700 vocab

Question 1

preliminary amendments

Answer 1

Amendments filed before the first Office Action; allowed if they don’t delay prosecution – MPEP §714.01

Question 2

abandonment

Answer 2

When the applicant fails to respond within the required time period, resulting in loss of rights – MPEP §711

Question 3

absolute bar

Answer 3

A statutory condition (e.g., public use or sale >1 year before filing) that permanently prevents patenting – MPEP §2133.03

Question 4

amendments

Answer 4

Changes to the specification, claims, or drawings submitted during prosecution – MPEP §714

Question 5

automatic extension

Answer 5

An extension of time up to 5 months automatically granted upon payment of the fee – MPEP §710.02(e)

Question 6

continued examination

Answer 6

A Request for Continued Examination (RCE) reopens prosecution after a final rejection – MPEP §706.07(h)

Question 7

diligence

Answer 7

Reasonable efforts to reduce an invention to practice; relevant in pre-AIA §102(g) disputes – MPEP §2138.06

Question 8

double patenting rejections

Answer 8

Rejections for claiming the same or obvious variations of inventions in more than one patent – MPEP §804

Question 9

express abandonment

Answer 9

A formal written statement by the applicant explicitly abandoning the application – MPEP §711.01

Question 10

extension for cause

Answer 10

A discretionary extension granted for good and sufficient cause beyond automatic extensions – MPEP §710.02(e)

Question 11

final rejection

Answer 11

A second or subsequent rejection that limits further amendment; applicant must appeal or file RCE – MPEP §706.07(a)

Question 12

First Office Action

Answer 12

The first substantive communication from the examiner, usually containing rejections or objections – MPEP §710.01

Question 13

Formal abandonment

Answer 13

Official recognition by the USPTO that an application is abandoned due to missed deadlines or express abandonment – MPEP §711

Question 14

interviews

Answer 14

Discussions between the examiner and applicant to clarify or resolve issues during prosecution – MPEP §713

Question 15

new matter

Answer 15

Information not present in the original application; cannot be added by amendment – MPEP §608.04

Question 16

objections

Answer 16

Examiner’s issues with form, not patentability, such as drawings or claim format – MPEP §707.07(f)

Question 17

Patent Term Guarantee Act

Answer 17

Law providing Patent Term Adjustment (PTA) when USPTO delays issuance – MPEP §2730

Question 18

petition to make special

Answer 18

Request to advance examination based on age, health, or qualifying subject matter – MPEP §708.02

Question 19

premilinary amendments

Answer 19

Amendments filed before the first Office Action; must not delay examination – MPEP §714.01(e)

Question 20

prosecution

Answer 20

The process of negotiating and amending a patent application before the USPTO to obtain allowance – MPEP §700 intro

Question 21

rejections

Answer 21

Examiner determinations that claims are unpatentable based on law or prior art – MPEP §706

Question 22

request for reconsideration

Answer 22

Request to review a final or non-final Office Action, usually with amendments or arguments – MPEP §714.13

Question 23

Res judicata

Answer 23

Legal doctrine that prevents the same issue from being litigated after final decision – MPEP §201.06(c)

Question 24

Suspension of Action

Answer 24

Temporary pause in prosecution, either requested or initiated by the USPTO – MPEP §709

Question 25

Swearing back

Answer 25

Pre-AIA practice of antedating prior art by proving earlier invention via §1.131 affidavit – MPEP §715

Question 26

terminal disclaimers

Answer 26

Statement disclaiming the term of a patent beyond that of a related patent to overcome double patenting – MPEP §804.02

Question 27

traversing rejections

Answer 27

Arguing against examiner’s rejections to preserve the right to appeal – MPEP §714.02

Question 28

unavoidable delay

Answer 28

Delay beyond applicant’s control, held to a strict standard; rarely used today – MPEP §711.03(c)

Question 29

unintentional delay

Answer 29

Common basis for revival or late action if applicant affirms the delay was not deliberate – MPEP §711.03(c)