Nonprovisional Application Examination (Substantive)

Nonprovisional Application Examination (Substantive)

1. Order of examination
   1. Normal order
      1. Based on the order of US f/d, not foreign priority date
      2. May be made special to be examined earlier
         1. Director’s order to expedite
         2. Government request for immediate action
         3. Applicant’s petition to make special (see below)
   2. Petition to make special (no fee) MPEP708.02
      1. Health of the applicant: to facilitate applicant’s assistance to PTO; medical certificate required
      2. Age of the applicant: 65 or older; birth certificate required
      3. Environmental quality: materially enhances the quality of the environment; explanation required
      4. Energy: materially contributes to energy utilization and conservation; explanation required
      5. Superconductivity: involves superconductivity; explanation required
      6. Counter-terrorism: explanation required
   3. Petition to make special (fee required) MPEP708.02
      1. For the asking: application not yet examined; search already made; discussion on patentability
      2. Biotechnology application of small entity: application is a major asset
      3. Recombinant DNA research: explanation required
      4. HIV/AIDS and cancer: explanation required
      5. Prospective manufacturing: must show proof; search already made
      6. Actual infringement: infringement already in action; search already made
   4. Suspension and deferral of action MPEP709
      1. Suspension of examination by PTO: avoided if possible
         1. Maximum 6 months
         2. Possible reason: a reference will soon be available
      2. Suspension at applicant’s request
         1. For good cause: must not have outstanding OA
            1. Petition + fee
            2. 6 months maximum
         2. In application with RCE (utility patents) or CPA (design patents)
            1. Request must be filed with RCE or CPA
            2. Fee required
            3. 3 months maximum
            4. Possible reason: waiting for expert testimony or experimental results
         3. Deferral of examination for published application
            1. 3 years maximum, from the earliest effective f/d
2. Statutory subject matter; §101
   1. Four categories: process, machine, manufacture and composition of matter, including improvements MPEP706.03
      1. Not statutory subject matter: scientific principle divorced from tangible structure
      2. Not statutory subject matter: naturally occurring products, expect purified or genetically engineered
      3. Not statutory subject matter: printed matter that does not cooperate with some structure
   2. Must have utility: lawful use that provides public benefit MPEP2107.01
      1. Not patentable: incredible inventions (e.g., perpetual motion machine)
      2. Not patentable: solely useful in utilizing nuclear energy or material in an atomic weapon MPEP706.03(b)
3. Third party protest: basic idea = to minimize harassment to the applicant MPEP1900
   1. Must identify application
   2. Filed before publication of application or mailing of notice of allowance (If application is published, then protest is not allowed)
   3. Served upon applicant, or filed in duplicate in PTO if service is not possible
   4. Protester has no further right of participation
   5. Applicant need not respond unless requested to do so by PTO
   6. Protest based on patents, publications or other information: considered by PTO while application is still pending; protest must include:
      1. List of patents, publications or other information
      2. Concise explanation of relevancy
      3. Copy of each relevant item
      4. Translation of non-English documents
   7. Protest raising fraud or other inequitable conduct: entered by PTO but not investigated
4. Claim rejection: basis
   1. Claim interpretation
      1. Given the broadest reasonable interpretation
      2. In light of the specification’s disclosure
      3. Viewed from the perspective of PHOSITA
   2. Rejection under §102/103; MPEP2144.03
      1. Ordinarily, §102 and §102/103 rejections must be based on §102 events and/or applicant’s own admission
      2. In rare circumstances, the examiner may reject under §103 based on “common knowledge”, “well known prior art” or “official notice”, but only when:
         1. The facts can be unquestionably demonstrated
         2. Some form of knowledge on record
         3. If applicant traverses the examiner’s assertion, the examiner must provide supporting documentary evidence
         4. If the examiner is relying on personal knowledge, he must provide an affidavit
   3. Rejection under §112
      1. §112¶1 based rejection: specification lacks
         1. Written description of the claimed invention
         2. Enablement of making or using the claimed invention
         3. Disclosure of the best mode contemplated by the inventor
      2. §112¶2 based rejection
         1. Claim is indefinite (e.g., no antecedent basis)
         2. Claim fails to claim “the subject matter which the applicant regards as his invention”: rejection is based on statements outside the application as filed (e.g., admission)
   4. Rejection based on res judicata: no second bite at the apple
      1. BPAI or a court has finally held a claim to be unpatentable, with no possibility for further review
      2. Unless new evidence is presented
      3. Pertains to the same claim or its equivalent
5. Claim rejection: action
   1. Office action must set forth: MPEP707.07
      1. Status of every claim
      2. For allowed claims:
         1. Reasons for allowance
         2. Allowable claims except as to matter of form: indicate form defect (objection, not rejection)
      3. For rejected claims:
         1. Reasons for rejection, including statutory basis
         2. Indicate multiple rejection grounds if applicable (reason: economy)
      4. Citation of references whether a claim is rejected or not
   2. Examiner may request information from applicant regarding database to search, relevant publications, patents, applications, etc.  Applicant’s reply must address each request.
6. Final rejection: MPEP706.07, 706.07(a), 706.07(b)
   1. Rejection is generally made final upon the second OA when
      1. The same rejection is being repeated, whether or not the claims were amended
      2. A new rejection (i.e., based on new ground) is being made of new or amended claims
   2. But it is improper to make a rejection final upon the second OA when
      1. A new rejection is being made of the same claims
   3. Rejection is generally not made final upon the first OA
      1. In general
      2. Application is a continuing or substitute application that was denied entry in the earlier application as including new matter.
      3. Application is a CIP that includes new matter.
   4. But it is proper to make a rejection final upon the first OA when
      1. The application is a continuing or substitute application and
      2. Contains the same invention claimed in the earlier application and
      3. Would have been properly finally rejected in the earlier application.