Things you can/can't do in the Patent Office

Question 1

Lie to, cheat on or steal from your clients or the Patent Office.

Answer 1

Cannot do

Question 2

File a response to an official action more than six months after the date of the action.

Answer 2

Cannot do (Rule 1.134)

Question 3

File a broadening reissue more than two years after the issue date of the patent.

Answer 3

Cannot do (35 U.S.C. 251)

Question 4

Seek an interview prior to issuance of an official action in an application that is not a continuation.

Answer 4

Cannot do. (MPEP 713.02)

Question 5

File a patent application in a foreign country without having obtained or been given a foreign filing license if you are a US citizen.

Answer 5

Cannot do. (MPEP 140)

Question 6

Add additional claims or present new issues as a matter of right after a Final Rejection.

Answer 6

Cannot do. (MPEP 714.12)

Question 7

Alter an application after it has been executed by the inventor or inventors and file the application with that same oath or declaration.

Answer 7

Cannot do. (MPEP 605.04(a))

Question 8

Ask that the prosecution be suspended while an action is outstanding, or for an indefinite time.

Answer 8

Cannot do. (MPEP 709)

Question 9

Respond to some rejections and objections on the merits in an official action, and ask that the rest be deferred.

Answer 9

Cannot do. (Rule 1.134)

Question 10

Appeal a first rejection in a continuation application where the first action has been made final.

Answer 10

Only can be appealed after first rejection in this scenario. NO OTHER SITUATION CAN YOU APPEAL A FIRST REJECTION (MPEP 1205).

Question 11

Obtain a filing date earlier than the date of delivery to the Patent Office of a new application using Express Mail provided by the Post Office.

Answer 11

Only Express Mail gets you the filing date of the day sent. All other mail receives filing date upon deliver. (Rule 1.53)

Question 12

Record an assignment which is not in English, and which is not accompanied by a translation, or which does not identify the application or patent by the filing date and serial number or by the patent number.

Answer 12

Cannot do. (PEP 302.01 .02 and .03)

Question 13

Amend an application to include new matter.

Answer 13

Cannot do. (MPEP 706.03(o))

Question 14

File a continuation, division, or a continuation-in-part application which is not copending with its parent. (

Answer 14

Cannot do. (35 U.S.C. 120)

Question 15

File more than a single, formal claim in a design application.

Answer 15

Cannot do. The ornamental design for (the article as specified in the title of the Invention) as shown. (MPEP 1503)

Question 16

File an application without drawings where drawings are necessary to understand the invention.

Answer 16

Cannot do. (35 U.S.C. 112)

Question 17

File a plant patent on a potato or on a plant found in the wild, or one which has not been asexually reproduced.

Answer 17

Cannot do. (MPEP 1600)

Question 18

Obtain access to an unpublished abandoned application that is mentioned in an issued patent.

Answer 18

Can do on in this instance or when special circumstances apply. (MPEP 103).

Question 19

Traverse a restriction requirement without making an election.

Answer 19

Cannot do. (MPEP 818)

Question 20

File an application which doesn’t have enough disclosure for one of ordinary skill in the art to practice the invention or which does not disclose the best mode of carrying out the invention or a written description of the invention.

Answer 20

Cannot do. 35 U.S.C. 112

Question 21

Tell anyone information which has been disclosed to you in confidence by a client without permission of the client.

Answer 21

Cannot do. Rule 10.57

Question 22

Submit a multiple dependent claim which depends from another multiple dependent claim.

Answer 22

Cannot do. (MPEP 608.01)

Question 23

Ask for an automatic sixth month extension of time.

Answer 23

Cannot do. Rule 1.136(a).

Question 24

Withdraw from representing a client in a pending application.

Answer 24

Only if permission of the Commissioner of Patents is obtained. Otherwise, cannot do. Rule 1.36.

Question 25

Argue that a given claim is patentable because of a feature or limitation which is not in that claim.

Answer 25

Cannot do.

Question 26

Obtain a refund as a small entity after the large entity fee was paid.

Answer 26

Can only do within 3 months of paying the large entity fee. (MPEP 509.03)

Question 27

File a Request for Reexamination based upon prior publications or patents.

Answer 27

Can do. Cannot file a request of reexamination based on any other prior art. (MPEP 2217).

Question 28

File one paper in an application and ask that copies be placed in the files of other applications.

Answer 28

Cannot do. (Rule 1.5).

Question 29

Swear back of a pre-AIA 102(b) rejection.

Answer 29

Cannot do. Statutory bar. MPEP 706.02(b)

Question 30

File any paper which is submitted for an improper purpose.

Answer 30

Cannot do. Rule 11.18(b).

Question 31

Find an examiner at the Patent Office after 4 PM on a Friday.

Answer 31

Cannot do.

Question 32

Obtain an automatic extension of time in a reexamination.

Answer 32

Cannot do. Rule 1.136(a)

Question 33

View a DVD in an interview that has a bearing on an outstanding issue and will advance prosecution.

Answer 33

Can do. Only time you can view a DVD in the patent Office. (MPEP 713.01)

Question 34

Submit a multiple dependent claim which combines other claims.

Answer 34

i.e. an apparatus as in claim 1 and 2. Cannot do. MPEP 608.01(n)

Question 35

Obtain an extension of time to pay an issue fee.

Answer 35

Cannot do. (Rule 1.316(a))

Question 36

Submit broader claims in a reexamination prosecution.

Answer 36

Cannot do. Rule 1.121(f)

Question 37

Obtain an extension of time to file an IDS>

Answer 37

Cannot do. (MPEP 609)

Question 38

Transfer drawings from one pending application to another.

Answer 38

Can only do by demonstrating hardship. (MPEP 608.02(i))

Question 39

Amend an inventor's oath or declaration.

Answer 39

Cannot do.

Question 40

File a petition to revive an application which became abandoned by failure to respond to an outstanding Official Action.

Answer 40

Can only do so by submitting a response to that action, or filing a continuation. (Rule 1.137)

Question 41

Revive an application which was deliberately abandoned or correct any mistake or error which was made deliberately.

Answer 41

Cannot do. (MPEP 711.03(c))

Question 42

File a reexamination based upon prior invention, prior sale, prior use or public knowledge.

Answer 42

Cannot do. (35 U.S.C. 301,302)

Question 43

File a continuation application instead of a response.

Answer 43

Can only be done by also filing a request for an extension so that the continuation and its parent are copending (MPEP 201.11)

Question 44

Amend a claim in a reissue or reexamination by directing the Patent Office to add any words.

Answer 44

Cannot do. e.g., claim 3, line 4 after "bolt" add - having a protrusion extending outwardly therefrom. (Rule 1.121(c))

Question 45

Amend a claim in a reexamination application by underlining the words to be added to a previously amended claim and bracketing the words to be deleted from a previously ammended claim.

Answer 45

Cannot do. Rule 1.121(f)

Question 46

Petition to the Commissioner any Patent Office rejection or appeal any Patent Office objection.

Answer 46

Cannot do. (35 U.S.C. 134)

Question 47

Overcome a Double Patenting Rejection of the same invention (anticipation) type by filing a terminal disclaimer.

Answer 47

Cannot do. (MPEP 804)

Question 48

Appeal to the Board of Appeals an improper restriction requirement.

Answer 48

Cannot do. (MPEP 818.03(c)). Can only petition.

Question 49

Correct failure to claim priority with a Certificate of Correction.

Answer 49

Can only do so when priority was already perfected in a parent application (MPEP 201.16)

Question 50

Recapture in a reissue application subject matter cancelled in the parent to obtain a patent.

Answer 50

Cannot do. (MPEP 1412.02)

Question 51

File a PCT at the U.S. Patent Office.

Answer 51

Can only do so if you are a resident or national of the U.S. (MPEP 1805)

Question 52

Swear back of a pre-AIA 102(e) anticipation which claims the same invention.

Answer 52

Cannot do (MPEP 706.02(b)

Question 53

File a Rule 1.53(d) continuation.

Answer 53

Can only do so by abandoning the parent application (1.53(d))

Question 54

Transfer drawings to a divisional application from an application which is about to issue.

Answer 54

Cannot do. (MPEP 201.06(a))

Question 55

Amend claims and/or a specification without submitting remarks explaining how the amendments overcome the rejections and objections of the examiner.

Answer 55

Cannot do. (Rule 1.111)

Question 56

File an application to replace a provisional application more than one year after the filing of the provisional application.

Answer 56

Can only do so if the one year anniversary falls on a Saturday, Sunday, or holiday. (MPEP 201.04(b))

Question 57

Obtain an extension to the patent term for any part of the appeal time in which prosecution was not being diligently pursued.

Answer 57

Cannot do. MPEP 2720

Question 58

Copy claims from another patent.

Answer 58

Can only do by advising the Patent Office which patent the claims are copied from. (MPEP 710.04(a))

Question 59

Obtain an extension of time to claim Small Entity Status and obtain a refund.

Answer 59

Cannot do. Rule 1.38(a)

Question 60

Request an interview in a supplemental examination.

Answer 60

Cannot do (Rule 1.620(e))

Question 61

File an amendment in a supplemental examination proceeding.

Answer 61

Cannot do. Rule 1.620(f)

Question 62

A party other than the patent owner filing papers or otherwise participating in any manner in a supplemental examination proceeding.

Answer 62

Cannot do. (Rule 1.601(b))

Question 63

Obtain a filing date for a supplemental examination without a compliant request.

Answer 63

Cannot do. Rule 1.610(d)

Question 64

Obtain a filing date for a petition to institute a derivation proceeding.

Answer 64

Can only do so if the petition is received with the required fee. (Rule 42.404)

Question 65

Get a filing date for an application without submitting the names of the inventors, the required filing fee, a signed declaration or a translation into English.

Answer 65

Can do. Rule 1.53(b)

Question 66

File a patent-owner statement in a reexamination resulting from a supplemental examination.

Answer 66

Cannot do. (35 U.S.C. 257(b))

Question 67

Obtain access to any unpublished pending or unpublished abandon application which is mentioned in an issued patent.

Answer 67

Can do. (MPEP 103)

Question 68

Ask for a reexamination of any patent on the basis of prior art in the form of a printed publication or patent.

Answer 68

Can do. (MPEP 2209)

Question 69

Protest any pending application.

Answer 69

Can do. (MPEP 1901).

Question 70

Obtain up to a five month automatic extension of time retroactively by filing a petition an d paying the required fee at the time the response is filed.

Answer 70

Can do. Rule 1.136(a)

Question 71

Obtain a filing date for a new application, including a continuation, CIP or division by using the Express Mail service of the Post Office even on Saturday, Sunday or a Holiday.

Answer 71

Can do. (MPEP 513)

Question 72

Obtain extensions of time for cause when automatic extensions are not available.

Answer 72

Can do. Rule 1.136(b)

Question 73

Pay an issue fee late provided the delay was unavoidable or unintentional.

Answer 73

Can do. Rule 1.137

Question 74

Have an application made special.

Answer 74

Can do. MPEP 708.02

Question 75

Interview an Examiner after an official action has issued.

Answer 75

Can do. MPEP 713.01

Question 76

Amend claims in a reexamination in response to an Official Action.

Answer 76

Can do. MPEP 2234

Question 77

Get a foreign filing license authorizing you to file a patent application in another country.

Answer 77

Can do. MPEP 140

Question 78

Get a foreign filing license retroactively when an application has through error and inadvertence been filed in another country.

Answer 78

Can do. MPEP 140

Question 79

Revive a patent within two years after the patent has inadvertently been abandoned by failure to pay a maintenance fee.

Answer 79

Can do. MPEP 2590

Question 80

Correct inventorship of an issued patent or a pending application.

Answer 80

Can do. MPEP 600

Question 81

Petition to withdraw an application from issue in order to have an interference or to permit consideration of an IDS in a continuation application.

Answer 81

Can do. MPEP 1308

Question 82

Obtain broader claims in a reissue application.

Answer 82

Can only do so if filed within 2 years of issue. MPEP 706.03(x)

Question 83

File a citation of art limited to printed patents and publications in any issued patent.

Answer 83

Can do. MPEP 2202

Question 84

File comments in response to the Examiner's Reasons for Allowance.

Answer 84

Can do. MPEP 1302.14

Question 85

File a continuation and abandon the patent application at any time the parent is still pending.

Answer 85

Can do so provided that the parent and continuation are co-pending. (MPEP 201.11)

Question 86

Revive an application by showing that the abandonment was unintentional or unavoidable, and filing the required terminal disclaimer for a design application or a pre June 8 1995 application.

Answer 86

Can do. Rule 1.137

Question 87

Overcome a Double Patenting rejection of the obviousness type by filing a terminal disclaimer which also provides that the patents will lapse if they ever cease being owned by the same entity.

Answer 87

Can do. MPEP 1490

Question 88

Petition to the Commissioner to overturn an improper Restriction Requirement.

Answer 88

Can be done after first asking the Examiner for reconsideration, electing as required and petitioning within two months from the decision of the examiner on the Request for Reconsideration. MPEP 818.03(c)

Question 89

File a continuation in a reissue application.

Answer 89

Can do. MPEP 1445

Question 90

Withdraw a recorded terminal disclaimer.

Answer 90

Can be done until the date the patent issues. MPEP 1490

Question 91

File a continuation application with the correct inventors rather than file a petition to correct inventorship if at least one inventor remains in common between the parent and child applications.

Answer 91

Can do. Rule 1.48(a)

Question 92

File a design continuation or divisional by facsimile.

Answer 92

Can do so provided the parent is to be abandoned. (rule 1.53(d))

Question 93

File a substitute specification.

Answer 93

Can do. (Rule 1.125(b))

Question 94

Submit color photographs in a design application.

Answer 94

Can do so provided a petition and fee are submitted. (Rule 1.152)

Question 95

Obtain a five month extension.

Answer 95

Can do. Rule 1.136(a)

Question 96

Extend a time period for completing an incomplete, but bona fide response to a non-final action.

Answer 96

Can do. Rule 1.35(c)

Question 97

Request a supplemental examination of a patent at any time during the period of enforceability of the patent as a patent owner.

Answer 97

Can do. Rule 1.601(c)

Question 98

File a preissuance submission of relevant prior art prior to the issuance of a patent.

Answer 98

Can do. Rule 1.290

Question 99

File a petition to institute a derivation proceeding in the Patent Office as an applicant for patent.

Answer 99

Can do. Rule 42.402