MPEP 203

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 Its status as an “allowed” application continues from the date of the notice of allowance until it is withdrawn from issue or until it issues as a patent or becomes abandoned, as provided in 37 CFR 1.316.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.

Processing Status Letters by the TCs

(A)All status letters sent to a TC will be delivered to a designated location (e.g., Customer Service Office) within the TC for action. Status requests with respect to PCT applications are to be processed by the PCT Legal Division and should be forwarded to that office for reply. Status information regarding an application identified in a published patent document should be forwarded to the File Information Unit for reply. See MPEP § 102.

(B)A designated representative of the TC will review the status letter to determine the nature of the request and whether the requester is entitled to receive the requested information. PALM Intranet should be used to determine whether the requester is entitled to the information. If after reviewing the information in PALM it is not clear whether the requester is entitled to receive the information requested, the TC representative should review the application file to resolve the issue.

(C)The TC representative will determine the appropriate reply to the status letter by

(1)using PALM Intranet to determine the status of the application,

(2)reviewing the new application dates within the TC,

(3)reviewing any tracking system for the particular item or action at issue,

(4)discussing the matter with the supervisory patent examiner or the examiner in charge of the application, or

(5)when necessary, reviewing the application file.

The TC representative should discuss the matter 

with an appropriate resource person in the TC if it is not clear what the reply should be.

(D)The TC representative may reply to a status letter, other than an inquiry directed to an abandoned application, by placing a telephone call to the attorney or agent of record. If the status letter requests a date of expected action, the reply should make clear that the date provided is only an “expected” date of when the examiner will take action on the application. If the requester requests that the Office provide a written reply to the status letter, the reply may be faxed (preferable) or mailed (only if requested) to the correspondence address.

(E)The TC representative will note the reply to the status inquiry on the status letter with the initials of the TC representative and the date that the reply was completed.

(F)All TCs will employ the Status Letter Database to track the progress of the status letters. The TC will retain a record of the reply to the status letter. The record includes the entry of the information concerning the status letter and the reply into the Status Letter Database.

(G)After the information has been entered into the Status Letter Database, the status letter along with the reply must be associated with the application file (including abandoned applications).

203.08(a) Congressional and Other Official Inquiries

Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared through the Office of International Relations and/or the Office of Congressional Relations.

When persons from the designated official sources request services from the Office, or information regarding the business of the Office, they should, under long-standing instructions, be referred, at least initially, to a staff member in the appropriate office.

This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.

Inquiries referred to in this section such as correspondence from embassies, the Office of the U.S. Trade Representative, and the Department of State should immediately be transmitted to the Director of the Office of International Relations by messenger, and a staff member of that office should be notified by phone that such correspondence has been received. Inquiries referred to in this section, such as correspondence from Congress or the White House, should immediately be transmitted to the Director of the Office of Congressional Relations by messenger, and

a staff member of that office should be notified by 

phone that such correspondence has been received.