MPEP Ch. 1300

Question 1

MPEP Ch. 1300

Answer 1

Allowance and Issue

Question 2

Notice of Allowance

Answer 2

Sets a 3-month period for payment of the issue fee. Final drawings are also due at this time. NO EXTENSIONS. Can be filed late with petition upon a showing of an erroneous failure to pay.

Question 3

Deferring Issuance

Answer 3

After issue fee has been paid, applicant can petition to defer issuance up to one month (more upon showing of extradorinaiy circumstances). Fee.

Question 4

Withdrawal from Issue (Before Issue Fee)

Answer 4

Applicant can withdraw by petition with a showing of good and sufficient reason and payment of fee. Can also fail to pay issue fee and allow app to go abandoned.

Question 5

Withdrawal from Issue (after issue fee)

Answer 5

By PTO for (1) mistake on part of PTO; or (2) violation of the duty to disclose; or (3) unpatentability of one or more claims; or (4) an interference.
By Applicant, with fee and petition for (1) abandonment to consider an IDS in a continuation or RCE, or (2) for unpatenability of a claim, which must include a statement and explanation for how the amended claims are now patentable.

Question 6

Term and Term Extension (‘95-‘00)

Answer 6

June 8, 1995 to May 29, 2000, 20 year term may be extended up to 5 years for delays in the issuance of the patent due to interferes, secrecy orders, and/or successful appeals to the PTAB or Federal Courts.
Extensions cannot be obtained if patent is subject to terminal disclaimer.

Question 7

Term - Design Patents

Answer 7

14 years from Issue

Question 8

Term - Utility and Plant filed before June 8, 1995

Answer 8

17 years from issue or 20 years from filing, whichever is greater

Question 9

Term - Utility and Plant filed on or after June 8, 1995

Answer 9

20 years from filing date.

Question 10

Patent Term Adjustment (PTA)

Answer 10

MPEP 2700, look it up.
Applies only to utility and plant apps filed on or after May 29, 2000 and under
(1) certain admin delays (14/4/4/4)
(2) Overal pendency from initial filing to issue of more than three years; or
(3) Delays due to Interferences, Secrecy orders, and successful appeals.

Question 11

PTA - Admin Delays

Answer 11

PTA for greater than 14 months from filing to
(A) Notice of allowance;
(B) first OA;
(C) Written restriction requirement; or
(D) examiner’s request for information
Greater than 4 months to replay to an amendment or appeal;
Greater than 4 months to act after decision by Board or Federal Court;
Greater than 4 months to print patent once issue fee has been paid and all outstanding issues satisfied.

Question 12

PTA - Overall tendency from initial filing of more than 3 years

Answer 12

Following do not count towards 3 years

• time consumed by continued exam under RCE
• time consumed by secrecy order, interference, or appellate review, and
• time consumed by applicant requested delays

Question 13

PTA - reduced by applicant

Answer 13

Delays caused by applicant will reduce PTA. E.G., not having app ready for exam w/in 8 months of filing, incomplete responses, continuations, RCEs, etc.
No double counting overlapping, longest delay controls.

Question 14

PTA - objections

Answer 14

Petitions to challenge PTA calculation must be filed prior to, or with, payment of the issue fee. Appeal of a final determination of PTA must be taken within 180 days of the patent grant.

Question 15

Provisional Rights

Answer 15

If app is published, the patent includes a right to a reasonable royalty for the period between date of pub and the date of the patent grant IF:

(1) owner of patent provided actual notice of the published app to the entity now being held liable; and
(2) patent claims are substantially identical to the claims in the published app.