MPEP 700 prosecution 800 restriction, double patenting Flashcards
Done
Make special (708.02, R1.102), 3 types:
- acceleration Examination
- prioritized Examination
- PPH
About AE and PE:
How about claim limits?
Special subjects?
Way to file?
claim limits:
AE: 20, PE: 30
Special subject may be free:
age, health, environment, energy anti-terrorism.
way to file:
AE: electronics
PE: no restriction, could be paper
Make special (708.02, R1.102), 3 types:
- acceleration Examination
- prioritized Examination
- PPH
About AE and PE:
End at what point?
Actions that would terminate the special status?
limits on types of app?
About Fee and OoD/ADS?
End at the end of prosecution:
Notice of allowance, Final Rejection
Bad actions terminate the status:
ask for extension
add claims exceed the limit
type of app:
AE: can have design, no reissue
PE: riginal utility or plant app or RCE, no design, no reissue, no PCT
Fee and OoD/ADS:
MUST submit at filing request.
PPH:
Basically, application applied in multiple countries, if received positive ruling in an earlier country, the patent offices of other countries could reuse the search and examination result, and make that application quicker.
Fee?
When to request?
No fee, it’s free!
request before substantial examination started!
Notice of missing parts/omitted items, restriction requirement are not counted as substantial examination, so still valid for PPH.
PPH qualification:
requirements about claims
Same earliest date (so CIP could work)
At least one claim is already allowed.
Other claims must be sufficiently correspond to the allowed claims.
method claim and device claim are not considered sufficiently correspondent.
Narrower claims could be amended broader to achieve sufficient correspondence.
What PTO would do if not allow PPH?
What could the applicant do?
PTO will notify and identity the defects.
One more chance for the applicant to perfect the request and renew the request
amendment, change claim in two methods:
- Cancel and add
claims could be cancelled, but still appear in the app.
Newly added claims continue the number. - Rewrite ‘make up copy’
Use ‘underline’ to add, use ‘strike through’ or ‘[[…]]’ (for anything no more than 5 characters) to remove.
List status of all the claims
Overcome prior art with R130-132 Affidavit
R130 is for 102(a)
R130(a): I’m the author of the prior art, or someone get it from me
R130(b): My disclosure within a year beats the date of the other prior art.
R131 for pre-102(a) or (e) prior art, rarely see anymore
R132 for 103 obviousness, by submitting facts and evidence, like high value of the invention, failure of the others, cited by others, etc.
Rejection and Objection
All rejected claims need to be responded
How to challenge an objection and a rejection:
Objection: petition to the Director
Rejection: PTAB
App still pending, with at most six months lifetime.
No new matters could be added.
Two options:
File continuation
Notice of Appeal + Appeal Brief in 2M
first rejection to be appeal?
Cannot appeal the First rejection, unless it is a continuation and the claim has been rejected in the parent app…
RCE: reopen prosecution after it’s closed, need fee.
time?
content?
Time, the earliest of:
Payment issue fee
Abandonment
Notice of appeal (If filed after notice of appeal, appeal is ignored, go back to prosecution)
Content:
amendment, new evidence, IDS.
Must reply to earlier office action.
Not for provision app, design app
Suspension of action: Need extra time to research, experiment
Need to request with good reasons + fee.
No fee if it’s the fault of PTO.
Two types, need to pay fee for different time (1 month, 2month…) of extensions.
Automatic, can obtained retroactively.
For cause, cannot obtained retroactively
in what cases could the timing of 2M+5M happen?
Notice of Missing Part is 2+5 months. Since the prosecution is not started yet
Appeal Brief 2M + 5M from the date of the ‘Notice of Appeal’ (prosecution already closed).
special timing about February:
one month means no less than 30 days. Two months no less than 60 days. 3 months is in accordance with calender… Say start from Jan 31, the end of ‘one month’ due date is March 2.
