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 21 
 on: 04-27-17 at 08:14 am 
Started by Misha106 - Last post by MYK
It's searchable, but only one section can be open at any time.  It has been described as similar to Acrobat Reader version 5 (so, a very old version).

 22 
 on: 04-27-17 at 08:00 am 
Started by Misha106 - Last post by Misha106
Does anyone know if the MPEP provided during the examination is searchable?
Is it the same PDF that is available on the USPTO opened in an Adobe?
Thanks

 23 
 on: 04-27-17 at 07:08 am 
Started by 313230 - Last post by MYK
Hi 31320, unfortunately I don't think anyone here knows much about ITAR issues, myself included.  With that said, if you are selling or licensing a U.S. patent, since the patent document has already been published, I don't believe that this could be considered importation into the U.S.  If the licensee were to export physical products from the U.S., or if the licensee is outside the U.S. and wants to sell the products inside the U.S., then these exports and imports may fall under ITAR control.

As you are likely already aware, the State Department requires an ITAR fee from firearms manufacturers regardless of whether they are actually engaging in exports.  See https://johnpierceesq.com/want-to-get-your-manufacturers-ffl-dont-forget-itar/

 24 
 on: 04-26-17 at 08:38 pm 
Started by MR - Last post by MR
I neglected to file a terminal disclaimer with an amendment (in which I claimed that we were filing a terminal disclaimer) so now I need to file a supplemental amendment with the terminal disclaimer.

Should the supplemental amendment show the claim amendments again, and make the arguments again? Where does the MPEP explain this? I don't see the answer in MPEP 714.

 25 
 on: 04-26-17 at 06:34 pm 
Started by 3putt - Last post by Spider
Thanks for those grace period references, bartmans. Very helpful.

 26 
 on: 04-26-17 at 06:29 pm 
Started by NoCode416 - Last post by Jimmy jr Examiner
I believe it's proper under 806.05(d)   Subcombinations Usable Together . Had all three been originally presented a restriction could have been made between X, Y, and X&Y. So you constructively elected X.

 27 
 on: 04-26-17 at 06:26 pm 
Started by Spider - Last post by Spider
I am probably being paranoid, but the emails just seemed strange.

 28 
 on: 04-26-17 at 05:34 pm 
Started by Boomers - Last post by fewyearsin
First action final is a good question - I would say no, not appropriate in this case.  My understanding is that a first action final in a continuation is only appropriate if the claims could have been finally rejected in the parent.  I've done this, where a continuation was filed prior to abandonment, and no claim amedments were made.  My first action (about 15 months from filing of the continuation) was final, based on this. 

MPEP 706.07(b) says:
The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.

This, unfortunately, as well as the rest of the section, does not seem to clearly cover the situation where the continuation claims are identical, but could NOT have been finally rejected in the parent (because they were allowable).

Which gets to your question of timing.  Generally, a continuation can show up on an Examiner's docket pretty quickly (3 months), and Examiners can work on it as soon as it shows up.  Some Examiners will see a continuation and immediately work on the case, so you might get a response in 3-4 months.  Others will wait for it to become the oldest case (work on cases in order), which may take closer to 12-18 months for you to get an action.  So I wouldn't delay too long.  If you are concerned, call the examiner and politely ask that they not work on the case for a few weeks while you get your response together.  However, don't expect them to hold off for months or indefinitely (though they may be willing to, if you are nice and they are in a very accommodating mood).


 29 
 on: 04-26-17 at 05:17 pm 
Started by Spider - Last post by mersenne
I haven't seen any national-phase entry phishing scams...up here, it's generally (alleged) divorce judgment enforcement or (alleged) contract disputes.  I don't know how you'd get scammed by doing a NP entry, unless you were either supposed to advance the filing fees, or take a retainer check and do something that requires fee payment immediately.  But most scams require lawyers to accept a check and then issue payment to somebody else (not pay a legitimate patent-office fee).

 30 
 on: 04-26-17 at 05:13 pm 
Started by Boomers - Last post by mersenne
1. Can I simply re-file a copy of the allowed claims in the continuing application?
Yes.
2. Will this give me more time to consider what I actually want to do with the claims of the continuing application?
Probably at least a little.
3. When can I (or when must I) amend the claims to the version that I actually want to file?

You don't ever have to amend the claims, but if you don't, you'll eventually get an OA rejecting as double-patenting (you may get that anyway, but if you've amended the claims, you should also get prior-art analysis and rejection.)

I don't know whether an examiner could send a first-action final with nothing but double-patenting, but that's really the risk of not amending: you pay a continuation filing fee, but you don't get two full rounds of examination.  So you'd have to pay an RCE fee on top of that to keep going.

I've heard that examiners keep an eye out for cases like that, where they can issue a first-action final without doing any work.  It kind of sucks to be the applicant in that situation, but that's the way the game is played!

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