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Patent prosecution — office actions, response periods, RCEs

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Objectives

  • Identify the key rules and §§ that apply to patent prosecution — office actions, response periods, rces.
  • Apply the PatentBar.MPEP700 knowledge element in a typical exam scenario.
  • Recognize common distractors and partial-credit answers.

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PatentBar.MPEP700 · MPEP.706 · MPEP.1200

Patent prosecution — office actions, response periods, RCEs

Patent Bar · MPEP Chapter 700 — Examination of Applications MPEP §706 et seq.

**Office action types:** • **Non-final rejection** — typical first substantive communication; applicant may respond with claim amendments, arguments, or both. • **Final rejection** (MPEP §706.07) — issued after the examiner has previously rejected and applicant has had an opportunity to respond. Amendments after final are restricted (37 CFR 1.116). • **Restriction requirement** (§818) — if two independent and distinct inventions are claimed, examiner may require election. • **Notice of Allowance** (§1303) — issues after all rejections are overcome; issue fee due within 3 months; no extension.

**Response periods (37 CFR 1.134 + 1.136):** • Standard statutory period: typically 3 months from mailing, extendable up to 6 months with monthly extension fees (1.136(a)). • Abandonment occurs at expiration unless response is timely. • Missed reply — petitions to revive (unintentional, 37 CFR 1.137) with fee and statement.

**RCE (Request for Continued Examination, 37 CFR 1.114):** filed after final or Notice of Allowance (with reopening); restarts examination without filing a continuation. Cannot be used in design or provisional applications.

**Continuation / Divisional / CIP:** • **Continuation** — same disclosure, new claims, benefit of parent filing date. • **Divisional** — claims a non-elected invention after restriction; no double-patenting issue (35 USC 121 safe harbor). • **CIP (continuation-in-part)** — adds new matter; new-matter claims get CIP filing date, old-matter claims get parent date.

**Appeal (MPEP Ch. 1200 / 37 CFR 41.xx):** after two rejections (or final), appeal to the **PTAB** by filing a Notice of Appeal + appeal fee within the response period, Appeal Brief within 2 months of the Notice of Appeal.

MPEP §706 37 CFR 1.114 (RCE) MPEP Ch. 1200 (Appeal)

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