparison and contrast of unavoidable delay/unintentional delay.
In some cases, revival of an abandoned application may require a terminal disclaimer. A terminal disclaimer will result in a shorter patent term than that of a regular patent term.
This section also covers request for reconsideration, a summary of petitions relating to abandonment, and specific cases.
An interview should be granted when the nature of the case is such that the interview serves to develop or clarify outstanding issues in an application.
This section covers amendments and the applicant's action including when an applicant may amend and the manner of making amendments under 37 C.F.R. 1.121. There are many rules governing amendments that are discussed in 37 C.F.R. 1.121 and this section. These consist of amendments to the specification and amendments to the claims including status identifiers, markings to show the changes, claim text, claim numbering, and acceptable alternative status identifiers. In addition, amendments in reexamination proceedings and reissue applications are also discussed.
This section covers trade secret law and other proprietary or protective order material for use in the examination of applications.
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