Patent Prosecution Rules (700)

Question 1

What is a non-final office action?

Answer 1

An examiner’s initial rejection, allowing a full response by the applicant.

Question 2

What is a final office action?

Answer 2

A second or subsequent rejection where prosecution is closed.

Question 3

How much time does an applicant have to respond to a non-final office action?

Answer 3

3 months without extension, extendable up to 6 months.

Question 4

Can new claims be added after a non-final rejection?

Answer 4

Yes, including amendments and arguments.

Question 5

Can you file an RCE after a final rejection?

Answer 5

Yes, to reopen prosecution and submit new arguments or amendments.

Question 6

What happens if no response is filed to a final office action?

Answer 6

The application is abandoned.

Question 7

Can an amendment be entered after final rejection?

Answer 7

Only with examiner’s approval or if it complies with specific rules.

Question 8

What is the purpose of an after-final amendment?

Answer 8

To place the application in condition for allowance.

Question 9

What is an advisory action?

Answer 9

A response from the examiner indicating whether an after-final amendment will be entered.

Question 10

What is the difference in burden between non-final and final?

Answer 10

In a final, the applicant must place the application in condition for allowance.

Question 11

What is an examiner interview?

Answer 11

A discussion between the applicant and examiner to resolve issues in prosecution.

Question 12

When can an examiner interview be requested?

Answer 12

Any time before final disposition, including after final rejection.

Question 13

Are examiner interviews required?

Answer 13

No, but they are encouraged for clarification and resolution.

Question 14

Can interviews be held in person or by phone?

Answer 14

Yes, and also by video conference.

Question 15

What must be included in an interview summary?

Answer 15

Date, participants, issues discussed, and outcomes.

Question 16

Can an interview be used to introduce new claims?

Answer 16

No, but it can help clarify them.

Question 17

Is examiner approval required for an interview?

Answer 17

Yes, the examiner must agree to the interview.

Question 18

Can a legal representative attend without the inventor?

Answer 18

Yes, a registered practitioner may conduct the interview.

Question 19

Are interviews recorded in the file?

Answer 19

A written summary is entered, but the conversation is not recorded.

Question 20

Can interviews occur after a Notice of Allowance?

Answer 20

Generally no, as prosecution is closed.

Question 21

What is the standard time for responding to most USPTO actions?

Answer 21

3 months.

Question 22

How many months can the response period be extended?

Answer 22

Up to 6 months total (3-month extension).

Question 23

Is a fee required for extensions of time?

Answer 23

Yes, escalating based on the length of extension.

Question 24

Can you extend deadlines in all situations?

Answer 24

No, some deadlines are statutory and non-extendable.

Question 25

What is a petition for extension of time?

Answer 25

A request submitted with the fee to extend a USPTO deadline.

Question 26

What happens if an extension is filed late?

Answer 26

The application may be abandoned.

Question 27

What is the consequence of missing a response deadline?

Answer 27

Abandonment of the application.

Question 28

Can an abandoned application be revived?

Answer 28

Yes, with a petition and showing of unintentional delay.

Question 29

What is a petition to revive?

Answer 29

A request to reinstate an application after abandonment.

Question 30

Can revival be automatic?

Answer 30

No, it must be formally petitioned with fees and justification.

Question 31

What is a petition in USPTO practice?

Answer 31

A request to the Director to review a procedural decision.

Question 32

What is an appeal in USPTO practice?

Answer 32

A challenge to a final rejection based on claim merits.

Question 33

Can a petition be used to challenge a restriction?

Answer 33

Yes, petitions challenge procedural issues like restrictions.

Question 34

Can an appeal challenge an extension denial?

Answer 34

No, extensions are petitionable, not appealable.

Question 35

What MPEP chapter governs petitions?

Answer 35

Chapter 1000.

Question 36

What MPEP chapter governs appeals?

Answer 36

Chapter 1200.

Question 37

Who decides petitions?

Answer 37

The Director or a delegated official.

Question 38

Who decides appeals?

Answer 38

The Patent Trial and Appeal Board (PTAB).

Question 39

Can petitions delay prosecution?

Answer 39

Yes, but they do not toll appeal deadlines.

Question 40

When should an appeal be filed instead of a petition?

Answer 40

When contesting substantive claim rejections, not procedure.

Question 41

What is a non-final office action?

Answer 41

An initial rejection or objection from the examiner.

Question 42

What is a final office action?

Answer 42

A second rejection indicating prosecution is closed.

Question 43

What is an RCE?

Answer 43

Request for Continued Examination to reopen prosecution.

Question 44

What is an after-final amendment?

Answer 44

A claim amendment filed after a final rejection.

Question 45

What is an advisory action?

Answer 45

A response indicating whether an after-final amendment will be entered.

Question 46

What is an examiner interview?

Answer 46

A discussion with the examiner to clarify or resolve issues.

Question 47

What is a petition?

Answer 47

A formal request to review a USPTO procedural action.

Question 48

What is an appeal?

Answer 48

A challenge of a rejection to the PTAB.

Question 49

What is a revival petition?

Answer 49

A request to reinstate an abandoned application.

Question 50

What is an extension of time?

Answer 50

A request to lengthen a USPTO deadline.

Question 51

What is abandonment?

Answer 51

When an application is no longer pending due to missed deadlines.

Question 52

What is a petition to the Director?

Answer 52

A request for review of administrative issues.

Question 53

What is the PTAB?

Answer 53

Patent Trial and Appeal Board, which hears appeals.

Question 54

What is the Director?

Answer 54

The official overseeing the USPTO.

Question 55

What is the MPEP?

Answer 55

Manual of Patent Examining Procedure.

Question 56

What is prosecution?

Answer 56

The process of negotiating a patent with the USPTO.

Question 57

What is the file wrapper?

Answer 57

The complete record of patent prosecution.

Question 58

What is a statutory period?

Answer 58

A non-extendable time period required by law.

Question 59

What is a discretionary period?

Answer 59

A deadline that may be extended with a petition and fee.

Question 60

What is an interview summary?

Answer 60

A required written record of a discussion with an examiner.