Patent Bar Examination (USPTO Registration Exam) Patent Prosecution and Examination Procedure Syllabus

What happens if a reply is responsive to some but not all grounds of rejection (a 'bona fide' but incomplete reply) before the period expires?

If the reply is a bona fide attempt and substantially complete but omits something (e.g., one rejection), the examiner may give a short new time period (often 1 month or the remainder of the statutory period, whichever is longer) to complete the reply, rather than holding the application abandoned.

What is 'after-final' practice, and what options does an applicant have after a final rejection?

Options include: file an amendment under 37 CFR 1.116, request an interview, file an After Final Consideration Pilot (AFCP 2.0) request, file an RCE under 1.114, file a Notice of Appeal to the PTAB, abandon, or pay extensions while pursuing these—all within the 6-month statutory window.

What is the standard for entry of an amendment after final rejection under 37 CFR 1.116?

After-final amendments are entered as a matter of right only if they cancel claims, comply with formal requirements, or place the application in condition for allowance; otherwise entry is discretionary and an amendment raising new issues requiring further search/consideration may be refused entry.

Does filing an after-final amendment toll or stay the period for reply?

No. The shortened statutory period (and 6-month statutory limit) continues to run; an after-final amendment that does not place the case in allowance does not stop the clock, so extensions of time may be needed to avoid abandonment.

Distinguish a 'statutory period' from a 'shortened statutory period' for reply.

The statutory period is the maximum 6 months set by 35 U.S.C. 133. A shortened statutory period (SSP) is the shorter time (commonly 1, 2, or 3 months) the Office sets in an action; an applicant may extend the SSP with fees up to—but never beyond—the 6-month statutory maximum.

Can the 6-month statutory period for reply be extended by any extension of time?

No. No extension under 37 CFR 1.136(a) or (b) can carry a reply beyond 6 months from the mailing date of the action; reply after 6 months results in abandonment.

What is an extension of time under 37 CFR 1.136(a)?

An automatic (as-of-right) extension obtained simply by paying the appropriate fee (up to 5 months); no showing of cause is required. It may be requested up front or made retroactively when filing the reply, but cannot extend beyond the 6-month statutory limit.

What is an extension of time under 37 CFR 1.136(b), and when is it used?

An extension 'for cause,' requiring a petition showing sufficient cause, used when 1.136(a) is unavailable (e.g., the action forbids automatic extensions, or the period is not subject to 1.136(a)). It also cannot extend beyond any applicable statutory maximum.

Can a 37 CFR 1.136(a) automatic extension be obtained after the period for reply has already passed?

Yes. A 1.136(a) extension may be filed retroactively with the reply and the proper fee (within the maximum 5-month extension and 6-month statutory limit); the petition/fee is effective to extend the period retroactively, reviving timeliness.

What are the principal ways an application becomes abandoned?

Failure to timely reply to an Office action, failure to pay the issue fee, express abandonment by the applicant, failure to file required parts, or failure to prosecute (e.g., insufficient/incomplete reply). Abandonment occurs by operation of law once the statutory period lapses without proper reply.

What is express (formal) abandonment?

A written declaration of abandonment signed by the applicant or attorney/agent of record and filed with the Office; it must be recognized/acknowledged before the abandonment is effective, and is sometimes filed to permit a continuation to issue or to avoid publication.

What are the two standards historically used for reviving an unintentionally vs. unavoidably abandoned application?

Current practice (37 CFR 1.137) uses a single 'unintentional' standard: a petition to revive must state that the entire delay in replying was unintentional, with the petition fee and the required reply. (The older 'unavoidable' standard has been eliminated for most purposes.)

What three things must accompany a petition to revive an abandoned application under 37 CFR 1.137?

(1) The required reply (e.g., the proper response to the outstanding action or the issue fee), unless previously filed; (2) the petition fee; and (3) a statement that the entire delay from the due date until filing the petition was unintentional (the Office may require additional info to question that statement).

What is a Request for Continued Examination (RCE) under 37 CFR 1.114?

A request to continue prosecution of the same application after prosecution is closed (e.g., after final rejection or a Notice of Allowance), accomplished by filing the RCE, a submission (such as an amendment, IDS, or arguments), and the fee—reopening prosecution without filing a new application.

What three requirements must be met to obtain an RCE?

(1) Prosecution must be closed (after final rejection, Notice of Allowance, or appeal); (2) a submission (amendment, new argument, IDS, or other reply); and (3) payment of the RCE fee—all filed before the period for reply expires or before abandonment/payment of issue fee (or with a petition).

For what types of applications is an RCE NOT available?

RCE is not available for provisional applications, utility/plant applications filed before June 8, 1995, design applications, international (PCT) applications that have not entered the national stage, or patents under reexamination. (Design applications use a CPA instead.)

Does filing an RCE require a new filing date or a new oath/declaration?

No. An RCE continues the same application, retaining the original filing date, serial number, and oath/declaration; it is not a new application and does not require a new declaration.

What is a Notice of Allowance (and Fee(s) Due), and what deadline does it set?

It notifies the applicant that the application is allowed and states the issue fee (and any publication fee) due. The issue fee must be paid within 3 months from the mailing date—a non-extendable period; failure to pay results in abandonment.

Is the 3-month period to pay the issue fee extendable under 37 CFR 1.136(a)?

No. The 3-month period to pay the issue fee is statutory and non-extendable. Late payment requires a petition to revive (unintentional delay) under 37 CFR 1.137 with the fee and statement.

What is an amendment after allowance under 37 CFR 1.312?

An amendment filed after the Notice of Allowance but before/with payment of the issue fee. It is not a matter of right; it requires a showing of good and sufficient reasons why it is needed and was not earlier presented, and must be approved by the examiner for entry.

What must a 37 CFR 1.312 amendment include to be considered, and when must it be filed?

It must be filed before or with payment of the issue fee (preferably as early as possible), include a showing of why the amendment is necessary and why it wasn't presented earlier, and comply with 1.121 formatting; entry is at the examiner's discretion and may require approval of supervisory personnel for substantive changes.

After the issue fee is paid, what is required to withdraw an application from issue?

A petition under 37 CFR 1.313(c) showing one of the specified reasons—e.g., unpatentability of a claim, consideration of an RCE, or express abandonment to permit filing a continuation—filed before the patent issues; the Office grants withdrawal at its discretion.

What is the term of a utility patent filed on or after June 8, 1995?

20 years measured from the earliest effective U.S. filing date of the (non-provisional) application to which priority/benefit is claimed under 35 U.S.C. 120/121/365(c)/386(c)—subject to payment of maintenance fees and possible patent term adjustment/extension.

How do provisional applications and foreign priority dates affect the 20-year patent term?

They do NOT shorten the term. The 20-year term runs from the earliest U.S. nonprovisional filing date; the provisional filing date (35 U.S.C. 119(e)) and foreign priority dates (35 U.S.C. 119(a)-(d)) are not used to measure term, only for priority of subject matter.

What is Patent Term Adjustment (PTA) versus Patent Term Extension (PTE)?

PTA (35 U.S.C. 154(b)) adds days to compensate for certain USPTO examination delays, reduced by applicant delays. PTE (35 U.S.C. 156) extends term to compensate for regulatory review delay (e.g., FDA approval) for certain products. They address different delays and are calculated separately.

What are the requirements for a domestic benefit claim of an earlier nonprovisional under 35 U.S.C. 120?

(1) The later application must be filed before the patenting/abandonment of the prior application (copendency); (2) common inventor/joint inventor; (3) a specific reference to the prior application; and (4) the claimed subject matter must be supported under 35 U.S.C. 112(a) in the prior application. The benefit reference must be timely made (in an ADS).

What are the requirements to claim benefit of a provisional application under 35 U.S.C. 119(e)?

(1) The nonprovisional must be filed within 12 months of the provisional's filing date (extendable by restoration up to 14 months); (2) at least one common inventor; (3) a specific reference to the provisional; and (4) 35 U.S.C. 112(a) support in the provisional for the claimed subject matter.

What are the requirements for claiming foreign priority under 35 U.S.C. 119(a)-(d)?

(1) The U.S. application is filed within 12 months (6 months for designs) of the first-filed foreign application in a recognized (Paris Convention/WTO) country; (2) the foreign country grants similar rights to U.S. applicants; (3) a claim for priority is made and a certified copy of the foreign application is filed; and (4) common applicant/inventor and the same invention.

What is the deadline to file the priority claim and certified copy for a 35 U.S.C. 119(a)-(d) foreign priority claim in an AIA application?

The priority claim (in an ADS) and the certified copy must generally be filed within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date; late claims require a petition for an unintentionally delayed priority claim under 37 CFR 1.55.

What is a foreign filing license, and when is it required?

Under 35 U.S.C. 184, a license from the USPTO is required before filing a patent application abroad on an invention made in the U.S. (unless 6 months have passed since the U.S. filing without a secrecy order). Filing a U.S. application is treated as a petition for a license, often granted on the filing receipt.

What is the consequence of filing abroad without a required foreign filing license?

Under 35 U.S.C. 185, an unlicensed foreign filing (when a license was required and not obtained, and the filing was not inadvertent and promptly cured) can render the resulting U.S. patent invalid; a retroactive foreign filing license may be petitioned for under 37 CFR 5.25 if the error was unintentional.

What is a secrecy order, and what is its effect on prosecution and foreign filing?

Under 35 U.S.C. 181, when disclosure of an invention would be detrimental to national security, the Commissioner issues a secrecy order that withholds publication/grant, bars disclosure, and prohibits foreign filing while the order is in effect; the order is reviewed periodically (typically renewed annually).

What is restoration of the right of priority/benefit (the 'two-month' rule), and what is required?

If a nonprovisional (or PCT national stage) is filed after the 12-month (or 6-month design) priority deadline but within 2 additional months (i.e., up to 14/8 months), the priority/benefit claim may be restored by petition under 37 CFR 1.55/1.78 with the fee and a statement that the delay in filing was unintentional.

How does restoration of priority interact with the 20-year patent term?

Restoration only restores the right to claim priority/benefit for prior-art and entitlement purposes; it does not change term measurement. The 20-year term still runs from the earliest U.S. nonprovisional filing date, and the restored foreign/provisional priority date does not affect term.