What to Do When Flashcards
You can no longer work for the client in prosecution a pending application.
MPEP 402.05. File a petition seeking leave to withdraw.
You want to file a patent application in another country on an invention which was made in the United States.
MPEP 140. Obtain a foreign filing license by: (1) passage of 6 months following filing of US application, including a Provisional Application containing all disclosure to be included in foreign application; (2) granting of a foreign filing license on filing receipt of such an application; or (3) filing a petition with Commissioner asking for a license.
You want to expedite progress of an application through the PTO.
MPEP 708. File a petition to make special. Rule 1.101(c)-(d)
File a request for prioritized examination. 1.101(e)
You want to have thevalidity of one or more claims of an unexpired patent reconsidered in light of an issued patent or publication not originally considered by the Patent Office, but do not believe that any error or mistake is present in the patnet.
MPEP 2214. File a request for reexamination (a reissue can be filed only when a mistake has been made)
You find that through error and inadvertence the claims of a patent issued less than two years ago are too narrow.
MPEP 1401. File a reissue application.
you are far from the PTO and the application must be filed today to avoid a bar.
MPEP 502. Use Priority Mail Express filing procedure or file by facsimile under Rule 1.53(d), if available.
You have cancelled all the claims to which a given named inventor made a contribution.
Rule 1.48(a). Amend the application to delete the inventor.
THe inventor cannot be reached or refuses to file a sole inventor application in which your client has an interest.
Rule 1.64. File the application together with a substitute statement in lieu of an executed oath or declaration of the inventor.
The inventor has made a subsequent improvement in the invention of a pending application which he feels should be part of the application.
MPEP 201.08. File a continuation-in-part application.
You have recieved an Official Action in a reexamination setting a 2 month period for response, but for good and sufficient reason you cannot file a response until three months have passed.
MPEP 2265. File a request for Extension of Time for cause 1.550(c) before the deadline to response, and not an automatic extension 1.136(a).
For good and sufficient reason you need to suspend prosecution and no Official Action is pending
MPEP 709. File a petition to suspend for a definite time.
The application through inadvertence becomes abandoned
MPEP 711.03(c) Rule 1.137. File a petition to revive.
You want to bring prior art to the attention of the Examiner, and satisfy your duty of disclosure.
MPEP 609. File an Information Disclosure Statement.
You want to bring to the attention of the Office prior art which you believe is material to the patentability of an application where you do not represent the inventors.
File a Protest MPEP 1901.03 or File a third-party preissuance submission 35 USC 122(e), Rule 1.290.
A final rejection has issued and the examiner for good reason refused to enter an amendment.
File a continuation under either Rule 1.53(b) or (d) and if available can file an RCE.
