Things you can and cannot do in the patent office

Question 1

What can’t you do ethically?

Answer 1

lie to, cheat on or steal from your clients or the Patent Office. Ignore potential conflicts between current and former clients.

Question 2

When can you not file a response to an action at the USPTO?

Answer 2

After six months (six month rule) (Rule 1.134)

Question 3

When can you no longer broaden claims on a reissue application?

Answer 3

you cannot file a broadening reissue more than two years after the issue date of the patent. (35 USC Section 251)

Question 4

When can you not get an interview with an examiner?

Answer 4

You cannot seek an interview prior to the issuance of an office action unless the application is a continuation (MPEP 713.02)

Question 5

When can you not file outside of the US?

Answer 5

File a patent application in a foreign country without having obtained or been given a foreign filing license, unless the invention was made in another country (MEPE 140)

Question 6

What can you not do as a matter of right after final Rejection?

Answer 6

Cannot add additional claims or present new issues MPEP 714.12

Question 7

Can you alter an application after oath or declaration executed? What is the exception?

Answer 7

No, you cannot alter an application after it has been executed by the inventor(s) and file the application with that same oath or declaration (unless that oath still applies to the altered application) MPEP 605.04(a)

Question 8

When can you not suspend prosecution

Answer 8

You cannot ask that prosecution be suspended while an action is outstanding, or for an indefinite time MPEP 709

Question 9

What can you not do when responding to an office action including rejections and/or objections

Answer 9

you cannot respond to some rejections and objections on the merits in an official action, and ask that the rest be deferred. You must respond to all rejections and objections. MPEP 714.02, Rule 1.134

Question 10

When can you not file an appela?

Answer 10

you cannot appeal a first rejection, except in a continuation application where the first action has been made final. MPEP 1205, 706.07(b)

Question 11

Can you obtain an earlier filing date earlier than the delivery of an application to the Office using Federal Express or other courier service?

Answer 11

No you can only receive a filing date on the date of execution and courier service by Priority Mail Express. All other courier services will receive a filing date when received by the Office. MPEP 513, Rule 1.53

Question 12

Cna you add new matter?

Answer 12

No

Question 13

Can you record an assignment that is not in English?

Answer 13

No you cannot record an assignment that is not in English unless it is accompanied by a translation, and it must identify the application or patent by the filing date and serial number or by the patent number. MPEP 302.01, .02, .03

Question 14

Can you file continuations if an application is not copending with its parent?

Answer 14

No, you must file a continuation, divisional, or CIP application which is not copending with its parent. MPEP 201.11, 35 USC Section 120

Question 15

Can you file more than one claim in a designapplication?

Answer 15

You can only file one single formal claim in a design application. MPEP 1503

Question 16

Can you file an application without drawings?

Answer 16

You can file an application without drawings if it is not needed to understand the invention. You must file drawings where they are necessary to understand the invention. MPEP 506, Section 112

Question 17

Can you file a plant patent on a plant found in the wild or a tuber, or which has not been asexually reproduced?

Answer 17

No you cannot file a plant patent on a tuber, plant found in the wild, or one which has not been asexually reproduced. MPEP 1600

Question 18

What access can you get to an unpublished abandoned application?

Answer 18

You cannot obtain access to an unpublished abandoned application unless it is mentioned in an issued patent or other special circumstances apply. MPEP 103

Question 19

Do you have to make an election in a restriction requirement?

Answer 19

Yes you must make an election in a restriction requirement even if you are traversing it. MPEP 818

Question 20

File an application that does not disclose enough for a POSITA to practice invention, no best mode, no written description?

Answer 20

you must file an application that discloses enough for one of ordinary skill in the art to practice the invention and discloses the best mode of carrying out the invention and contains a written description of the invention. MPEP 608.01(h), Section 112

Question 21

Can you share information disclosed in confidence?

Answer 21

You cannot tell anyone information which has been disclosed to you in confidence by a client without permission of that client. 37 Part 11

Question 22

Multiple dependent claims that depend from multiple dependent claims?

Answer 22

No, you cannot submit a multiple dependent claim which depends from another multiple dependent claim either directly or indirectly. MPEP 608.01(n)

Question 23

Can you get an automatic six month extension?

Answer 23

No, you cannot ask for an automatic six month extension of time. MPEP 710.02(e), Rule 1.136(a)

Question 24

Can you withdraw from a client at any time?

Answer 24

You cannot withdraw from representing a client in a pending application without the permission of the Commissioner of Patents. MPEP 402.05, 402.06, Rule 1.36

Question 25

Can you argue things that are not in the claims?

Answer 25

You cannot argue that a claim is patentable because of a feature or limitation which is not in the claim.

Question 26

Is there a time limit to obtain a refund as a small entity?

Answer 26

You cannot obtain a refund as a small entity after three months have passed since the date a large entity fee was paid. MPEP 509.03

Question 27

What can you file a request for reexamination on?

Answer 27

You cannot file a request for reexamination based upon anything other than prior art and prior patents or publications. MPEP 2217

Question 28

Can you file one paper and ask that copies of it are placed in other applications?

Answer 28

No you cannot file one paper in an application and ask that copies be placed in the files of other applications. MPEP 502, Rule 1.5

Question 29

What can you not swear back of?

Answer 29

You cannot swear back of (antedate) a pre-AIA Section 102(b) rejection

Question 30

Can you submit a paper that is being filed for the sole purpose of delay or is not authorized by the client?

Answer 30

You cannot file any paper which is submitted for an improper purpose. Rule 11.18(b)

Question 31

Can you find an examiner at the patent Office after 4pm on a Friday?

Answer 31

No

Question 32

Can you obtain an automatic extension of time in a reexamination?

Answer 32

No. MPEP 2265, Rule 1.136(a)

Question 33

Can you locate a DVD player at the Office?

Answer 33

No, u you can show a DVD in an interview if it has a bearing on an outstanding issue and will advance prosecution. MPEP 713.01

Question 34

Can you submit a multiple dependent claim that combines other claims inclusivvely?

Answer 34

No you cannot submit multiple dependent claims which combines other claims such as an apparatus as in claim 1 and 2. MPEP 607, 608.01(n)

Question 35

Can you extend the payment of an issue fee?

Answer 35

you cannot obtain an extension of time to pay an issue fee. MPEP 711.03(c), Rule 1.316(a)

Question 36

Can you submit broader claims in a reexamination prosecution?

Answer 36

you cannot submit broader claims in a reexamination prosecution. MPEP 2250, Rule 1.121(f)

Question 37

Can you extend the time you file an IDS?

Answer 37

You cannot obtain an extension of time to file an IDS. MPEP 609

Question 38

Can you transfer drawings from one pending application to another application?

Answer 38

you cannot transfer drawings from one pending application to another without demonstrating hardship. MPEP 608.02(i)

Question 39

Can you amend an inventor's oath or declaration

Answer 39

No.

Question 40

Can you file a petition to revive an application that is abandoned by failure to respond to an OA?

Answer 40

You cannot petition to revive such an application without submitting a response to that action, or filing a continuation. MPEP 711.03, Rule 1.137

Question 41

Can you deliberately abandon and revive an application?

Answer 41

you cannot revive an application which was deliberately abandoned or correct any mistake or error which was made deliberately. MPEP 711.03(c)

Question 42

Can you file a continuation instead of a response?

Answer 42

You cannot file a continuation application instead of a response unless you also file a request for extension so that the continuation and parent are copending. MPEP 201.11

Question 43

Can you amend a claim by directing the Office to add any words e.g. "claim 3, line 4 after "bolt" add - having a protrusion extending outwardly therefrom."

Answer 43

You cannot amend a claim in a reissue or reexamination by directing the Office to add any words. MPEP 714.22, Rule 121(c)

Question 44

Can you amend a claim in a reexamination application by underlying words to add to previously amended claim and bracketing the words to be deleted from previously amended claim?

Answer 44

No. MPEP 2250, Rule 1.121(f)

Question 45

Can you petition to the Commissioner any patent office rejection or appeal any patent office objection?

Answer 45

You cannot petition the Commissioner any Patent Office rejection. You cannot appeal any Patent Office Objection. only rejections may be appealed. 35 USC Section 134

Question 46

Does filing a terminal disclaimer overcome a double patenting rejection?

Answer 46

A terminal disclaimer will not overcome a double patenting rejection of the same invention because this is anticipation. MPEP 804

Question 47

What can you do with an improper restrictuion requirement.

Answer 47

You cannot appeal it to the Board. MPEP 818.03(c)

Question 48

Can you correct failure to claim priority with a Certificate of Correction?

Answer 48

You cannot unless the priority was already perfected in a parent application. MPEP 201.16

Question 49

What is the rule of recapture?

Answer 49

you cannot recapture in a reissue application subject matter cancelled in the parent to obtain a patent. MPEP 1412.02

Question 50

Can a nonresident file a PCT at the USPTO?

Answer 50

You must be a resident or national of the US to file a PCT, international application, at the USPTO. MPEP 1805

Question 51

Swear back of a pre-AIA Section 102(e) anticipation which claims the same invention.

Answer 51

You cannot swear back of a pre-AIA 102(e) anticipation which claims the same invention. (you can't swear back behind US patents or patent publications)

Question 52

When can you file a Rule 1.53(d) application?

Answer 52

you have to intend and indeed abandon the parent applicatto get a 1.53(d) continuationion

Question 53

Can you transfer drawings to a divisional application?

Answer 53

You cannot transfer drawings to a divisional application from an application which is about to issue. MPEP 201.06(a)

Question 54

When can you amend claims or specification?

Answer 54

You cannot amend claims or a specification without submitting remarks explaining how the amendments overcome the rejections and objections of the examiner. MPEP 714.02, Rule 1.111

Question 55

Can you replace a provisional application more than one year after filing provisional?

Answer 55

you cannot file an application to replace a provisional more than one year after filing the provisional unless the anniversary falls on a Saturday, Sunday, or holiday. You can then file on the next business day. MPEP 201.04(b)

Question 56

When can you not obtain an extension to a patent term during appeal?

Answer 56

you cannot obtain an extension to patent term for any part of the appeal time in which prosecution was not being diligently pursued. MPEP 2720

Question 57

Can you copy claims from another patent?

Answer 57

You cannot copy claims from another patent without advising the Office which patent the claims are copied from. MPEP 710.04(a)

Question 58

Is an extension of time available for refunds to Small Entity status?

Answer 58

you cannot obtain an extension of time to claim small entity status and obtain a refund. MPEP 509.03, Rule 1.38(a)

Question 59

Can you get an interview in a supplemental examination procededing?

Answer 59

No, Rule 1.620(e)

Question 60

Can you file an amendment in a supplemental examination proceeding?

Answer 60

No. Rule 1.620(f)

Question 61

Can a third party participate in a supplemental examination proceeding?

Answer 61

No, a party other than the patent owner is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding. Rule 1.601(b)

Question 62

Can a patent owner file a statement in a reexamination proceeding resulting from a supplemental examination?

Answer 62

A patent owner does not have a right to file a patent-owner statement in a reexamination resulting from a supplemental examination. 35 USC 257(b)

Question 63

when can you obtain a filing date for a supplemental examination?

Answer 63

You can't obtain a filing date for a supplemental examination if the request is not in compliance. Rule 1.610(d)

Question 64

What constitutes a filing date for derivation proceeding?

Answer 64

You cannot obtain a filing date for a petition to institute a derivation proceeding unless the petition is received with the required Can you get a filing fee. Rule 42.404

Question 65

date for an application without submitting the names of the inventors, the required filing fee, signed declaration or a translation into English?

Answer 65

Yes, Rule 1.53(b)

Question 66

Can you obtain access to an unpublished pending or unpublished abandoned application which is mentioned in an issued patent?

Answer 66

Yes, MPEP 103

Question 67

can you ask for a reexamination of any patent on the basis of prior art in the form of a printed publication or patent?

Answer 67

Yes. MPEP 2209

Question 68

Can you protest any pending application?

Answer 68

Yes, MPEP 1901.

Question 69

Can you obtain up to a five month automatic extension of time retroactively by filing a petition and paying the required fee at the time the response is filed.

Answer 69

Yes. MPEP 710.02(e) and Rule 1.36(a)

Question 70

Can you obtain extensions of time for cause when automatic extensions are not available.

Answer 70

Yes (extensions for cause) MPEP 710.02(e), Rule 1.36(b)

Question 71

Can you obtain a filing date for a new application, including a continuation, CIP or division by using the Priority Mail Express wservice of the Post Office even on Saturday, Sunday, or a HOliday.

Answer 71

Yes. MPEP 513.

Question 72

Pay an issue fee late, provided the delay was unintentional.

Answer 72

Yes. MPEP 712, Rule 1.137

Question 73

Have an application made special.

Answer 73

Yes. MPEP 708.02

Question 74

interview an examiner after an official action has issued.

Answer 74

Yes. MPEP 713.01

Question 75

Amend claims in a reexamination in response to an Official Action.

Answer 75

Yes, MPEP 2234

Question 76

Get a foreign filing license authoirizing you to file a patent application in another country.

Answer 76

Yes, MPEP 140

Question 77

Get a foreign filing license retroactively when n application has through error and inadvertence been filed in another country.

Answer 77

Yes, MPEP 140.

Question 78

Revive a patent after the patent has inadvertently been abandoned by failure to pay a maintenance fee.

Answer 78

Yes. MPEP 2590

Question 79

Correct inventorship of an issued patent or a pending application.

Answer 79

Yes. MPEP 600, 1481

Question 80

Petition to withdraw an application from issue in order to have an interference or to permit consideration of an IDS in a continuation application.

Answer 80

Yes. MPEP 1308

Question 81

Obtain broader claims in a reissue application filed within two years after issue.

Answer 81

Yes. MPEP 1412.03

Question 82

File a citation of art limited to printed patents and publications in any issued patent.

Answer 82

Yes. MPEP 2202

Question 83

File comments in response to an Examiner's Reasons for Allowance.

Answer 83

Yes, and you should. MPEP 1302.14

Question 84

File a continuation and abandon the parent application at any time the parent is still pending, provided that the parent and continuation are co-pending, i.e. both pending at the Patent Office during at least one day.

Answer 84

Yes, MPEP 201.11

Question 85

Revive an application by showing that the abandonment was unintentional, and filing the required terminal disclaimer for a design application or a pre-June 8, 1995 application.

Answer 85

Yes. Rule 1.137

Question 86

Overcome a Double Patenting rejection of obviousness by filing a terminal disclaimer which also provides that the patents will lapse if they ever cease being owned by the same entity.

Answer 86

Yes. MPEP 1490

Question 87

Petition to the Commissioner to overturn an improper Restriction Requirement after first asking the Examiner for reconsideration, electing as required and petitioning within two months from the decision of the examiner on the Request for Reconsideration.

Answer 87

Yes. MPEP 818.03(c)File a

Question 88

continuation in a reissue application

Answer 88

Yes. MPEP 1445

Question 89

Withdraw a recorded terminal disclaimer until the date the patent issues.

Answer 89

Yes. MPEP 1490

Question 90

File a continuation application with the correct inventors rather than file a petition to correct inventorship if at least one inventor remains in common between the parent and child applications.

Answer 90

Yes. MPEP 201.03, Rule 1.48(a)

Question 91

File a design continuation or divisional by facsimile, provided the parent is to be abaodoned.

Answer 91

Yes. Rule 1.53(d)

Question 92

File a substitute specification.

Answer 92

Yes. Rule 1.125(b)

Question 93

Submit color photographs in a design application.

Answer 93

Yes, must send in three copies. Rule 1.152

Question 94

Obtain a fifth month extension

Answer 94

Yes. Rule 1.136(a)

Question 95

Extend a time period for completing an incomplete, but bona fide response to a non-final action.

Answer 95

Yes. Rule 1.35(c)

Question 96

A patent owner may request a supplemental examination of a patent at any time during the period of enforceability of the patnet.

Answer 96

Yes. Rule 1.601(c)

Question 97

Is it possible to file a third-party preissuance submission of relevant prior art prior to the issuance of a patent.

Answer 97

Yes. Rule 1.290

Question 98

An applicant for patent may file a petition to institute a derivation proceeding in the Office.

Answer 98

Yes. Rule 42.402

Question 99

Seek an interview prior to issuance of an official action?

Answer 99

No, unless the application is a continuation. MPEP 713.02

Question 100

File a patent application in a foreign country without having obtained or been given a foreign filing license?

Answer 100

No, unless the invention was made in another country. MPEP 714.12

Question 101

Respond to some rejections and objections on the merits of an official action, and ask that the rest be deferred?

Answer 101

No, you have to answer all. MPEP 714.02, RUle 1.134

Question 102

Traverse a restriction requirement without making an election?

Answer 102

No. MPEP 818

Question 103

Obtain a refund as a small entity after three months have passed since the date a large entity fee was paid?

Answer 103

No. MPEP 509.03

Question 104

Obtain an automatic extension of time in a reexamination?

Answer 104

No. MPEP 2265, Rule 1.136(a)

Question 105

obtain an extension of time to pay an issue fee?

Answer 105

No. MPEP 2265, Rule 1.136(a)