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Applications filed in the U.S. Patent and Trademark Office are assigned for examination by an examining group in charge of the area of technology related to the invention. In the examining group, applications are taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed. Applicants will not be advanced out of turn for examination or for further action except as provided by the rules, or upon order of the Commissioner to expedite the business of the Office, or upon verified showing which, in the opinion of the Commissioner, will justify advancing them. The examination of the application consists of the study of the application for compliance with legal requirements and a search through United States patents, prior foreign patent documents which are available in the Patent and Trademark Office, and available literature to determine whether the invention is novel and non-obvious. A decision is reached by the examiner in the light of the study and the result of the search. If two or more inventions are claimed in a single application and are regarded by the Office to be of such nature that a single patent may not be issued for both of them, the applicant will be required to limit the application to one of those inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made a further action by the examiner. As a result of the examination by the Office, two out of every three applications filed will be issued a patent.
Office Actions
The applicant is notified in writing of the examiner's decision by an "Office Action". This notification is mailed to the applicant or his/her attorney or agent. The reason for adverse action or objection or requirement is stated in this action and such information or references are given as may be useful in aiding the applicant to judge the propriety if continuing the prosecution of the patent application. If the invention is not considered patentable subject matter, the claims of the application will be rejected. As well, if the examiner determines that the invention is not "novel", the claims will be rejected. The claims can also be rejected by the examiner if they are found to differ somewhat from what is found to be "obvious". It is not uncommon for some or all of the claims to be rejected in the first Office Action, relatively few applications are allowed as filed.
Applicant's Response
The applicant must request reconsideration of the application in writing. This response must distinctly and specifically point out the supposed errors in the examiner's action. The applicant must respond to every ground of objection and rejection in the Office Action from the examiner (except that a request may be made that objections or requirements as to form are not necessary to further consideration of the claims held in abeyance until allowable subject matter is indicated) and the applicant's action must appear throughout to be a bona fide attempt to advance the case to final action. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration. In amending an application in response to an examiner's rejection, the applicant must clearly point out why he/she believes the amended claims to now be patentable in view of the state of the art disclosed by the prior references cited or the rejections made by the examiner. The applicant must also show how the amendments avoid such references or objections. When a response is submitted, the application will be reconsidered and the applicant will be notified if the claims are rejected or if there are further objections or requirements to be made as in the first examination. These further objections or requirements after reexamination will also be called "Office Actions".
Final Rejection
After the second (or later) consideration (Office Actions), the rejection or other action may be made final. The applicants response in then limited to appeal in the case of the rejection of any claim and further amendments are restricted. A petition may be taken to the Commissioner in the case of an objection or requirement not involved in the rejection of any claim. Response to the final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form. In making such a final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application. Interviews (via telephone) with the examiner may be arranged, but this interview does not remove the necessity for response to the Office Action within the required time.
Further Comments Regarding Amendments
This section will provide detailed, general information regarding amendments to a patent application. The applicant may amend the application before or after the first examination and Office Action as specified by the rules, or as specifically required by the examiner. After final rejection or action, amendments may be made canceling claims or to comply with any requirement which has been made by the admission of any such amendment or its refusal, and any proceeding relative thereto, shall not operate to relieve the application from its condition as subject to appeal is to save it from abandonment. If amendments touching the merits of the application are presented after final rejection, or after appeal had been taken, or when such amendment might not other wise be proper, they may be admitted upon showing of good and suffice reasons why they are necessary and were not presented previously. No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be amended as proved in the rules. The specification, claims and drawings must be amended and revised when required to correct inaccuracies of the description and deletion of any necessary words and to secure correspondence between the claims, the description and the drawings. All amendments of the drawings or specifications and all additions thereto must conform to at least one of them as it was at the time of filing the application. Subject matter not found in the disclosure cannot be added to the application even though supported by a supplemental oath or declaration and can be only be shown in a separate application. The claims may be amended by canceling particular claims, by presenting new claims or by amending the language of particular claims (such amended claims being in effect new claims). In presenting new or amended claims, the application must point out how they avoid any reference or grounds rejection of record which may be pertinent. Amendments are "entered" by the Office making the proposed deletions by drawing a line in red ink through the word or words canceled and by making the proposed substitutions or insertions in red ink; small insertions being written in at the designated place and larger insertions being indicated by references. No change in the drawings may be made except by the permission of the Office. Permissible changes in the construction shown in any drawing may be made only by the bonded draftsman. A sketch in permanent ink showing the proposed changes to become part of the record must be filed for approval to the Office before the corrections are made. The paper requesting amendments to the drawings should be separate from other papers. If the number or nature of the amendment render it difficult to consider the case or to arrange the papers for printing or copying, the examiner may require the entire specification or claims or any part thereof, to be rewritten. The original numbering of the claims must be preserved throughout the prosecution. When claims are cancelled, the remaining claims must not be renumbered. When claims are added by amendment or substituted for canceled claims, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claims previously presented. When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by the applicant.
Time Response for Abandonment
The response to an Office Action must be made within the prescribed time limit set by the examiner. The maximum period for response by the statute is at six (6) months which also provides that the Commissioner may shorten the time for reply to not less than thirty (30) days. The usual period for a response to an Office Action is three (3) months. A shortened time for a reply may be extended for up to the maximum six (6) month period. A petition fee for an extension of time is normally required to be paid if the response period is extended. The amount of the fee is dependent upon the length of the extension. If no reply is received within the time period, the application is considered abandoned and no longer pending. However, if it can be shown that the failure to prosecute was unavoidable or unintentional, the application may be revived by the Commissioner. The revival requires a petition to the Commissioner and a fee for the petition. The response petition and the fee are normally submitted together. |
