Question: Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Center? Answer: Yes, a provisional application that is relied upon for priority in a U.S. patent and is abandoned may be available through the Patent Center. Generally though, provisional applications are not published and […]

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Question: Does the new ground of rejection raised by the Board in an appeal reopen prosecution? Answer: The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection was made includes an affirmance […]

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Question: Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed. Answer: An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that: (A) the application is a utility or plant application (i.e., not a design […]

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Question: What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period? Answer: The following non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period: (1) Petitioner engaged in significant, constructive efforts with the examiner to resolve the issue outside of the petitions […]

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Question: What are the reasons for insisting upon a restriction? Answer: Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each inventionas claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious search and/or examination burden on the […]

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Question: What information should also be submitted for each patent on which a maintenance fee or surcharge is paid? Answer: The following information should also be submitted for each patent on which a maintenance fee or surcharge is paid: (A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee); (B) the […]

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Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis? Answer: For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes: (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications), (ii) previously filed […]

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Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being […]

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Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: (1) a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text […]

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Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, can the non-elected invention(s) and non-claimed, distinct subject matter be […]

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