What Can You Do in the Patent Office?

Question 1

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

Answer 1

Cannot

Question 2

File a response to an official action more than six months after the date of the action (Six Month Rule)

Answer 2

Cannot (Rule 1.134)

Question 3

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

Answer 3

Cannot (MPEP 706.03(x), 35 U.S.C. 251)

Question 4

Seek an interview prior to issuance of an official action unless the application is a continuation

Answer 4

Cannot (MPEP 713.02)

Question 5

File a patent application in a foreign country without having obtained or been given a foreign filing license, unless the invention was made in another counry

Answer 5

Cannot (MPEP 140)

Question 6

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

Answer 6

Cannot (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 (MPEP 605.04(a))

Question 8

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

Answer 8

Cannot (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 (MPEP 714.02, Rule 1.134)

Question 10

Appeal a first rejection, except in a continuation application where the first action has been made Final

Answer 10

Cannot (MPEP 1205, 706.07(b))

Question 11

Obtain a filing date earlier than the date of delivery to the Patent Office of a new application using Federal Express or any other courier service other than Express Mail provided by the Post Office

Answer 11

Cannot (MPEP 513, 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 (MPEP 302.01, 302.02, 303.03)

Question 13

Amend an application to include new matter

Answer 13

Cannot (MPEP 706.03(o))

Question 14

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

Answer 14

Cannot (MPEP 201.07, 35 U.S.C. 120)

Question 15

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

Answer 15

Cannot (MPEP 1503)

Question 16

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

Answer 16

Cannot (MPEP 506, 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 (MPEP 1600)

Question 18

Obtain access to an unpublished abandoned application unless it is mentioned in an issued patent or other special circumstances apply

Answer 18

Cannot (MPEP 103)

Question 19

Traverse a restriction requirement without making an election

Answer 19

Cannot (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 (MPEP 706.03(c), 608.01(h), 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 (Rule 10.57)

Question 22

Submit a multiple dependent claim which depends from another multiple dependent claim either directly or indirectly

Answer 22

Cannot (MPEP 608.01(n))

Question 23

Ask for an automatic sixth month extension of time

Answer 23

Cannot (MPEP 710.02(e), Rule 1.136(a))

Question 24

Withdraw from representing a client in a pending application without the permission of the Commissioner of Patents

Answer 24

Cannot (MPEP 402.05, 402.06, 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

Question 26

Obtain a refund as a small entity after three months have passed since the date a large entity fee was paid

Answer 26

Cannot (MPEP 509.03)

Question 27

File a Request for Reexamination based upon any prior art other than prior patents or publications

Answer 27

Cannot (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 (MPEP 502, Rule 1.5)

Question 29

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

Answer 29

Cannot (MPEP 706.02(b))

Question 30

File any paper which is submitted for an improper purpose e.g. is being filed for the sole purpose of delay or is not authorized by the client

Answer 30

Cannot (Rule 11.18(b))

Question 31

Obtain an automatic extension of time in a reexamination

Answer 31

Cannot (MPEP 2265, Rule 1.136(a))

Question 32

Submit a multiple dependent claim which combines other claims, i.e., an appartus as in claim 1 and 2

Answer 32

Cannot (MPEP 607, 608.01(n))

Question 33

Obtain an extension of time to pay an issue fee

Answer 33

Cannot (MPEP 711.03(c), Rule 1.316(a))

Question 34

Submit broader claims in a reexamination prosecution

Answer 34

Cannot (MPEP 2250, Rule 1.121(f))

Question 35

Obtain an extension of time to file an IDS

Answer 35

Cannot (MPEP 609)

Question 36

Transfer drawings from one pending application to another pending application without demonstrating hardship

Answer 36

Cannot (MPEP 608.02(i))

Question 37

Amend an inventor's oath or declaration

Answer 37

Cannot

Question 38

File a petition to revive an application which became abandoned by failure to respond to an outstanding Official Action without submitting a response to that action, or filing a continuation

Answer 38

Cannot (MPEP 711.03(c), Rule 1.137)

Question 39

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

Answer 39

Cannot (MPEP 711.03(c))

Question 40

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

Answer 40

Cannot (MPEP 2209, 35 U.S.C. 301, 302)

Question 41

File a continuation application instead of a response without also filing a request for an extension so that the continuation and its parent are copending

Answer 41

Cannot (MPEP 201.11)

Question 42

Amend a claim in a reissue or reexamination by directing the Patent Office to add any words e.g. "E.g., claim 3, line 4 after "bolt" add - having a protrusion extending ourwardly therefrom. -"

Answer 42

Cannot (MPEP 714.22, Rule 1.121(c))

Question 43

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

Answer 43

Cannot (MPEP 2250, Rule 1.121(f))

Question 44

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

Answer 44

Cannot (35 U.S.C. 134)

Question 45

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

Answer 45

Cannot (MPEP 804)

Question 46

Appeal to the Board of Appeals an improper restriction requirement

Answer 46

Cannot (MPEP 818.03(c))

Question 47

Correct failure to claim priority with a Certificate of Correction unless priority was already perfected in a parent application

Answer 47

Cannot (MPEP 201.16)

Question 48

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

Answer 48

Cannot (MPEP 1412.02)

Question 49

File a PCT at the U.S. Patent Office, i.e. an international application, unles you are a resident or national of the U.S.

Answer 49

Cannot (MPEP 1805)

Question 50

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

Answer 50

Cannot (MPEP 706.02(b))

Question 51

File a Rule 1.53(d) continuation without abandoning the patent application

Answer 51

Cannot (Rule 1.53(d))

Question 52

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

Answer 52

Cannot (MPEP 201.06(a))

Question 53

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

Answer 53

Cannot (MPEP 714.02, Rule 1.111)

Question 54

File an application to replace a provisional application more than one year after the filing of the provisional except if the one year anniversay falls on a Saturday, Sunday, or holiday

Answer 54

Cannot (MPEP 201.04(b))

Question 55

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

Answer 55

Cannot (MPEP 2720)

Question 56

Copy claims from another patent without advising the Patent Office which patent the claims are copied from

Answer 56

Cannot (MPEP 710.04(a))

Question 57

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

Answer 57

Cannot (MPEP 509.03, Rule 1.38(a))

Question 58

Interviews are prohibited in a supplemental examination proceeding

Answer 58

Cannot (Rule 1.620(e))

Question 59

No amendments may be filed in a supplemental examination proceeding

Answer 59

Cannot (Rule 1.620(f))

Question 60

A party other than the patent owner (i.e. any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding

Answer 60

Cannot (Rule 1.601(b))

Question 61

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

Answer 61

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

Question 62

Obtain a filing date for a supplemental examination if the request is not in compliance

Answer 62

Cannot (Rule 1.610(d))

Question 63

Obtain a filing date for a petition to institute a derivation proceeding unless the petition is received with the required fee

Answer 63

Cannot (Rule 42.404)

Question 64

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 64

Can (Rule 1.53(b))

Question 65

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

Answer 65

Can (MPEP 103)

Question 66

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

Answer 66

Can (MPEP 2209)

Question 67

Protest any pending application

Answer 67

Can (MPEP 1901)

Question 68

Obtain up to a five month automatic extension of time retroactively by filing a petition and paying the reuired fee at the time the response is filed

Answer 68

Can (MPEP 710.02(e), Rule 1.136(a))

Question 69

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 69

Can (MPEP 513)

Question 70

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

Answer 70

Can (MPEP 710.02(e), Rule 1.136(a))

Question 71

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

Answer 71

Can (MPEP 712, Rule 1.137)

Question 72

Have an application made special

Answer 72

Can (MPEP 708.02)

Question 73

Interview an Examiner after an official action has issued

Answer 73

Can (MPEP 713.01)

Question 74

Amend claims in a reexamination in response to an Official Action

Answer 74

Can (MPEP 2234)

Question 75

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

Answer 75

Can (MPEP 140)

Question 76

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

Answer 76

Can (MPEP 140)

Question 77

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

Answer 77

Can (MPEP 2590)

Question 78

Correct inventorship of an issued patent or a pending application

Answer 78

Can (MPEP 600, 1481)

Question 79

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 79

Can (MPEP 1308)

Question 80

Obtain broader claims in a reissue application filed within two years after issue

Answer 80

Can (MPEP 706.03(x))

Question 81

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

Answer 81

Can (MPEP 2202)

Question 82

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

Answer 82

Can (MPEP 1302.14)

Question 83

File a continuation and abandon the parent application at any time the parent is still pending, provided that the parent and continuation are co-pending, i.e. both pending at the Patent Office at least one day

Answer 83

Can (MPEP 201.11)

Question 84

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 84

Can (Rule 1.137)

Question 85

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 85

Can (MPEP 1490)

Question 86

Petition to the Commissioner to overturn an improper Restriction Requirement 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

Answer 86

Can (MPEP 818.03(c))

Question 87

File a continuation in a reissue applcation

Answer 87

Can (MPEP 1445)

Question 88

Withdraw a recorded terminal disclaimer until the date the patent issues

Answer 88

Can (MPEP 1490)

Question 89

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 89

Can (MPEP 201.03, Rule 1.48(a))

Question 90

File a design continuation or divisional by facsimile, provided the parent is to be abandoned

Answer 90

Can (Rule 1.53(d))

Question 91

File a substitute specification

Answer 91

Can (Rule 1.125(b))

Question 92

Submit color photographs in a design application provided a petitioin and fee are submitted

Answer 92

Can (Rule 1.152)

Question 93

Obtain a fifth month extension

Answer 93

Can (Rule 1.136(a))

Question 94

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

Answer 94

Can (Rule 1.35(c))

Question 95

A patent owner may request a supplemental examination of a patent at any time during the period of enforceability of the patent

Answer 95

Can (Rule 1.601(c))

Question 96

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

Answer 96

Can (Rule 1.290)

Question 97

File a petition to institute a derivation proceeding in the Office

Answer 97

Can (Rule 42.402)