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) and interviews.

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.

Prosecution
This section provides an overview of the prosecution process and how the applicant should reply to an Office action. If the prosecution of an application becomes closed, the applicant may request a continued examination (RCE).

Summary of the prosecution process:
The applicant will send in his/her application and it will be assigned to an examiner knowledgeable in that subject area. The examiner will review the application and send the applicant a reply which is called the first Office Action. Usually, at least some claims will be rejected by the examiner in the first Office Action. In this case, the applicant will have a specified length of time to correct the problems and send the application back.

The examiner will then review the application again and can send the applicant a second Office Action ifproblems still remain. In this case the applicant must again respond within the allotted time period and send the revised application back to the examiner.

The examiner will then review the application a final time. The application will either be "allowed" to patent and a Notice of Allowance will be sent out or it will not be "allowed" and a final Office Action will be sent out. If a Final Office Action is sent out, the applicant may decide to appeal, make amendments that put the application in condition for allowance or request a continuing application (RCE) in order to continue with the patenting process.

In some examinations, the prosecution may be much simpler and either the Notice of Allowance or the Final Office Action will be sent out earlier (skipping the first and second Office Action) depending upon the state of the application.

Proper replies to a first or second Office action:

§1.111 Reply by applicant or patent owner to a nonfinal Office action.
(a) (1)If the Office action after the first examination (§ 1.104)is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(2)A second (or subsequent) supplemental reply will be entered unless disapproved by the Director. A second (or subsequent) supplemental reply maybe disapproved if the second (or subsequent) supplemental reply unduly interferes with an Office action being prepared in response to the previous reply. Factors that will be considered in disapproving a second (or subsequent) supplemental reply include:
(i)The state of preparation of an Office action responsive to the previous reply as of the date of receipt (§ 1.6)) of the second (or subsequent) supplemental reply by the Office; and
(ii)The nature of any changes to the specification or claims that would result from entry of the second (or subsequent) supplemental reply.
(b)ln order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to
advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
(c)In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

if a reply to an Office action is required, the applicant's submission must:
be a written reply
not include any new claims
distinctly point out supposed errors in the examiner's action
address each ground of the objection and rejection in the Office Action present arguments pointing out the specific distinctions believed to render the claims patentable over the references applied by the examiner

if an applicant sends in a reply to an Office Action and then wants to send in a second (or subsequent) reply, he is entitled to do so. However, the second reply may or may not be allowed based on the following factors:
whether the second (or subsequent) reply interferes with the Office action being prepared in response to the previous reply,
i.e., the state of preparation of the present Office action will be considered before allowing the subsequent reply (if the examiner is almost finished drafting the next Office action, they may not accept the second reply by the applicant
whether the nature of any changes to the specification would result from the entry of the applicant's second (or subsequent) reply

in an official action an examiner can do one of the following to a claim:
object it
reject it
allow it

Submission of information for examination:
This rule states the different types and sources of information available to the applicant or registered practitioner that may be sent to the PTO during the examination of the application.

§ 1.105 Requirements for information.
(a) (1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial
database known to any of the inventors that could be searched for a particular
aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any nonpatent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any nonpatent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any nonpatent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
(vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such items.
(2) Where an assignee has asserted its right to prosecute pursuant to § 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), (iii), and (vii) of this section may also be applied to such assignee.
(3) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant's factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(4) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office
action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.

Pursuant to 37 C.F.R. 1.105, it is facts and factual information that are sought and not opinions

an attorney of record may have to submit information in reply to an Office action, a reissue application or a reexamination proceeding; this information includes: information used in the inventive process, such as:
a copy of nonpatent literature,
a publication application, or
a patent used in the inventive process
the publication date of an undated document mentioned by the applicant which may qualify as a prior art publication
comments on a new decision by the Federal Circuit that is relevant to the examination of the application

who can submit information in reply to a request for information under 1.105?
a named inventor in application
an assignee of the entire interest in application
the attorney who prepared and is prosecuting the application
an examiner may make a requirement for information under 37 C.F.R. 1.105 where the evidence of record indicates reasonable necessity

Request for Continued Examination (RCE)

Filing a request for continued examination (RCE) provides a way for the applicant to continue with the prosecution of his or her application ifprosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. I.53(d).

§ 1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief under § 1.192 or a reply brief under § 1.193(b), or related papers, will not be considered a submission under this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
(2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before June 8, 1995;
(4) An application for a design patent; or
(5) A patent under reexamination

actions in which the prosecution will be considered closed and a request for continued examination (37 C.F.R. 1.114) may be proper include when:
an Office action is a final rejection
a Notice of Allowance has issued
an Office action under Ex Palle Quayle (this is a legal proceeding, the details of which are not discussed in the MPEP) has occurred
an application is under appeal by the Board of Appeals and Interferences

the procedure of 37 C.F.R. 1.114 (RCE) is not available in an application after:
it has been abandoned
the issue fee has been paid
the applicant has filed a Notice of Appeal to the Federal Circuit (unless the appeal is terminated and the application is still pending afterward)

the provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: design patent applications
provisional applications
applications filed before June 8, 1995
international applications before June 8, 1995
reexamination patents

an applicant may not obtain an examination of a different or nonelected invention (i.e., divisional) in a request for a continued examination under 37 C.F.R. 1.114

a request for continuing examination must include a:
fee
submission advancing the application that must be a bona fide attempt to advance the application if a reply to an Office action is outstanding
if it is not a bona fide attempt to provide a complete reply, the RCE will be treated as improper and it will not toll the period for reply to the final Office action

bona fide attempts at advancing the application include:
new arguments in support of patentability
new evidence in support of patentability
an IDS
an amendment of the drawings
an amendment of the claims
it does not include an appeal brief or a reply brief (or related papers)
however, it may consist of the arguments in a previously filed appeal brief or reply brief or a statement that incorporates by reference the argument in a previously filed appeal brief or reply brief

At a glance:
What happens when an RCE is filed at a particular time during prosecution?

an amendment filed to the Office in reply to a final rejection must comply with either the provisions of 37 C.F.R. 1.114 or the provisions of 37 C.F.R. 1.116(b) and (c)

in those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure set forth in 37 C.F.R. 1.114 is not available, and the applicant must file a ContinuationInPart application under 37 C.F.R. 1.53(b) containing such new matter

Details of 37 C.F.R. 1.114:
an applicant in a utility application originally filed on or after June 8, 1995 and before May 29, 2000 may obtain further examination either by timely filing a request for continued examination, a proper submission and a requisite fee, or by timely filing a continued prosecution application

an improper RCE will not toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application
the applicant may be able to send in other material for the application to be considered a proper RCE
if a reply to an Office action is due, a submission meeting the requests of 37 C.F.R. 1.111 (reply by applicant or patent owner to a nonfinal Office action) must be timely received to continue examination of an application

under the request for continuing examination procedure, a submission will be considered if the submission and the requisite fee is filed prior to the abandonment of the application RCE's may not be filed for design applications

if an applicant files a CPA when it is inappropriate (such as in the case of a utility or plant application filed after May 29, 2000), the Office will automatically treat the improper CPA as an RCE

if an applicant files a CPA when it is inappropriate and they don't want it treated as an RCE, they may file a petition under 1.53(e) to have the improper CPA converted to an application under 1.53(b)

Examples:
if an applicant with a utility application filed before May 29, 2000 (but on or after June 8, 1995) files a request for continuing examination under 37 C.F.R. 1.114, the application being prosecuted is not an application filed on or after May 29, 2000 and is not entitled to the patent term adjustment provisions

if an applicant in a utility application filed before May 29, 2000 files a CPA after May 29, 2000, the application being prosecuted (now a CPA) is an application filed on or after May 29, 2000 and is entitled to the patent term adjustment provision

At a glance:
Differences between RCE's and CPA's.

Traversing Rejections
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. 35 U.S.C. 101 deals with what is patentable. If the disclosed subject matter is not a process, manufacture, machine or composition of matte made by man, and/or it has no utility, it will be rejected under 35 US 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) 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) 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.

706 Rejection of claims
The requirements for patentability such as novelty, usefulness and unobviousness must be met before a claim is allowed. These criteria are outlined in 35 U.S.C. 101, 102 and 103 and will determine the basis of an examiner's rejection of the claims at any time during the prosecution of the application.

Reconsideration of claims:
Provides for the reconsideration and continuing examination of an application or a patent under reexamination after a reply by the applicant or patent owner.

§ 1.112 Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111 or § 1.945) to a nonfinal action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 1.191) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).

Rejections and objections:
The practical difference between a rejection and an objection is that a rejection involves the merits of the claim and is subject to review by the Board; while an objection, if persisted, may be reviewed only by way of a petition to the Commissioner

all responses must be complete and address each rejection and objection, an applicant cannot leave any for a later date

Objections:
if the form of the claim, specification, or drawing is improper, an objection is made

an applicant may contest an objection by: asking the examiner to reconsider it
filing a petition to the Commissioner

Rejections:
if the subject matter is said to be unpatentable it is rejected to

rejections are usually made due to issues with one of the following:
unpatentable subject matter or lack of utility (35 U.S.C. 101)
issues with novelty (35 U.S.C. 102)
issues with obviousness (35 U.S.C. 103)
lack of subject matter
issues with the written description, enablement and best mode (35 U.S.C. 112)

an applicant may contest a rejection by:
asking the examiner to reconsider it
appealing to the Board of Patent Appeals and Interferences

Prior Art Rejections (see Appendix I Prior Art Rejections)
All the information pertaining to Prior Art Rejections, which is based on 35 U.S.C. 102 and 35 U.S. C. 103 is put into a separate section entitled "Prior Art Rejections ". The reason for this is that these are two VERY important areas of Patent Law that will be heavily tested on the exam.

By breaking them down, you will be able to concentrate on them more thoroughly. In addition, the MPEP puts about half the material pertaining to these two statutes in Chapter 700 and the other half in Chapter 2100. All the material maintains the original MPEP subject headings, but has been combined together in an easier to understand manner.

Rejections/Objections not based on prior art
These include rejections under 35 U.S.C. 101 and 112, along with objections due to duplicate claims or new matter and rejections under res judicata.

A rejection under 35 U.S.C. 101 for lack of utility should not be based on the grounds that the invention is frivolous, fraudulent or against public policy.

MPEP 706.03 706.03(w)
Rejections under 35 U.S.C. 101 (see Chapter 2100)
There are times when an application is new, useful and patentable over the prior art, but the application is still rejected. The subject matter of the invention must fall within the boundaries of 35 U.S.C. 101, which states that inventions will only be granted for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof".

35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

What is it?
patentable subject matter under 35 U.S.C. 101 consists of:
a process or method
a machine (defined as a collection of elements)
an article of manufacture
a composition of matter

rejections based on ineligible subject matter (35 U.S.C. 101) may include:
those things that are naturally occurring in nature and are substantially unaltered, for example:
a shrimp with its head and digestive tract removed is not a manufacture
printed matter
a scientific principle which is divorced from any tangible structure
mathematical discoveries
however, the methods of using such principles and devices embodying the
principles can be patentable

an invention may also be rejected on the grounds of a lack of utility under 35 U.S.C. 101
this includes the more specific grounds of inoperativeness

Atomic Energy Act of 1954:
no patent shall be granted for an invention that is only useful in the utilization of nuclear material or atomic energy in an atomic weapon

Rejections under 35 U.S.C. 112 (see Chapter 2100) oObjections due to duplicate claims

an applicant may restate their invention in a reasonable number of ways
however, an objection under 37 C.F.R. 1.75 may be made when the claims cover basically the same thing

Objections due to new matter

no new matter may be added into an application once it has been filed

an objection under 35 U.S.C. 132 will be made when new matter is added in through an amendment
if subject matter capable of illustration is originally claimed, but not shown in the drawing, the claim will not be rejected, but the applicant will be required to add it to the drawing

Rejections under Res judicata
If an applicant, files an application that is rejected, and then the applicant attempts to essentially refile the same application later as a continuing or another alternate application without making any changes to the invention or claims, the PTO will automatically reject it under res judicata. Basically, if it didn 't work out the first time, sending it back with virtually no adjustments isn 't going to work the second.

res judicata applies when:
the parties are identical in both cases
the same cause of action is involved
the prior judgment was rendered by a court of competent jurisdiction
there was a final judgment on the merits

res judicata:
may constitute a proper ground for rejection
should be applied only when the earlier decision was a decision of the Board or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decisions

Final Rejections

706.07 Final rejection
The final rejection is used by an examiner to notify an applicant that his or her application has been examined and was deemed inappropriate in one way or another. Abandonment will follow unless the applicant takes the appropriate action.

§1.113 Final rejection or action.
(a)On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicants, or for exparte reexaminations filed under §1.510,patent owner 's reply is limited to appeal in the case of rejection of any claim (§ 1.191),or to amendment as specified in § 1..114 or § 1.116.Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181).Reply to a final rejection or action must comply with § 1..114 or paragraph (c)of this section. For final actions in an inter parses reexamination filed under § 1..913, see § 1.953..
(b)In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof. (c)Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.

a second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to 35 U.S.C. 102(e), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of an IDS submitted under 37 C.F.R. 1.97(c) with the fee under 37 C.F.R. 1.17(p).

a first Office action in a continuing or substitute application may not be made final if it contains a new ground of rejection necessitated by the amendments to 35 U.S.C. 102(e)

the examiner may send a final rejection on the second or any subsequent examination, in some cases even earlier on in the prosecution
if an applicant does nothing in response to a final rejection, the application will be abandoned

rules about final rejections:
the examiner can never add new ground of rejection
if the new application is a continuing application, the claims may be rejected in the first Office action if the claims of the new application are the same as the earlier application
a reply to the final rejection is due 3 months from its mailing date

in order to avoid abandonment due to a final rejection:
a Notice of Appeal may be filed
a response must be filed which places the application in condition of allowance
amendments canceling claims or complying with the requirements as
suggested by the examiner are always permissible after a final rejection
file an RCE under 37 C.F.R. 1.114
a bona fide attempt at advancing examination must be included
it is possible that the examiner may convert the action to a nonfinal one on his or her own (although unlikely, it does happen)

before June 8, 1995 it was permissible to file a transitional first response to a final rejection upon the payment of a fee, but this is no longer allowed

after being given a final rejection, the applicant:
will have no right to interview, amend (other than what is suggested by the examiner), or submit affidavits
in order to end the rejection deadline, the applicant will not only have to file a response, but he or she will have to get the application allowed
will receive an advisory action following the response

Final rejection in first Office action:
claims of a new application may be finally rejected as early as the first Office action when:
the final Office action rejection is a first Office action in a continuing or substitute application
all the claims are drawn to the same invention claimed in the earlier application, and the claims would have been properly and finally rejected in the next Office action if they had been entered in the earlier application

a final rejection in the first Office action is not appropriate when:
the application claims a new ground of rejection necessary by amendments to 102(e)
the application is a CIP (since these contain new matter)

Final rejection in second Office action:
the second or subsequent action will be final, unless the examiner introduces a new ground of rejection that is neither:
necessary due to the applicant's amending of claims
based on an IDS
however, if it is based on an IDS or due to the amending of claims, the next Office action may be made final if no new ground of rejection is present

Petition to Make Special

708 Order of examination
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 for the applicant to receive just the first Office action.

This section discusses the petition to make special, a petition used to speed up the application process. You should expect to see one question related to this sort of petition on the exam. The PTO usually asks a question relating to whether or not the fee is due along with the petition to make special.

Petition to make special
By filing a petition to make an application special, the examination process will be considerably sped up.

a "special" application is considered by the patent office as a priority, and it is examined before the usual first come first serve queue

a petition to make an application special may be filed anytime during the application process, even when the application is pending before the Board of Appeals
a petition to make special must be filed by an applicant, assignee or an
attorney/agent registered to practice before the Office

What types of applications can be "made special"?
applications can be made special when they:
are the result of a petition
are reissues, especially if they were involved in a long litigation
interfere with other applications which were previously found to be allowable
are ready for allowance
are in a condition for a final rejection
have been pending more than 5 years
are involved in reexamination proceedings
are of particular importance

Criteria involved in the granting of a petition to make special:
The following circumstances may be taken into consideration by the PTO for determining
whether or not to grant a petition to make special.

Prospective manufacture:
when the facilities and capital for manufacture are ready to begin if the patent is granted
when the prospective manufacturer will not manufacture, or increase present manufacture unless it is certain that the patent will be granted
when the prospective manufacturer is obligated to manufacture the invention in quantity immediately upon allowance

Infringement:
if there is an infringing device or product on the market or method in use the claims must be unquestionably infringed
prospective infringement is not acceptable, actual infringement must exist

Health:
when an applicant's health will prevent him or her from assisting in the prosecution of the application

Age:
if an applicant is 65 years of age or more

Accelerated examination for new applications:
to qualify, an applicant must submit a petition to make special
all the claims are directed to a single invention
the applicant must submit that a preexamination search was made and include:
one copy of each reference
a detailed discussion of the reference

Invention is of high importance to mankind:
it directly impacts environmental quality
contributes to the discovery, utilization or development of energy
such as the development of fossil fuels, hydrogen fuel technology, nuclear, solar energy, etc.
involves superconductivity materials
relates to HIV/AIDS or cancer
inventions involving recombinant DNA
any inventions involved in countering terrorism
applications relating to biotechnology which are filed by small entities

Small entities with biotechnology related inventions:
small entities with inventions related to the field of biotechnology must state that:
small entity status is established
the subject of the patent application is a major asset
the development of the technology will be significantly impaired if examination of the patent application is delayed

Fee requirements for a petition to make special:
There are times when a fee must be filed along with the petition to make special in addition to any of the criteria listed above. The petition itself must be in writing and identify the application by application number and filing date.

the following categories involved in making an application special require the payment of a fee:
prospective manufacture
infringement (actual)
safer DNA
HIV/AIDS and cancer
superconductivity
countering terrorism
biotech applications filed by small entity
anything else asked for

the following categories involved in making an application special do not require a fee with the petition to make special:
illness/health of applicant
age of applicant
environmental contributions
enhancement of energy resources

all of the categories require a statement by the applicant, assignee or registered practitioner stating the type of research the patent application involves

Further evidence:
a petition to make special may require:
a birth certificate (if shown by age)
a doctor's certificate of bad health (if shown by health)

Examples:
filing a petition to make special on the ground of the applicant's health should be accompanied by a doctor's certificate showing that the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course
remember, these types of petitions for making special do not require a fee

an application may be made special by filing a petition that includes evidence showing that the applicant is 65 years of age or more, such as a birth certificate or even just an applicant's statement
no fee is required with petitions of this sort

an applicant may petition to make special if the invention relates to improving the safety of research in the field for recombinant DNA:
this requires a petition fee and a statement linking the invention to this area of research

a petition cannot be based on prospective infringement, but may be made special for actual infringement
therefore, if another company is practicing the invention that is pending in the application's claims, a petition to make special may be available, but remember, it will require a fee

Suspension of Action

709 Suspension of action
If an applicant is waiting and waiting 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 around for the examiner to make the next move.

§1.103 Suspension of action by the Office.
(a)Suspension for cause .On request of the applicant, the Office may grant a suspension of action
by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
(1)A showing of good and sufficient cause for suspension of action; and
(2)The fee set forth in § 1.17((h), unless such cause is the fault of the Office.
(b)Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53((d). On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d), specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(c)Limited suspension of action after a request for continued application (RCE)under 0.114 .0n request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for continued examination under § 1.114, specify the period of suspension, and include the processing fee set forth in §1.17(i).
(d)Deferral of examination .On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1..17(i).A request for deferral of examination under this paragraph will not be granted unless:
(1)The application is an original utility or plant application filed under § 1.53((b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
(2)The applicant has not filed a nonpublication request under §1.213(a), or has filed a request under § 1.213((b) to rescind a previously filed nonpublication request; (3)The application is in condition for publication as provided in § 1.211(c); and (4)The Office has not issued either an Office action under 35 U.S.C.132 or a notice of allowance under 35 U.S.C.151.
(e)Notice of suspension on initiative of the Office .The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
(f)Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
(1)The application is owned by the United States;
(2)Publication of the invention may be detrimental to the public safety or defense; and (3)The appropriate department or agency requests such suspension.
(g)Statutory invention registration .The Office will suspend action by the Office for the entire pendency of an application if the Office has accepted a request to publish a statutory invention registration in the application, except for purposes relating to patent interference proceedings under Subpart E of this part.

a request to suspend under 37 C.F.R. 1.103(a):
requires a fee
requires a showing of good and sufficient cause for the suspension involves a six month maximum suspension

a request to suspend under 37 C.F.R. 1.103(b) or (c):
must be filed along with a CPA or an RCE (remember, a CPA may only be filed for a design application
involves a 3 month maximum suspension
it must include a fee

an action cannot be suspended in an application that contains an outstanding Office action or a request awaiting a reply by the applicant
the request will be denied if it is for the applicant to submit an IDS

it is possible to suspend an application if the inventorship is wrong and the registered practitioner needs time to investigate it

the suspension of action will last until the suspension period expires or the applicant submits a request for the termination of the action

the Office may grant the requested suspension if, after a final rejection, a request for a continued examination complying with 37 C.F.R. 1.114 is filed along with a request to suspend the action by the Office for a period that does not exceed 3 months to provide time to submit an IDS and the proper fees associated with it

the Office will not suspend an action in an application when a reply by the applicant is outstanding:
35 U.S.C. 133 requires that the applicant must prosecute the application within 6 months of the Office action (or shorter if stated) to avoid the abandonment of application

if the applicant files a request for a continuing examination, but does not also provide any submission (in reply to the prior Office action) within the period for reply to the prior Office action, the application is abandoned

At a glance:
Details of suspension of action.

Request under C.F.R. 37 1.103(a):
Requirements: Petition with showing of good and sufficient cause
Fee: Yes
Maximum length: 6 months

Request under C.F.R. 37 1.103(b):
Requirements: Required at the time of filing a CPA
Fee: Yes
Maximum length: 3 months

Request under C.F.R. 37 1.103(c):
Requirements: Required at the time of filing a RCE
Fee: Yes
Maximum length: 3 months

Extensions of Time

710 Period for reply
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 or when it is stated that an extension may not be made. 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.

35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Director that such delay was unavoidable.

Shortened statutory periods (SSP):
When an examiner sends out an Office action, he or she sets a time limit. They set what is called a shortened statutory period (SSP). It may be possible for the applicant to extend the time limit out (depending on what it was originally set for). For example, an Office action with an SSP of 2 months, may be extended for up to 4 months, bringing the grand total to 6 months. SSP 's may not be extended for any longer than six months. Missing one of these deadlines may result in abandonment.

Due date particulars:
the application will be abandoned if no reply is filed within the set time
all responses to Official actions must be filed within six months of the mailing date
6 months is the maximum statutory time limit for responses to an Office action, this time limit may not be extended

an examiner may set a shortened statutory time period (generally 1 month) during which an applicant must supply the omission to the previous reply to avoid abandonment
extensions of time are available unless the action setting the shortened statutory period states otherwise

due dates are calculated from the mailing date of the PTO office, which is stamped on the action
the date of receipt by the attorney is irrelevant

if a due date falls on a Sat, Sun, or a Federal holiday, the due date will be the next working day even though this may be more than 6 months after the mailing date

if there is no such date in the month when the filing is due (like for shorter months), then the due date is the last day of the said month

the period of pendency of a provisional application will be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday, if the day that is twelve months after the filing date of the provisional application falls on Saturday, Sunday, or a Federal holiday within the District of Columbia

"one month" always means not less than 30 days, therefore, if a restriction is mailed by the PTO on February 17, 1998 which sets a onemonth time limit, a response on March 19, 1998 is timely
it is still timely because February has less than 30 days in it

if an applicant receives an advisory action after a final rejection from the PTO that is late (due to a mailing mistake), then the due date to the advisory action may be moved back one month

Specifics about SSP's:
an SSP may not be less than 30 days

1 month SSP's are only used for restriction requirements, or when a reply by an applicant for a nonfinal Office action is bona fide, but includes an inadvertent omission

2 month SSP's are only used for the following:
the winning party in an interference to reply to an unanswered Office action
a reply to an Ex parte Quayle Office action
a reply to any Office action of the merits

Reply for specific time limit:
Replies that involve a specific time limit may be extendable for up to 5 months. Missing a reply period will result in the loss of that particular matter, but not usually abandonment.

there are times when the failure to reply will not result in abandonment, examples include:
a petition for access to an application
false IDS's
allowed application that must be restricted
the 2 month period for filing an appeal brief
however, if no appeal brief is filed, the appeal will be dismissed, and if no claims are allowed, the application will be abandoned
the 1 month period for filing a new appeal brief to correct an old one
a reply to a Notice to File Missing Parts

At a glance:

SSP vs. reply for specific time limit.

Shortened statutory period
Failure to reply results in abandonment.
May not be set for less than 1 month.
A reply just 1 day late will result in
abandonment.
These are subject to a 6 month maximum.

Reply for specific time limit
Failure to reply results in the loss of rights
to that particular matter.
May be set for less than 1 month.
A delay by just 1 or 2 days may be excused
by the examiner.
These are extendable by up to 5 months.

General rules for extensions of time:

§ 1.136 Extensions of time.
(a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to § 1.193(b);
(iii) The reply is a request for an oral hearing submitted pursuant to § 1.194(b);
(iv) The reply is to a decision by the Board of Patent Appeals and Interferences pursuant to § 1.196, § 1.197 or § 1.304; or
(v) The application is involved in an interference declared pursuant to § 1.611.
(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of this paragraph are available. See § 1.136(b) for extensions of time relating to proceedings pursuant to §§ 1.193(b), 1.194, 1.196 or 1.197; § 1.304 for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.550(c) for extensions of time in ex parte reexamination proceedings; § 1.956 for extensions of time in inter partes reexamination proceedings; and § 1.645 for extensions of time in interference proceedings.
(3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
(b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not affect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. See § 1.304 for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.645 for extensions of time in interference proceedings; § 1.550(c) for extensions of time in ex parte reexamination proceedings; and § 1.956 for extensions of time in inter panes reexamination proceedings.
(c) If an applicant is notified in a "Notice of Allowability" that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the "Notice of Allowability" or in an Office action having a mail date on or after the mail date of the "Notice of Allowability":
(1) The period for submitting an oath or declaration in compliance with § 1.63; and
(2) The period for submitting formal drawings set under § 1.85(c).

due dates cannot be extended for the following circumstances:
the submission of an IDS
any due date set by statute as of the six month absolute deadline the payment of the issue fee
the deadline for responding to a Notice of Omitted Items
the two month deadline to obtain a refund for a fee paid as a large entity

the petition for a onemonth extension of time will be construed as a petition requiring the appropriate period of extension

extensions of time can normally be obtained retroactively

an extension of time will not be effected in a prior application by filing the petition for an extension of time in a continuing application

the fee must always be paid when requesting an extension of time

a petition for an extension of time will provide an applicant with an extension
of time from the original due date (not from the date the petition was filed)
an applicant's statement that any fees necessary to add to an amendment may be charged to an account will be treated as a constructive petition for an extension of time (the PTO will infer this to mean they can take out whatever fees necessary to allow the amendment)
the petition does not need to be on a separate sheet of paper

extension fees can be reduced by 50% for small entities if the proper documentation is filed

papers may be filed in person, by fax, or by mail until midnight on the date due

extensions of time under 37 CFR 1.136(a) or (b) are not available to extend the time period set in a Notice of Allowability (or in Office action having a mail date after the mail date of the Notice of Allowability), to submit an oath or declaration in compliance with 37 CFR 1.63, to submit formal drawings, or to make a deposit of biological material

Types of due date extensions:
37 C.F.R. 1.136 provides for two distinct procedures for extending the period for action or reply in particular situations.

Automatic extensions under 37 C.F.R. 1.136(a):
when an applicant must reply within a nonstatutory or shortened statutory time, the
applicant may extend the reply period by filing for an automatic extension
may extend the reply up to the maximum period set by statute or 5 months after the time period set for reply
a petition under 37 C.F.R. 1.136(a) plus a fee

these must be filed within the extended period for reply, but not necessarily within the original SSP for reply

the fee + petition will extend the period for reply for up to 5 months, depending on the amount of the fee paid

these may not be used:
where prohibited by statute
where prohibited by one of the items listed in the rule
where the applicant has been notified otherwise in the Office action

extensions for time are possible in reply to most Office actions by an examiner, the following are the exceptions:
reexamination proceedings
interference proceedings
Office actions stating that an extension of time is not possible
situations where the applicant is given a specified time limit to take certain actions
replies in response to a decision by the Board
replies to a reply brief such as a reply to an examiner's answer in an Appeal to the Board of Patent Appeals and Interferences

new drawings can automatically be extended

Extensions for cause under 37 C.F.R. 1.136(b):
these are used when the applicant is unable to reply within the specified time period and 1.136(a) is unavailable

the applicant will not receive these types of extensions unless he or she has sufficient cause to do so and the request must include a reasonable time extension
the reply must state a reason yielding support for a sufficient cause
this must be filed prior to the end of the set period for reply

the period to complete a bona fide, but incomplete reply to a nonfinal action can be extended with an automatic extension of time

extensions of time are frequently necessary to make an application copending with its continuation or division to maintain the effective filing date
an extension of time for a continuing application will not effect the prior application
the applicant would have to file an extension of time for both if necessary for two applications

Examples:
if an Office action sets a 3 month period for a reply and the applicant replies in the 4th month and includes only the petition (without the fee) for a 1 month extension of time, the reply is not acceptable until the fee is filed
if the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely

Reply after final rejection:
an amendment canceling all claims is nonresponsive to the nonfinal rejection

if an applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection
in such a case, any extension fee would then be calculated from the end of the. 3 month period

if an applicant initially replies within 2 months from date of the mailing of any final rejection setting a 3 month shortened statutory period for reply and Office does not mail an advisory action until after the end of the 3 month period, the period to reply to determine the extension fee will be the date on which the Office mails the advisory action advising the applicant of the status of the application

After payment of Issue fee:
an extension of time after the payment of issue fee is not possible:
there is a statutory (nonextendable) time period for the payment of the issue fee for an application
the time period is always 3 months from the date of the Notice of Allowance

Notice to file missing parts:
a notice to require the filing of missing parts before the completion of an application does not constitute an Official action:
therefore there are no statutory limits to the extension of time for a reply however, the maximum this can be extended is a total of seven months (two of which are given initially and five that may be petitioned for)
an automatic extension may not be for more than 5 months

Notice to file missing parts (usually has a 2 month period for reply)
an applicant can get an extension for these with a petition plus fee a 37 C.F.R. 1.136(a)
Notice to File Missing Parts of an application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133

Appeal briefs:
normally there is a two month deadline on appeal related responses
filing an appeal brief is not statutory
therefore, a five month extension can be obtained

Resetting reply period to an Office action:
Basically, in instances where the examiner made a mistake in the Office action and if the applicant brings this to the PTO's attention, the PTO will "reset" the due date of the reply to begin on a later date. That way the applicant doesn't lose any time for the PTO's error.

situations when the reply period may be reset:
where a citation of a reference is incorrect
where the Office action contains a defect and it is called to the attention of the Office within 1 month of the mailing date of the action

the PTO will grant a petition to restart the previously set period for reply to run from the date of receipt of the Office action at the correspondence address when the following criteria are met:
the petition is filed within 2 weeks of the date of receipt for the PTO action at the correspondence address and it was in fact later than intended
a substantial portion of the set reply period had elapsed on the date of receipt the petition includes evidence and a statement showing the date of receipt of the PTO action at the correspondence address, explaining how the evidence being presented establishes the date of receipt of the PTO action at the correspondence address

if the error is brought to the attention within 1 month of the mail date of the Office action, the PTO will restart the previously set period for the reply to run from the date the error is corrected

if the error is brought to the attention after 1 month (but before the period for reply expires), the PTO will set a new period for reply which will be equal to the time that is remaining in the reply period
if will at least be 1 month from the date the error is corrected

if the error is called to attention after the period for reply, they will not restart or reset anything, the applicant will have to apply for an extension

Delays in mailing:
late receipt:
the PTO will grant a petition asking to restart the period for reply to begin from the date of receipt of the Office action at the correspondence address when the petition is filed within 2 weeks of the date of receipt of the PTO action at the correspondence address
the petition must include:
evidence showing the address
a copy of the envelope with the date of receipt
a statement setting forth the date of receipt of the PTO action at the correspondence address indicating that the PTO action was received in the postmarked envelope that establishes the date of receipt

late postmark:
the PTO will grant a petition asking to restart the period for reply to run from the postmark date shown on an Office action when:
the petition is filed within 2 weeks of the date of receipt of the Office action at the correspondence address
the reply period was for payment of the Issue Fee, or the reply period set was 1 month or 30 days, and the petition includes:
evidence showing the address
a copy of the envelope with the date of receipt
a statement setting forth the date of receipt of the PTO action at the correspondence address indicating that the PTO action was received in the postmarked envelope that establishes the date of receipt

Abandonment

711 Abandonment of patent application
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 can happen when the applicant does not take the appropriate action within the allotted time.

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. 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.

§ 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the nonfinal Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.

§ 1.138 Express abandonment.
(a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
(b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34(a) when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
(c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this section including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicant should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.

abandonment results in the loss of all patent rights, it occurs when either:
the application is intentionally abandoned by the applicant or attorney or agent termed either express of formal abandonment
the applicant does not take the appropriate action within a specified time and the PTO abandons it

types of abandonment include:
express or formal abandonment:
an intentional abandonment of an application precluding a finding of unavoidable or unintentional delay
express abandonment is effective even if it is signed by an attorney or agent of record
abandonment for failure to reply within the proper time period:
the application is abandoned due to an oversight by the applicant (which causes the application to become abandoned)
for example, the applicant fails to reply to an Office action within the fixed statutory period
an applicant may attempt to find a sufficient cause for unavoidable or unintentional delay in order to lift the abandonment of their application

an allowed application will not be abandoned unless:
there was a mistake on the part of the Office
there was an illegality in the application
it was unpatentable
there is an interference
it is abandoned in order to permit the consideration of an IDS in a continuing application

an allowed application may only be abandoned by filing a form for express abandonment and a petition to withdraw from issue under 37 C.F.R. 1.313 and the fee
if a letter of express abandonment is being submitted in an allowed application, the express abandonment should be accompanied by a petition to withdraw from issue under 37 C.F.R 1.313 and the fee set forth in 37 C.F.R. 1.17(h)
the express abandonment may not be recognized by the Office unless it is actually received by appropriate officials in time to act on it before the date of issue

Revival of an abandoned application
Where there is a disagreement about the sufficiency of the reply or dates and the applicant can argue that the application is not abandoned, he or she may file a petition under 37 C.F.R. 1.181(a). Where there is no dispute as to whether an application is abandoned, a petition under 37 C.F.R. 1.137 is necessary to revive the abandoned application.
an intentionally abandoned application cannot be revived
one that is expressly or formally abandoned by the applicant or registered practitioner

§1.137 Revival of abandoned application, terminated reexamination proceeding, or lapsed patent.
(a)Unavoidable. If the delay in reply by applicant or patent owner was unavoidable, a petition may be filed pursuant to this paragraph to revive an abandoned application, a reexamination proceeding terminated under §§ 1..550(d)or 1.957(b)or (c),or a lapsed patent. A grantable petition pursuant to this paragraph must be accompanied by:
(1)The reply required to the outstanding Office action or notice, unless previously filed; (2)The petition fee as set forth in § 1.17(1);
(3)A showing to the satisfaction of the Director that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unavoidable; and
(4)Any terminal disclaimer (and fee as set forth in § 1.20(d))required pursuant to paragraph (d) of this section.
(b) Unintentional .If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this paragraph to revive an abandoned application, a reexamination proceeding terminated under §§ 1..550(d)or 1.957(b)or (c),or a lapsed patent. A grantable petition pursuant to this paragraph must be accompanied by:
(1)The reply required to the outstanding Office action or notice, unless previously filed; (2)The petition fee as set forth in § 1.17((m);
(3)A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional; and
(4)Any terminal disclaimer (and fee as set forth in §1.20(d)) required pursuant to paragraph (d) of this section.
(c)Reply .In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, and abandoned for failure to prosecute, the required reply may also be met by the filing of a request for continued examination in compliance with § 1..114.In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application, abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. (d)Terminal disclaimer.
(1)Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8,1995,must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
(i)The period of abandonment of the application; or
(ii)The period extending beyond twenty years from the date on which the application for thepatent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s)under 35 U.S.C.120,121,or 365(c), from the date on which the earliest such application was filed.
(2)Any terminal disclaimer pursuant to paragraph (d)(1)of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8,1995,or a continuing design application, that contains a specific reference under 35 U.S.C.120,121,or 365(c)to the application for which revival is sought.
(3)The provisions of paragraph (d)(1)of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995,to lapsed patents, or to reexamination proceedings.
(e)Request for reconsideration .Any request for reconsideration or review of a decision refusing to revive an abandoned application, a terminated reexamination proceeding, or lapsed patent upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
(1)The provisions of §1.136 for an abandoned application or lapsed patent;
(2)The provisions of § 1.550((c) for a terminated exparte reexamination proceeding filed under §1.510; or
(3)The provisions of § 1.956 for a terminated inter partes reexamination proceeding filed under § 1.913.
(f )Abandonment for failure to notify the Office of a foreign filing :A nonprovisional application abandoned pursuant to 35 U.S.C.122(b)(2)(B)(iii)for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived only pursuant to paragraph (b)of this section. The reply requirement of paragraph (c)of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application. (g)Provisional applications: A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3)and §1.7(b),a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.

the revival of an abandoned application:
may only occur when the delay in reply was unavoidable or unintentional leading to the abandonment of the application
may require a terminal disclaimer

37 C.F.R. 1.137 may revive an abandoned application for the failure to: timely reply to an Office action required in a provisional application
timely prosecute in a nonprovisional application
timely pay the Issue Fee for a design, utility or plant application
timely pay any outstanding balance of an Issue Fee

Unavoidable delay under 37 C.F.R. 1.137(a):
to prove unavoidable delay, the following evidence is required:
a listing of the procedures that should have potentially avoided the error resulting in the delay
the training and experience of the people responsible for the error
copies of applicable docketing records to show that the error was the cause of the delay
a proper notification of a change in correspondence address (if any) must be shown to prove unavoidable delay

the petition for unavoidable delay must be submitted with: evidence showing that the delay was unavoidable
the required reply
the required fee
any terminal disclaimer that is deemed necessary

Unintentional delay under 37 C.F.R. 1.137(b):
the applicant must attempt to prove that his or her delay was unintentional

the petition for unintentional delay must be submitted with:
evidence showing that the delay was unintentional
the required reply
the required fee
any terminal disclaimer that is deemed necessary

the following does not fall under the meaning of unintentional delay:
the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action
the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent
the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent
the applicant remains interested in eventually obtaining a patent, but simply seeks to defer the patent fees and the patent prosecution expenses

Compare and contrast of unavoidable delay/unintentional delay: if a 37 C.F.R. 1.137(a) or (b) petition is not filed within 1 year of the abandonment, the Office will require:
information on when the applicant first realized the abandonment took place
a showing on how the delay in discovering the abandonment occurred

a petition under 37 C.F.R. 1.137(a) or (b) must be accompanied by a terminal disclaimer for:
all design applications
all nonprovisional utility or plant applications filed before June 8, 1995

the basic differences between unavoidable and unintentional revival practice are:
if unintentional, the fee is large; if unavoidable, the fee is small if unintentional, a statement is required, if unavoidable, proof is required

unavoidable and unintentional revivals:
both require the proposed response and a fee
neither have a time limit, but either one may require a terminal disclaimer

Terminal disclaimers:

a terminal disclaimer is required for a utility or plant application filed on or after June 8, 1995, but before May 29, 2000, where the application became abandoned during appeal, interference, or while under a secrecy order

terminal disclaimers occur when part of the patent term must be dedicated to the public
for example:
if an applicant unintentionally abandoned his or her application and one year later filed a petition under 37 C.F.R. 1.137(b) which was accepted, the PTO may decide to subtract the time the application was abandoned from the patent term

terminal disclaimers under 37 C.F.R. 1.137(a) or (b) are used in:
design applications
nonprovisional, utility or plant applications filed before June 8, 1995
utility or plant applications filed on or after June 8, 1995, but before May 29, 2000 where the application became abandoned during appeal, interference or while under secrecy order (these are eligible for Uruguay Round Agreements Act URAA)
utility or plant applications filed on or after May 29, 2000 do not require a terminal disclaimer since the period of abandoned is now reduced from the Patent Term Adjustment provisions (see Chapter 2700)

Request for reconsideration:
a request for the reconsideration or review of a decision refusing to revive an abandoned application or lapsed patent must be filed within 2 months of the decision refusing to revive the application
it may be extended under 37 C.F.R. 1.137 unless stated otherwise

Termination of proceedings:
proceedings are terminated when the:
issue fee is not paid
application loses an interference regarding all the claims it contained proceedings are terminated in an application after a decision by the Board proceedings are terminated after a decision by the court

a second application is considered to be copending with an earlier application if it is filed before:
the patenting of the earlier application
the abandonment of the earlier application
the termination of the proceeding on the earlier application

Summary of petitions relating to abandonment:
1. a petition to withdraw the holding of abandonment must be accompanied by a terminal disclaimer
it dedicates to the public a terminal part of the term of any patent equal to the period between the mail date of the notice of abandonment and the filing date of such petition to withdraw the holding of abandonment

2. a petition to withdraw holding of abandonment based on failure to receive an Office action:
may include allegations that an Office action was never received
must show that the abandonment was either unintentional or unavoidable

3. a petition to revive an abandoned application, or accept the late payment of an issue fee involves:
37 C.F.R. 1.137
these include situations where the patent was abandoned or the patent had lapsed for the failure to timely:
reply to an Office requirement in a provisional application
prosecute in a nonprovisional application
pay the issue fee for a design application
pay the issue fee for a utility or plant application
pay any outstanding balance of the issue fee for lapsed patents

treating a reply under 37 C.F.R. 1.111 or 1.113 that places an inordinate burden on the office includes:
applications that have been abandoned for a long period of time
applications with multiple or conflicting replies to the last Office action
if the replies under 37 C.F.R. 1.137(a)(1) or (b)(1) are questionable

Specific cases:
if during the prosecution of the application, the applicant never received a Notice of
Allowance so the issue fee was never paid, the application will be abandoned
what can the applicant do, once he or she realizes the abandonment?
file a timely petition to withdrawal the holding of abandonment accompanied by a statement that the Notice of Allowance and issue fee due was not received
and that a search of the file jacket and docket records indicates that Notice of Allowance and Issue Fee due was not received also include with the petition a copy of the docket record where the nonrecording Office communication would have been entered had it been received and docketed

abandonment for failure to file an appeal brief requires:
an appeal brief and fee
the filing of a continuing application

Interviews

713 Interviews
Interviews consist of personal appearances, telephone conversations, video conferences or even email between an examiner and an applicant or the applicant's power of attorney.

When can interviews be held?
the applicant has a right to an interview:
after the filing of the first Office action
after a final rejection at the discretion of the examiner
after an appeal at the discretion of the Board

to receive an interview after the final rejection, the intended purpose and content of the interview must be presented briefly in writing

usually no interview will be permitted after:
a brief on an appeal has been filed
an application has been allowed to issue

an interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application

when initiating a request for an interview, the applicant should submit an Applicant Initiating Interview Request form to allow the examiner to prepare for the exam
the fact that an applicant does not submit this form is not, by itself, grounds for
the examiner to deny a request for an interview

an applicant may not request to hold an interview before the first Official action:
however, interviews are allowed in CPA's, all continuations and substitute applications prior to the first Office action

interviews will not be granted regarding only procedural matters or typographical errors in an Office action

one interview may be allowed after a final rejection

Where are interviews held?
interviews must be conducted on the Office premises, such as in the examiner's office, conference rooms, or the video conference center

permitted interviews will not be allowed off the Office premises without the authority of the Commissioner

typically, interviews:
may take place in the examiners' rooms
must be arranged for in advance
may occur as a video conference
Interview records:
it is the responsibility of the applicant or agent to make the substance of an interview of record in the application file unless the examiner initiated the interview

an interview summary form should include:
an application number
the name of the applicant
the name of the examiner
the date of the interview
the type of interview
the name of all the participants
an indication of whether the exhibit or demonstration was shown
an identification of the claims that were discussed
an identification of the specific prior art that was discussed
whether an agreement was reached
the signature of the examiner
general results or outcome of the interview

Who may attend an interview?
no interviews will be held with unregistered or suspended attorneys or agents unless they happen to be the applicant
a patent practitioner cannot authorize another practitioner to conduct interviews without the consent of the client after full disclosure
a practitioner can never authorize a nonpractitioner to conduct interviews

interviews:
are not granted to people who do not have the proper authority
are not granted to people who do not have a copy of the application
may be granted to people when it is known that they are the local representatives of the attorney in the application

an examiner may not discuss inter partes questions ex parte with any of the interested parties

a registered patent agent may participate in the interview if he possesses a copy of the application file and states he is authorized to represent the applicant

a mere power to inspect is insufficient authority for an examiner to grant an interview involving the merits of an application

Amendments

714 Amendments
Once an applicant receives an Office Action (whether it be a first, second or even a final Office Action), he or she may need to file amendments with their reply. There are several tedious rules regarding amendments, especially when amending the claims. Most importantly, new matter should never be added to an application, so the applicant must word the amendments so as not to include any new material.

When applicant may amend:
the circumstances where an applicant may amend include:
before or after the first examination and action
after the second or final examination
after the final rejection, if the amendment meets the standards of 37 C.F.R. 1.116
when required by examiner

Signatures:
amendments must be signed by:
the attorney or agent of record
the registered attorney or agent acting under 37 C.F.R. 1.34(a)
the assignee of record for the entire interest or all the assignees if there is partial interest
all of the applicants
unsigned amendments will be returned and the applicant will have one month to sign the amendment correctly

Preliminary amendments:
A preliminary amendment is one that is made on or after the time offiling, but before a first Office action is issued

§§ 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215 (a)).
(1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
(2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
(b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
(2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
(i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and
(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53 (b);
(ii) The filing date of a continued prosecution application under § 1.53 (d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
(4) The time periods specified in paragraph (b)(3) of this section are not extendable .

a preliminary amendment may be filed along with the filing of an application

preliminary amendments:
1. an amendment canceling claims in order to reduce the excess claims fees should be filed before the expiration of the time period set forth in the notice that requires the excess claims fees;
2. for applications filed on or after September 21, 2004, a preliminary amendment that is "present on the filing date of the application is part of the original disclosure of the application;
3. for applications filed prior to September 21, 2004, preliminary amendments will not receive status as part of the original disclosure in a nonprovisional application accompanied by a signed oath or declaration unless it is referred to in the oath or declaration filed:
a. once an oath or declaration is submitted in an application filed as a nonprovisional application, the original disclosure is defined and cannot be altered merely by the filing of a subsequent oath or declaration referring to different papers;
b. any request to treat the preliminary amendment as part of the original disclosure is by way of petition under 37 C.F.R. 1.182.
are filed with an application, but are limited to a cancellation of the claims
are typically filed to eliminate informal claims and reduce filing fees

where a nonprovisional application filed without a signed oath or declaration is accompanied by an amendment, that amendment is considered a part of the original disclosure
the subsequently filed oath or declaration must refer to both the application and the amendment

preliminary amendments will not receive status as part of the original disclosure in a nonprovisional application accompanied by signed oath or declaration unless it is referred to in the oath or declaration filed:
once an oath or declaration is submitted in an application filed as a nonprovisional application, the original disclosure is defined and cannot be altered merely by the filing of a subsequent oath or declaration referring to different papers
any request to treat the preliminary amendment as part of the original disclosure is by way of petition under 37 C.F.R. 1.182

the factors that will be considered in disapproving a preliminary amendment include:
the state or preparation of a first Office action as of the date of the amendment's receipt (37 C.F.R. 1.6, not including 37 C.F.R. 1.8 Certificate of Mailing dates see Chapter 500) of the preliminary amendment by the Office and the nature of any changes to the specification or claims that would result from the entry of the preliminary amendment

amendments filed before the first office action will not receive status as part of the original disclosure if the amendment involves adding new material to the claims

since an RCE is not a new application, an amendment filed before the first Office action after the filing of the RCE is not a preliminary amendment

Amendments after a Notice of Allowance:
1. if an amendment is filed prior to the mailing of a Notice of Allowance, but is received by the examiner after the mailing of the Notice of Allowance, the amendment may not be approved for entry.

Amendments after final action or appeal:
Once the final rejection has been entered, the applicant no longer has the right to unrestricted further prosecution. An amendment that will place the application in condition for allowance or in better form for an appeal may be entered at the discretion of the examiner.

§ 1.116 Amendments after final action or appeal.
(a) An amendment after final action or appeal must comply with § 1.114 or this section.
(b) After a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913, amendments may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action. Amendments presenting rejected claims in better form for consideration on appeal may be admitted. The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or patent under reexamination from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination from termination. No amendment can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided for in paragraph (d) of this section.
(c) If amendments touching the merits of the application or patent under reexamination are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.
(d) No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in §§ 1.198 and 1.981, or to carry into effect a recommendation under § 1.196 or § 1.977.

amendments filed after the final rejection may be kept in a file, but these are not considered a matter of right

the reply requirements of 37 C.F.R. 1.116(b) require that the reply must tie up loose ends by amendment

some replies are not allowed according to 37 C.F.R. 1.116(b), these are:
replies presenting the argument in a more defensible light that adds additional claims
replies amending claims into process claims
replies amending all individual claims, accompanied by a declaration from the inventor

Amendments after a Notice of Allowance:
After all claims in an application have been allowed, the prosecution of the application is closed. The PTO doesn 't like to see amendments after the Notice of Allowance has been mailed, but will accept them in some instances.

amendments are not entered as a matter of right; any amendments considered necessary by the applicant should be completed before the Notice of Allowance is issued

amendments must be filed on or before the date the Issue fee is paid
no amendments should be filed after the date the Issue fee has been paid
if the applicant plans to send an amendment after the Notice of Allowance has already been issued, in addition to the amendment itself, the applicant must also establish:
why the amendment(s) were not presented earlier
why the amendment(s) is needed
why no new search or consideration is required
why any amendment or new claims are patentable

amendments filed after the Notice of Allowance may be allowed for the following reasons:
an amendment to the specification
a change in the drawings
an amendment to the claims
a change in inventorship
a submission of prior art

where an amendment to the specification or claims is filed after a Notice of Allowance has been mailed, the following is true:
even though prepared by a practitioner and mailed without a Certificate of mailing and not by express mail all prior to allowance, the amendment reaches the Office only after the Notice of Allowance has been mailed
such an amendment has the status of one filed after the mailing of the Notice of Allowance
a supplemental oath or declaration in a nonprovisional application other than a reissue application is not treated as an amendment of the specification or claims
the amendment may be refused entry because an additional search is required
the amendment may be refused entry because more than a cursory review of the record is necessary
the amendment may be refused entry because the amendment would involve materially added work on the part of the examiner (e.g., checking excessive editorial changes in the specification or claims)

Rules for making amendments:
1. it is possible for an examiner to correct an amendment that does not comply with 37 C.F.R. 1.121 with an examiner's amendment, otherwise:
a. if an amendment fails to comply with 37 C.F.R. 1.121, the applicant will be notified by a Notice of NonCompliant Amendment;
b. the applicant's reply to the Notice needs to consist of a corrected version of only that portion of the amendment that previously failed to comply with 1.121;
c. it is not necessary to resubmit the entire amended document.

§§ 1.121 Manner of making amendments in applications.
(a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(b) Specification. Amendments to the specification, other than the claims, computer listings (§ 1.96)
and sequence listings (§ 1.825), must be made by adding, deleting or replacing a paragraph, by
replacing a section, or by a substitute specification, in the manner specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to the specification,
including amendment to a section heading or the title of the invention which are considered
for amendment purposes to bean amendment of a paragraph, must be made by submitting:
(i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived;
(iii) The full text of any added paragraphs without any underlining; and
(iv) The text of a paragraph to be deleted must not be presented with strikethrough or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
(2) Amendment by replacement section. If the sections of the specification contain section
headings as provided in § 1.77(b), § 1.154(b), or § 1.163(c), amendments to the specification,
other than the claims, may be made by submitting:
(i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and;
(ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived.
(3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with §§ 1.125(b) and (c).
(4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
(5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes
(e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing,
including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of "canceled" or "not entered" may be aggregated into one statement (e.g., Claims 15 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of "currently amended," and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived. Only claims having the status of "currently amended," or "withdrawn" if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as "withdrawncurrently amended."
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of "original," "withdrawn" or "previously presented" will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of "withdrawn" or "previously presented." Any claim added by amendment must be indicated with the status of "new" and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of "canceled" or "not entered."
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as "canceled" will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may
be reinstated only by adding the claim as a "new" claim with a new claim number.
(d) Drawings: One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled "Replacement Sheet". Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as "New Sheet". All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
(1) A markedup copy of any amended drawing figure, including annotations indicating the changes made, may be included. The markedup copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change to the drawings.
(2) A markedup copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
(e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(f) No new matter. No amendment may introduce new matter into the disclosure of an application.
(g) Exception for examiner's amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner's amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner's amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.
(h) Amendment sections. Each section of an amendment document (e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.
(i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
(k) Amendments in provisional applications. Amendments in provisional applications are not usually made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered

if an amendment fails to comply with 37 C.F.R. 1.121, the applicant will be notified by a Notice of NonCompliant Amendment
the applicant's reply to the Notice only needs to consist of a corrected version of only that portion of the amendment that previously failed to comply with 1.121
it is not necessary to resubmit the entire amended document

the following amendments are usually denied entry:
those presenting unpatentable claims
amendments to claims requiring new searches
amendments not presented within the time limit
unsigned or improperly signed amendments
claims introducing new matter
those with objectionable remarks
those not in permanent ink
those canceling all the claims of the elected invention and presenting claims to a nonelected invention

amendments will not be partially entered into the application; it is either all or none

Revised amendment format:
each section of an amendment (i.e. Specification Amendments, Claim Amendments, Drawing Amendments and Remarks) must begin on a separate sheet

Specification Amendments:
amendments to the specification, other than the claims, computer listings and sequence listings must be made by adding, deleting, replacing a paragraph, replacing a section or by substitute specification
the amendment must unambiguously identify the paragraph to be modified (may use a paragraph numbering system or page or line number)
completely new paragraphs must be presented in claim form without any markings (i.e. underlining)
replacement paragraphs must include markings to show the changes (a separate, clean version of any replacement paragraph is not required
underline new text and strikethrough deleted text (may use double brackets placed before and after the deleted characters to show the deletion of 5 or fewer consecutive characters [[eroor]]

Claim Amendments:
when an applicant adds a new claim that is in excess of the number of claims that were previously paid for, the applicant must pay the required excess claim fees before the examiner will consider the new claim.
an amendment to the claims must include a complete listing of all the claims in the application
after each claim number, the status must be indicated in parenthesis, and the text of each claim under examination as well as all withdrawn claims (with markings to show current changes) must be presented
claim status should be indicated following the claim number by one of the following; (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), (not entered)
canceled and not entered claims must be listed by only the claim number and status, without presenting the text of the claims
changes in any amended claim must be shown by underlining (for added material) or by strikethrough (for deleted material)
deletion of 5 or fewer characters may be shown by double brackets [[eroor]]
the text of pending claims not currently being amended (including withdrawn claims), must be presented in clean version (no markings)
a claim being canceled must be indicated as `canceled', the text of the claim must not be presented
any claim being added by amendment must be indicated as `new' and the text must not be underlined
all claims in each amendment paper must be presented in ascending numerical order
consecutive canceled or withdrawn claims may be aggregated into one statement (i.e. Claims 15 (canceled))

New matter: in amended cases, subject matter not disclosed in the original application may not be added

new matter includes:
matter that is wholly unsupported by the original disclosure
adding specific percentages or compounds when the original disclosure was broader
the omission of a step from a method
new material is rejected on the ground that it recites elements that are not supported in the original disclosure under 35 U.S.C. 112, first paragraph (which explains rules on the specification)
the only time that new matter may be added to a patent application is through the filing of a ContinuationInPart application

Drawing Amendments:

§ 1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c), any patent application publication will not include drawings filed after the application has been placed on the files for examination. 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 (§ 1.135(c)). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination
(b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not comply with § 1.84 at the time an application is allowed, the Office may notify the applicant and set a three month period of time from the mail date of the notice of allowability within which the applicant must file a corrected or formal drawing in compliance with § 1.84 to avoid abandonment. This time period is not extendable under § 1.136(a) or § 1.136(b).
§ 1.121 Manner of making amendments in application.
(d) Drawings. Application drawings are amended in the following manner: Any change to the application drawings must be submitted on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval by the examiner, new drawings in compliance with § 1.84 including the changes must be filed.

corrected drawings suitable for reproduction are required before an application may be allowed

a slight defect in a drawing not involving a change in structure may be penciled in on the drawing by the examiner
these include very tiny corrections like:
a misspelling of legends
changing an arrow sign where it is obvious
changing Roman numerals to Arabic numerals to agree with the specification

amendments for a drawing:
the applicant must provide replacement figures which incorporate the proposed changes complying
the replacement sheet must be an attachment to the amendment document and must be identified in the top margin as "Replacement Sheet" with the drawing requirements in 37 C.F.R. 1.84
include an explanation of the changes in the remarks section of the amendment a replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even though only one figure may be amended

unless the 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 objection to the drawings in abeyance will not be considered a bona fide attempt to advance the publication to final action

if a drawing does not comply at the time an application is allowed, the Office may notify the applicant and set a 3 month period of time from the mail date of the notice of allowability within which the applicant must file a formal drawing in compliance in order to avoid the abandonment
this time period is not extendable under 37 C.F.R. 1.136(a) or 1.136(b)

normally, drawing changes must be approved by the examiner before the application will be allowed
the examiner must give written approval for any alterations or corrections before the drawing can be corrected

any proposal by an applicant for an amendment to the drawing in order to cure defects must be embodied in a separate letter to the examiner

if subject matter capable of illustration is originally claimed and is not shown in the drawing, the claim will not be rejected, but the applicant will be required to add it to the drawing

Swearing Back

715 Swearing back of reference affidavit or declaration under 37 C.F.R. 1.131
Swearing back, (also called an affidavit or declaration under 37 C.F.R. 1.131) can be used to overcome rejections where the prior art used to establish the rejection was not by "another ", but was filed by the same inventor. Basically, even though a prior art publication may have been printed before the filing date of the application, if it was invented by the applicant and was printed after his or her actual date of the invention, the rejection may be overcome. Swearing back is commonly used to overcome rejections based on 35 U.S.C. 102(a) or (e) or 35 U.S.C. 103.

An example of when to use it:
Ted invents something on August 1, 2001. He gives his idea to his brother who publishes it in a magazine article on September 1, 2001. Ted decides to apply for a patent on June 3, 2002. His claims are rejected due to the magazine article. In order to overcome the rejection, Ted can file an affidavit under 37 C.F.R. 1.131 (swearing back that he invented the object prior to publication in the magazine article).

§ 1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or date that it is effective as a reference under 35 U.S.C. 102(e). Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in § 41.203(a) of this title, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained .

Introduction:
unless the rejection qualifies as a statutory bar, a rejection based on a publication may be overcome by a showing that it was published by the applicant or on his or her behalf
the applicant must show that he or she was the one in which the published subject matter was derived from

the purpose of swearing back is to overcome a prior art rejection by proving that the invention of the subject matter occured prior to the effective date of the reference used in the rejection

swearing back:
occurs when the applicant claims that the invention date was actually before the date of reference
must be done on a claim by claim basis as different claims may also have different filing dates

in order to overcome a rejection because of prior art, an applicant may: swear back
amend the claim
argue the patentability of the claim

Who can file an affidavit under 37 C.F.R. 1.131?
all the inventors who invented the claimed subject matter
also, less than all the named inventors may file for 37 C.F.R. 1.131 if it is shown that less than all named inventors invented the subject matter of the claim or claims under rejection (remember, an examiner may reject a claim on a claim by claim basis

an assignee may file/sign an affidavit to swear back only when it is not possible to have the affidavit signed by the inventor

When to use it:
37 C.F.R. 1.131 was designed to permit an applicant a means to overcome a rejection under 35 U.S.C. 102(a) and (e) based on patents and publications which are not statutory bars, but which have publication dates, or in the case of U.S. patents, effective filing dates, prior to the effective filing date of the application, but subsequent to the applicant's actual date of invention (i.e., not published more than 1 year prior to the applications filing date.

swearing back must occur:
prior to a final rejection
before an appeal in an application that hasn't had a final rejection
after the final rejection

the reference used to establish the prior invention must be by the same inventor, it cannot be by "another"

swearing back may be used for:
a rejection under 35 U.S.C. 102(a) based on a journal article that describes the invention as claimed
a rejection under 35 U.S.C. 102(e) based on a patent that discloses, but does not claim the same patentable invention
a reference with a patent issue date less than one year prior to the applicant's effective filing date, showing but not claiming the same patentable invention
situations where the date of the foreign patent or publication is less than 1 year prior to the applicant's effective filing date

When not to use it:
swearing back cannot be used to overcome:
a rejection under 35 U.S.C. 102(b)
a statutory double patenting rejection
situations where the reference publication date is more than 1 year back of the applicant's effective filing date
situations where a reference U.S. patent claims the same patentable invention
situations where the reference is a foreign patent for the same invention
where the applicant clearly admitted that the subject matter relied on in the reference is prior art
where the reference is the disclosure of a prior U.S. patent to the same party, but is not copending
where subject matter relied upon is prior art under 35 U.S.C. 102(f) a rejection where the subject matter relied on is prior art under 35 U.S.C. 102(g):
this is because subject matter which is available under 35 U.S.C. 102(g)
by definition must have been made before the applicant made his or her
invention
a reference under 35 U.S.C. 102(a) and (e), by contrast, only establishes a presumption that their subject matter was made before the application's invention date, it is this presumption which may be rebutted by evidence submitted under 37 C.F.R. 1.131
If the prior art reference under 35 U.S.C. 102(a) is a U.S. patent or U.S. patent application publication, the reference may not be antedated if it claims the same patentable invention.

Specifics about swearing back:

Dates:
the important date to overcome is the effective U.S. filing date, not the foreign priority date

printed publications are effective as of the publication date, not the date of receipt by the publisher

acts relied upon to establish the date prior to the reference must have been carried out in this country or in a NAFTA or WTO member country

Requirements of the affidavit:
evidence that may be required to swear back includes:
attached sketches
attached blueprints
photographs
models
supporting statements by witnesses
testimony used in interferences
disclosure documents
attached reproduction of notebook entries

objective evidence can be used (these are also called secondary considerations), this includes:
unexpected results
commercial success
longfelt, but unsolved needs
failure of others
skepticism of experts

Diligence:
Diligence refers to the time between the inventor 's conception of the invention and his or her reduction to practice. If an inventor thought up a fabulous idea, wrote about it in a publication and then just sat on the idea for several years before physically making the invention, he or she was not diligent and may lose the rights to patent the invention.

the lapse of time between the completion or reduction to practice of an invention and the filing of an application is not relevant to an affidavit or declaration under 37 C.F.R. 1.131

the applicant must show evidence of facts establishing diligence

after conception has clearly been established, diligence must be considered prior to the establishment of the effective date

swearing back can be used for 102(a) and 102(e) by showing of:
the date of actual reduction to practice
conception and diligence from the critical date to the filing date

swearing back must show facts sufficient enough to show:
a reduction to practice of the invention prior to the effective date of the reference
conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to a subsequent reduction to practice
conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to the filing date of the application

Examples of situations:
How can an applicant overcome a rejection based on a reference if the conception of an applicant's complex invention occurred prior to the date of reference, but was reduced to practice after the reference date?

the applicant must clearly establish conception of invention prior to the effective date of the reference and diligence from just prior to the effective date of the reference to the actual reduction to practice
the presence of a lapse of time between the completion or reduction to practice of an invention and the filing of an application thereon is not relevant to an affidavit or declaration under 37 C.F.R. 1.131(b)
the applicant must show evidence of facts to establish diligence
after conception is clearly established, diligence must be considered prior to the effective date
the applicant must establish a date of completion of the invention in a NAFTA or WTO member country, as well as in the U.S. if applicable
not all countries are members of NAFTA or WTO, and prior invention in a foreign country cannot be shown without regard for when the reduction to practice occurred
actual reduction to practice generally, but not always, requires a showing that the apparatus actually existed and worked
there are some devices so simple that a mere construction of them is all that is necessary to constitute reduction to practice inventions such as these would only require photographs and articles and/or a technical report

What can be considered prior art?

Absolute bar:
an absolute bar will bar the application from becoming a patent, it is classified as absolute when the reference has a date more than one year prior to the filing date

a promotional article constituting an offer to sell, published in a foreign country and made less than a year prior to the application filing date is not an absolute bar

if an inventor wrote an article describing his or her invention less than one year prior to the filing date, the reference is not an absolute bar and he or she may overcome the anticipation rejection by swearing back

Prior art:
there is no requirement that a publication must be made with an inventor's knowledge or permission in order for the reference to qualify as prima facie
a description in a printed publication, even in foreign country can count as prima facie evidence
there is no requirement that a publication must describe something that has actually been reduced to practice before the publication can act as a prior art reference

an inventor can rely on activities in a WTO and NAFTA country to establish a date of invention prior to publication in an article or in establishing priority

37 C.F.R. 1.132

716 Affidavits or declarations traversing rejections, 37 C.F.R. 1.132
An affidavit or declaration under 37 C.F.R. 1.132 is used for overcoming a rejection or objection of a claim in an application or patent under reexamination. There is some overlap between 1.132 and 1.131, sometimes either one may be used.

§ 1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.

all affidavits or declarations presented that do not fall within any other specific rule should be submitted as an affidavit or declaration under 37 C.F.R. 1.132

submittals under 37 C.F.R. 1.132 will be considered timely if filed:
prior to a final rejection
before an appeal in an application that doesn't have a final rejection
after final rejection, but submitted with a first reply after final rejection for purposes of overcoming a new ground of rejection or request made in the final rejection

secondary considerations under 37 C.F.R. 1.132 include facts submitted to rebut a prima facie showing of obviousness

Consideration of evidence:
affidavits or declarations containing objective evidence of criticality, unexpected results, commercial success or a long felt, but unsolved need, failure of others, skepticism of experts, is always considered by the examiner

the applicant may use 37 C.F.R. 1.132 to rebut a prima facie case of obviousness by an examiner
37 C.F.R. 1.132 should contain objective evidence arising out of a secondary consideration related to the claimed invention

the burden always shifts to the applicant to come forward with arguments and or evidence to rebut the prima facie case

objective evidence of nonobviousness must be commensurate in scope with the claims for which the evidence is offered to support
the scope of objective evidence of nonobviousness is independent of the scope of the claim for which evidence is offered to support

argument of counsel alone cannot take the place of evidence in the record once an examiner has advanced a reasonable basis for questioning the disclosure

an argument by a practitioner that the prior art reference is inoperative is insufficient to show that the claimed subject matter is unobvious in the absence of objective evidence demonstrating the inoperability of the prior art reference

nonobviousness of a claimed invention may be demonstrated by:
producing evidence of the absence of a property the claimed invention would be expected to possess based on the teachings of the prior art
expected beneficial results are evidence of obviousness for the claimed invention
unexpected results must be commensurate in scope with the claimed invention
evidence not showing that the unexpected properties of a claimed invention have a significance equal to or greater than the expected properties may be insufficient to rebut the evidence of obviousness

there is no requirement that a publication must describe something that has actually been reduced to practice before the publication can act as a prior art reference

there is no requirement under 35 U.S.C. 102 that a publication must be made with an inventor's knowledge or permission before it constitutes as prior art

prior art can include subject matter described in a printed publication in a foreign country before the filing date of the application

37 C.F.R. 1.130

718 Affidavit or declaration to disqualify commonly owned patent as prior art

37 C.F.R. 1.130
An affidavit or declaration filed under 37 C.F.R. 1.130 may be used to disqualify a patent
or a previous application as prior art. It can only be used for an application or patent under reexamination and the prior art in question must be owned by the same party.

§ 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b), and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104.
(b) When an application or a patent under reexamination claims an invention which is not patentably distinct from an invention claimed in a commonly owned patent with the same or a different inventive entity, a double patenting rejection will be made in the application or a patent under reexamination. A judicially created double patenting rejection may be obviated by filing a terminal disclaimer in accordance with § 1.321(c).

37 C. F. R 1.130(a) may be used when:
the rejection in an application or patent under reexamination is a rejection under 35 U.S.C. 103 in view or a U.S. patent application or publication which is not prior art under 35 U.S.C. 102(b)
the inventions defined by the claims in the application or patent under reexamination and by the claims in the U.S. patent are not identical, but are not patentably distinct
the inventions must be owned by the same party

37 C.F.R. 1.130(b) states that:
a double patenting rejection will be made when the claims in the reexamination and the prior art in question are not patentably distinct form one another and the same invention is invented
this may be dealt with by adjusting the patent term

720 Public use proceeding
Any member of the public other than the applicant may file a petition under 37 C.F.R. 1.292 for a public use proceeding. This petition is used for showing that the claimed invention was in fact believed to be in the public use or on sale more than 1 year before the filing of the application.

the petition:
must be signed by a registered practitioner
must be served to the individual with the pending, questionable patent it must be submitted before a Notice of Allowance was mailed must ID application by serial number and filing date
must include the required fee

the petition should state that a statutory bar exists
this should be supported by an affidavit or declaration

there is no review from the final decision of the examiner in the public use proceeding

ex parte:
the petition is not entitled to inspect the pending application

inter parte:
the pending application will be a reissue application
therefore, the petitioner may view the pending application