MPEP 203: Difference between revisions

203 Status of Applications

203.01 New

A “new” application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a “new” application.

203.02 Rejected

A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a “rejected” application. Its status as a “rejected” application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.

203.03 Amended

An “amended” nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.

203.04 Allowed or in Issue

An “allowed” nonprovisional application or an application “in issue” is one which, having been examined, is passed to issue as a patent, subject to payment of the issue fee. Its status as an “allowed” application continues from the date of the notice of allowance until it is withdrawn from issue or until it issues as a patent or becomes abandoned, as provided in 37 CFR 1.316.

The files of allowed applications are kept in the Office of Patent Publication. For Image File Wrapper (IFW) processing, see the IFW Manual.

203.05 Abandoned

An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:

(A) through formal abandonment by the applicant (acquiesced in by the assignee if there is one) or by the attorney or agent of record;

(B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;

(C) for failure to pay the issue fee (MPEP § 711to § 711.05); or

(D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111 (b) (5)).

203.06 Incomplete

An application that is not entitled to a filing date (e.g., for lacking some of the essential parts) is termed an incomplete application. (MPEP § 506 and § 601.01(d)-(g)).

203.08 Status Inquiries

I. NEW APPLICATION

Current examining procedures now provide for the routine mailing from the Technology Centers (TCs) of Form PTOL-37 in every case of allowance of an application. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe his or her new application may have been passed to issue on the first examination. However, as an exception, a status inquiry would be appropriate where a Notice of Allowance is not received within three months from receipt of form PTOL-37.

Current examining procedures also aim to minimize the spread in dates among the various examiner dockets of each art unit and TC with respect to actions on new applications. Accordingly, the dates of the “oldest new applications” appearing in the Official Gazette are fairly reliable guides as to the expected time frames of when the examiners reach the applications or action.

Therefore, it should be rarely necessary to query the status of a new application.

II. AMENDED APPLICATIONS

Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. However, in the event that a six month period has elapsed, and no response from the Office is received, applicant shouldinquire as to the status of the application to avoid potential abandonment. Applicants are encouraged to use PAIR to make status inquiries. See subsection III below. A stamped postcard receipt for replies to Office actions, adequately and specifically identifying the papers filed, will be considered prima facie proof of receipt of such papers. See MPEP § 503. Where such proof indicates the timely filing of a reply, the submission of a copy of the postcard with a copy of the reply will ordinarily obviate the need for a petition to revive. Proof of receipt of a timely reply to a final action will obviate the need for a petition to revive only if the reply was in compliance with 37 CFR 1.113.

III. IN GENERAL

Applicants are encouraged, where appropriate, to check Patent Application Information Retrieval (PAIR) (http://pair.uspto.gov) which provides applicants direct secure access to their own patent application status information, as well as to general patent information publicly available. See MPEP § 1730. Inquiries as to the status of applications, by persons entitled to the information, should be answered promptly. Simple letters of inquiry regarding the status of applications will be transmitted from the Office of Initial Patent Examination to the TCs for direct action. Such letters will be stamped “Status Letters.”

If the correspondent is not entitled to the information, in view of 37 CFR 1.14, he or she should be so informed. For Congressional and other official inquiries, see MPEP § 203.08(a).

Telephone inquiries regarding the status of applications, by persons entitled to the information, should be directed to the TC technical support personnel and not to the examiners , since the technical support personnel can readily provide status information without contacting the examiners.

See also MPEP § 102 regarding status information.