Patent Bar MPEP Q & A Podcast Lisa Parmley, USPTO Patent Practitioner #51006

Question:

When will a provisional application be given a filing date?

Answer:

A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office.

Chapter Details:

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

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

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

601.01(b)   Provisional Applications Filed Under 35 U.S.C. 111(b)

This section covers details on the filing of provisional applications under 35 U.S.C. 111(b). For instance, in addition to the required components of a provisional application, a cover sheet identifying the application as a provisional application must also be filed.

Question:

List at least 3 special cases (those which are advanced out of turn for examination).

Answer:

The following is a list of special cases (those which are advanced out of turn for examination):



* (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Director of the USPTO so orders.

* (B) Applications made special as a result of a petition to make special, a request for prioritized examination, or a request for participation in a PPH program.

* (C) Applications for reissues, particularly those involved in stayed litigation.

* (D) Applications remanded by an appellate tribunal for further action.

* (E) Applications, once taken up for action by an examiner according to their effective filing date, should be treated as special by an examiner, art unitor Technology Center to which they may subsequently be transferred; exemplary situations include new cases transferred as the result of a telephone election and cases transferred as the result of a timely reply to any official action.

* (F) Applications which appear to interfere with other applications previously considered and found to be allowable, or which will be placed in interference with an unexpired patent or patents.

* (G) Applications ready for allowance, or ready for allowance except as to formal matters.

* (H) Applications which are in condition for final rejection.

* (I) Applications pending more than 5 years, including those which, by relation to a prior United States application, have an effective pendency of more than 5 years.

* (J) Reexamination proceedings.



Chapter Details:

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

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

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

708.01   List of Special Cases  

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

Question:

Since CPA applications were eliminated for utility and plant applications, what should applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed consider filing?

Answer:

Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE).

Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types, Cross-Noting, and Status of Application.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 201.06(d) of the MPEP.  The following is a brief summary of section 201.06(d).

201.06(d)   37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice

This section discusses 37 C.F.R. 1.53(d), CPA practice in detail. CPA practice is not allowed for utility and plant applications, only design applications. CPA’s are treated as amended applications as of the filing date of the CPA.

This section covers conditions for filing CPA’s, signature requirements, filing date details, small entity/microentity status, extensions of time, inventorship, and examination of CPA’s including the benefit of earlier filing date, terminal disclaimers, prior election, information disclosure statements and preliminary amendments, copies of affidavits, and public access to CPA’s.

Question:

What is the time for reply to a final rejection?

Answer:

The time for reply to a final rejection is as follows:



* (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain a form paragraph advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last day of “2 months of the date of the final Office action” falls on Saturday, Sunday, or a federal holiday within the District of Columbia, and a reply is filed on the next succeeding day which is not a Saturday, Sunday, or a federal holiday, the reply is deemed to have been filed within the 2 months period and the shortened statutory period will expire at 3 months from the date of the final rejection or on the mailing date of the advisory action, whichever is later. In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection.

* (B) This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than3 months is set, e.g., reissue litigation applications(1-month SSP) or any reexamination proceeding.



Chapter Details:

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

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 706.07(f) of the MPEP.  The following is a brief summary of section 706.07(f).

706.07(f)   Time for Reply to Final Rejection

The time for reply to a final rejection is discussed here including coverage of shortened statutory periods for reply.

Question:

When does the revocation of a filing receipt license become effective?

Answer:

The revocation becomes effective on the date on which the notice is mailed.

Chapter Details:

The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 140 of the MPEP.  The following is a brief summary of section 140.

140 Foreign Filing Licenses

This section covers both expedited foreign filing licenses and retroactive licenses. Essentially, if an inventor files a patent application in the U.S., he or she may not file the same application in a foreign country prior to the passing of six months without first obtaining a foreign filing license. If the inventor files in a foreign country before the 6 month waiting period has passed without getting a license first, he or she must immediately file for a retroactive license.

Question:

How can a maintenance fee and any necessary surcharge be made?

Answer:

The method of payment for the maintenance fee and any necessary surcharge shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order as provided in 37 CFR 1.23(a).

If the maintenance fee and any necessary surcharge is sent in any other form, the Office may delay or cancel the credit until collection is made. For example, a personal or other uncertified check drawn on a U.S. bank that is not immediately negotiable, e.g., because it lacks a signature or due to insufficient funds, will not constitute payment of a maintenance fee and/or surcharge.

The maintenance fee can be charged to a credit card as set forth in 37 CFR 1.23(b), but credit for the payment is subject to actual receipt of the fee by the Office.

Chapter Details:

The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2522 of the MPEP.  The following is a brief summary of section 2522.

2522 Methods of Payment

This section outlines the ways a maintenance fee may be paid. In addition, it covers instances when the payment will not be accepted (like, for instance, when the payment is less than the required amount).