MPEP § 709 — MPEP § 709
Current through: 2022-07-01

709-Suspension of Action 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 709 
 

 
 
 
 
 
 709 Suspension of Action [R-01.2024]

 
 37 CFR 1.103 Suspension of action by the Office. 

 
 (a) Suspension for cause . On request of the applicant, the Office
 may grant a suspension of action by the Office under this paragraph for good and
 sufficient cause. The Office will not suspend action if a reply by applicant to an
 Office action is outstanding. Any petition for suspension of action under this
 paragraph must specify a period of suspension not exceeding six months. Any
 petition for suspension of action under this paragraph must also include:
 
 (1) A showing of good and sufficient cause for suspension of
 action; and
 

 (2) The fee set forth in § 1.17(g) , unless such cause is the fault of the
 Office.
 

 
 

 (b) Limited suspension of action in a continued prosecution application (CPA)
 filed under § 1.53(d) . On request of the applicant, the Office may
 grant a suspension of action by the Office under this paragraph in a continued
 prosecution application filed under § 1.53(d) for a period not
 exceeding three months. Any request for suspension of action under this paragraph
 must be filed with the request for an application filed under § 1.53(d) ,
 specify the period of suspension, and include the processing fee set forth in §
 1.17(i) .
 

 (c) Limited suspension of action after a request for continued examination
 (RCE) under § 1.114 . On request of the applicant, the Office may
 grant a suspension of action by the Office under this paragraph after the filing
 of a request for continued examination in compliance with § 1.114 for a
 period not exceeding three months. Any request for suspension of action under this
 paragraph must be filed with the request for continued examination under §
 1.114 , specify the period of suspension, and include the
 processing fee set forth in § 1.17(i) .
 

 (d) Deferral of examination . On request of the applicant, the
 Office may grant a deferral of examination under the conditions specified in this
 paragraph for a period not extending beyond three years from the earliest filing
 date for which a benefit is claimed under title 35, United States Code. A request
 for deferral of examination under this paragraph must include the publication fee
 set forth in § 1.18(d) and the processing fee set forth in §
 1.17(i) . A request for deferral of examination under this
 paragraph will not be granted unless:
 
 (1) The application is an original utility or plant application
 filed under § 1.53(b) or resulting
 from entry of an international application into the national stage after
 compliance with § 1.495 ;
 

 (2) The applicant has not filed a nonpublication request under §
 1.213(a) , or has filed a request under §
 1.213(b) to rescind a previously filed nonpublication
 request;
 

 (3) The application is in condition for publication as provided
 in § 1.211(c) ; and
 

 (4) The Office has not issued either an Office action under
 35
 U.S.C. 132 or a notice of allowance under
 35
 U.S.C. 151 .
 

 
 

 (e) Notice of suspension on initiative of the Office . The Office
 will notify applicant if the Office suspends action by the Office on an
 application on its own initiative.
 

 (f) Suspension of action for public safety or defense. The Office
 may suspend action by the Office by order of the Director if the following
 conditions are met:
 
 (1) The application is owned by the United States;

 (2) Publication of the invention may be detrimental to the
 public safety or defense; and
 

 (3) The appropriate department or agency requests such
 suspension.
 

 
 

 
 

 Suspension of action ( 37 CFR 1.103 ) should not be confused
 with extension of time for reply ( 37 CFR 1.136 ). It is to be noted that a
 suspension of action applies to an impending Office action by the examiner whereas an
 extension of time for reply applies to action by the applicant. In other words, the action
 cannot be suspended in an application which contains an outstanding Office action or
 requirement awaiting reply by the applicant. It is only the action by the examiner which
 can be suspended under 37
 CFR 1.103 . 
 

 Suspension of action under 37 CFR 1.103(a) - (d) at the
 applicant’s request will cause a reduction in patent term adjustment accumulated (if any)
 under 37 CFR
 1.703 . The reduction is equal to the number of days beginning on the
 date a request for suspension of action was filed and ending on the date of the termination
 of the suspension. See 37
 CFR 1.704(c)(1) .
 

 I. REQUEST BY THE APPLICANT 
 
 
 
 Request, 37 CFR Section 
 Requirement 
 Fee(s), 37 CFR Section 
 Maximum length of Suspension 
 

 
 
 
 1.103(a) 
 Petition with a showing of good and
 sufficient cause.
 
 1.17(g) 
 6 months 
 

 
 1.103(b) 
 Request at the time of filing a CPA 
 1.17(i) 
 3 months 
 

 
 1.103(c) 
 Request at the time of filing an RCE 
 1.17(i) 
 3 months 
 

 
 1.103(d) 
 See below in “Deferral of
 Examination”
 
 1.17(i) &
 1.18(d) 
 3 yrs. from earliest filing date for which a
 benefit is claimed under Title 35.
 
 

 
 A. Petition Under 37 CFR 1.103(a) With a Showing of Good and Sufficient
 Cause A request that action in an application be delayed will be granted
 only under the provisions of 37 CFR 1.103 , which provides for
 “Suspension of Action.” A petition for suspension of action under 37 CFR 1.103(a) 
 must:
 

 
 (A) be presented as a separate paper; 

 (B) be accompanied by the petition fee set forth in
 37 CFR 1.17(g) ; 
 

 (C) request a specific and reasonable period of suspension not
 greater than 6 months; and 
 

 (D) present good and sufficient reasons why the suspension is
 necessary. 
 

 
 If the requirements of 37 CFR 1.103(a) are met, the
 Office may grant the suspension of action for the specified period not to exceed six
 months. The suspension under 37 CFR 1.103(a) will begin on the
 day the request is filed. If the requirements of 37 CFR 1.103(a) are not met,
 applicants should expect that their applications, whether new or amended, will be
 taken up for action by the examiner in the order provided in MPEP § 708 , Order
 of Examination.
 

 The showing of good and sufficient cause should
 specifically explain what factors directly impact the applicant’s ability to
 presently prosecute the application for which the suspension of action has been
 requested. A statement referring to general circumstances (e.g. the world is
 experiencing a global pandemic) may not be found to be good and sufficient without a
 specific explanation of how these circumstances impact the application under
 examination. Non-limiting examples where good and sufficient cause may be found
 are:
 

 
 A. The inventor is suffering poor health or is
 unavailable due to factors beyond the inventor’s control (e.g. serving in the
 active military overseas);
 

 B. The application is subject to litigation that
 impacts prosecution of the application (e.g. ownership or assignment dispute);
 and
 

 C. The applicant needs more time to prepare data
 requested by the examiner or to support a declaration to supplement a filed
 response to a rejection in an Office action.
 

 
 A petition for suspension of action to allow applicant time to submit
 an information disclosure statement will be dismissed as failing to present good and
 sufficient reasons, since 37 CFR 1.97 provides adequate
 recourse for the timely submission of prior art for consideration by the examiner.
 Other non-limiting situations where a suspension request may be dismissed due to a
 lack of good and sufficient cause are:
 

 
 A. The applicant needs more time to determine their
 patent prosecution strategy (e.g. unsure what claim scope to seek);
 

 B. The applicant is experiencing a financial
 hardship; and
 

 C. The applicant is still developing a business
 strategy for the invention (e.g. testing market viability).
 

 
 In new applications, the mere inclusion in the transmittal form
 letter of a request that action be delayed cannot be relied upon to avoid immediate
 action in the application. However, applicant may consider filing a request for
 deferral of examination under 37 CFR 1.103(d) (see below for
 the requirements). Applicants should be aware of the possibility of requesting
 suspension of action by the Office under 37 CFR 1.103(b) or (c) for a
 period not exceeding three months at the time of filing a continued prosecution
 application (CPA) under 37 CFR 1.53(d) if the application
 is a design application, or a request for continued examination (RCE) under
 37 CFR
 1.114 . Note that effective July 14, 2003, CPA practice does not
 apply to utility and plant applications. Many Technology Center (TC) art units and
 examiners have short pendency to first action, and new applications may be taken up
 for action before preliminary amendments are filed in those applications. Where a
 preliminary amendment and petition to suspend action have been filed, it would be
 helpful to telephone the examiner in that regard to avoid having the amendment and
 the first Office action cross in the mail. The following form paragraphs should be
 used to notify the grant or denial of the petition under 37 CFR
 1.103(a) :
 

 ¶ 7.54 Suspension of Action, Applicant’s Request

 Pursuant to applicant’s request filed on [1] , action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or
 a further suspension. See MPEP § 709 .
 

 Examiner Note:
 
 1. Maximum period for suspension is 6 months.

 2. Only the Technology Center Director can grant second or subsequent
 suspensions. See MPEP §
 1002.02(c) . Such approval must appear on the Office
 letter.
 
 
 

 ¶ 7.56 Request for Suspension, Dismissed, Outstanding Office Action 

 Applicant’s request filed [1] , for suspension of action in
 this application under 37
 CFR 1.103(a) , is dismissed as being improper. Action cannot be suspended
 in an application awaiting a reply by the applicant. See MPEP § 709 .
 

 

 A supplemental reply will be entered if it is filed within the period
 during which action is suspended by the Office under 37 CFR
 1.103(a) . See MPEP § 714.03(a) regarding
 supplemental reply.
 

 B. Request for Suspension Under 37 CFR 1.103(b) or (c) Applicants may request a suspension of action by the Office under
 37 CFR 1.103(b)
 or (c) for a period not exceeding three months in a continued
 prosecution application (CPA) filed under 37 CFR 1.53(d) if the application
 is a design application, or in a continued examination (RCE) filed under
 37 CFR
 1.114 . The request for suspension must be filed at the time of
 filing of the CPA or RCE. 
 

 A supplemental reply will be entered if it is filed within the period
 during which action is suspended by the Office under 37 CFR
 1.103(c) . See MPEP § 714.03(a) regarding
 supplemental reply.
 

 1. Requirements The Office will not grant the requested suspension of action
 unless the following requirements are met: 
 

 
 (A) the request must be filed with the filing of a design CPA or
 an RCE (applicants may use the check box provided on the transmittal form
 PTO/SB/29 or PTO/SB/30, or submit the request on a separate paper);
 
 (1) if the request is filed with an RCE, the RCE must be
 in compliance with 37 CFR 1.114 ,
 i.e., the RCE must be accompanied by a submission and the fee set
 forth in 37 CFR 1.17(e) .
 Note that the payment of the RCE filing fee may not be deferred and
 the request for suspension cannot substitute for the submission;
 

 (2) if the request is filed with a CPA, a filing date must
 be assigned to the CPA;
 

 
 

 (B) the request should specify the period of suspension in a
 whole number of months (maximum of 3 months). If the request specifies no
 period of suspension or a period of suspension that exceeds 3 months, the
 Office will assume that a 3-month suspension is requested; and
 

 (C) the request must include the processing fee set forth in
 37 CFR 1.17(i) .
 

 2. Missing Parts for the CPA (Filing Date Granted) If the Office assigns a filing date to the design CPA, the request
 for suspension will be processed, even if the CPA was not accompanied by the CPA
 basic filing fee, the search fee, and the examination fee. The suspension request
 acts to suspend a first Office action by the examiner but will not affect the
 processing of the CPA for a missing part. The applicant will be given a notice
 that provides a time period of 2 months from the date of the notification to pay
 the CPA basic filing fee, the search fee, the examination fee, and the surcharge
 set forth in 37 CFR 1.16(f) . Applicant must pay the CPA basic filing
 fee, the search fee, the examination fee, and the surcharge within 2 months to
 avoid the abandonment of the CPA. Pursuant to applicant’s request for suspension,
 the action by the Office will be suspended on the CPA for the period requested by
 the applicant, starting on the filing date of the CPA.
 

 3. Improper RCE or CPA (No Filing Date Granted) If the CPA or the RCE is improper (e.g., a filing date was not
 accorded in the CPA or the RCE was filed without a submission or the RCE fee), the
 Office will not recognize the request for suspension, and action by the Office
 will not be suspended. A notice of improper CPA or RCE will be sent to applicant
 as appropriate. The time period set in the previous Office communication (e.g., a
 final Office action or a notice of allowance) continues to run from the mailing
 date of that communication. If applicant subsequently files another RCE, the
 request for suspension should be resubmitted to ensure that the Office processes
 the request for suspension properly. The request for suspension of action will not
 be processed until the Office accords a filing date to the CPA or receives a
 proper RCE in compliance with 37 CFR 1.114 .
 

 4. Improper Request for Suspension If the CPA or the RCE is properly filed, but the request for
 suspension is improper (e.g., the request for suspension was filed untimely or
 without the processing fee set forth in 37 CFR
 1.17(i) ), action by the Office will not be suspended on the
 application. The Office will process the CPA or RCE and place the application on
 the examiner’s docket. The examiner will notify the applicant of the denial of the
 request in the next Office communication using the following form paragraph:
 

 ¶ 7.56.01 Request for Suspension of Action under 37 CFR 1.103, Dismissed 

 Applicant’s request filed [1], for suspension of action in
 this application under 37
 CFR 1.103(b) or (c) is dismissed as being improper. The request was (1)
 not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee
 as set forth in 37 CFR 1.17(i) . See MPEP § 709 .
 

 Examiner Note:

 In bracket 1, insert the filing date of the request for suspension of
 action.
 

 
 5. Proper Request for Suspension If the CPA or the RCE and the request for suspension of action are
 proper, the Office’s technical support staff will process the CPA or RCE, and the
 request for suspension of action. A notification of the approval of the request
 for suspension will be sent to the applicant. The application will be placed in
 suspension status until the end of the suspension period. The suspension request
 acts to suspend a first Office action by the examiner. Once the suspension period
 has expired, the application will be placed on the examiner’s docket for further
 prosecution.
 

 C. Request for Deferral of Examination Under 37 CFR 1.103(d) In new applications, applicants may request a deferral of examination
 under 37 CFR
 1.103(d) for a period not extending beyond three years from the
 earliest filing date for which a benefit is claimed under 35 U.S.C. 119(a)-(d), (e),
 (f) , 120 , 121 ,
 365 , or 386 . The request must be filed
 before the Office issues an Office action under 35 U.S.C. 132 or a notice of
 allowance in the application. The suspension will start on the day that the Office
 grants the request for deferral of examination. Once the deferral of examination has
 been granted, the application will not be taken up for action by the examiner until
 the suspension period expires. For example, if an applicant files a request for
 deferral of examination under 37 CFR 1.103(d) for the maximum
 period permitted under the rule in an application that claims priority of a foreign
 application, the action by the Office on the application will be deferred for 36
 months from the filing date of the foreign application, at which point the
 application will automatically be queued for docketing based upon the order in which
 the application was filed in the USPTO.
 

 1. Requirements Form PTO/SB/37 (reproduced at the end of this section) may be used
 to submit a request for deferral of examination under 37 CFR
 1.103(d) .
 

 A request for deferral of examination under 37 CFR
 1.103(d) must include:
 

 
 (A) a period of suspension, in a whole number of months, not
 extending beyond three years from the earliest effective filing date (if the
 request includes no period of suspension or a period that exceeds the
 maximum period permitted under the rule, i.e., beyond 3 years from the
 earliest effective filing date, the Office will assume that the maximum
 period is requested);
 

 (B) the publication fee set forth in 37 CFR
 1.18(d) ; and
 

 (C) the processing fee set forth in 37 CFR
 1.17(i) .
 

 
 The Office will not grant a deferral of examination unless the
 following conditions are met:
 

 
 (A) the application must be 
 
 (1) an original utility or plant application filed under
 37 CFR 1.53(b) or 

 (2) an application resulting from entry of
 an international application into the national stage after compliance
 with 37 CFR 1.495 (the application cannot be a
 design application, a reissue application, or a CPA under
 37 CFR 1.53(d) );
 

 
 

 (B) the application must be filed on or after November 29, 2000
 (the effective date of the eighteen month publication provisions of the
 AIPA); 
 

 (C) the applicant has not filed a nonpublication request under
 37 CFR
 1.213(a) , or if a nonpublication request
 has been filed in the application, the applicant must file a request under
 37 CFR
 1.213(b) to rescind a previously filed nonpublication
 request (see the second check box on the form PTO/SB/37);
 

 (D) the application must be in condition for publication as
 provided in 37 CFR 1.211(c) (if the
 application has been forwarded to the Technology Center by the Office of
 Patent Application Processing (OPAP), the application can be assumed to be
 in condition for publication); and
 

 (E) the Office has not issued either an Office action under
 35
 U.S.C. 132 (e.g., a restriction, a first Office action
 on the merits, or a requirement under 37 CFR 1.105 ) or a
 notice of allowance under 35 U.S.C. 151 .
 

 2. Improper Request If the request is improper, the following form paragraphs may be
 used to notify the applicant of the denial of the request:
 

 ¶ 7.56.02 Request for Deferral of Examination under 37 CFR 1.103(d),
 Denied
 

 Applicant’s request filed on [1] , for deferral of
 examination under 37 CFR
 1.103(d) in the application is denied as being improper.
 [2] 

 See MPEP §
 709 .
 

 Examiner Note:
 
 1. In bracket 1, insert the filing date of the request for deferral of
 examination.
 

 2. In bracket 2, insert the reason(s) for denying the request. For
 example, if appropriate insert --The applicant has not filed a request under
 37 CFR
 1.213(b) to rescind the previously filed nonpublication request--;
 --A first Office action has been issued in the application--; or --Applicant has not
 submitted a request for voluntary publication under 37 CFR 1.221 --. 
 
 
 
 3. Proper Request A supervisory patent examiner’s approval is required for the grant
 of a deferral of examination in an application. If the request is proper, the
 following form paragraph may be used to notify applicant that the request for
 deferral has been granted:
 

 ¶ 7.54.01 Request for Deferral of Examination under 37 CFR 1.103(d),
 Granted
 

 Applicant’s request filed on [1] , for deferral of
 examination under 37 CFR
 1.103(d) in the application has been approved. The examination of the
 application will be deferred for a period of [2] months.
 

 Examiner Note:
 
 1. In bracket 1, insert the filing date of the request for deferral of
 examination.
 

 2. In bracket 2, insert the number of months for the deferral.
 
 
 D. Termination of Suspension of Action Once the request for suspension of action under 37 CFR 1.103 
 has been approved, action on the application will be suspended until the suspension
 period has expired, unless the applicant submits a request for termination of the
 suspension of action prior to the end of the suspension period. The request for
 termination of a suspension of action will be effective when an appropriate official
 of the Office takes action thereon. If the request for termination properly
 identifies the application and the period of suspension has not expired when the
 Office acts on the request, the Office will terminate the suspension and place the
 application on the examiner’s docket. An acknowledgment should be sent to the
 applicant using the following form paragraph:
 

 ¶ 7.54.02 Request for Termination of a Suspension of Action, Granted 

 Applicant’s request filed on [1] , for termination of a suspension of action under 37 CFR 1.103 , has been approved. The suspension of action has been terminated on the date of mailing this notice.
 

 Examiner Note:

 In bracket 1, insert the filing date of the request for termination of the suspension of action.

 
 II. AT THE INITIATIVE OF THE OFFICE Suspension of action at the initiative of the Office should be avoided,
 if possible, because such suspension will cause delays in examination, will increase
 pendency of the application, and may lead to a shortening of the effective patent term
 or, conversely, patent term extension, or adjustment, due to the suspension. Once a
 suspension of action has been initiated, it should be terminated immediately once the
 reason for initiating the suspension no longer exists, even if the suspension period has
 not expired.
 

 37 CFR
 1.103(e) provides that the Office will notify applicant if the
 Office suspends action in an application on its own initiative. Every suspension of
 action initiated by the Office will be limited to a time period of a maximum of 6
 months. An examiner may grant an initial suspension of Office action on their own
 initiative, as in MPEP §
 709.01 and MPEP Chapter 2300 , for a maximum period
 of 6 months. A notification of suspension must be mailed to the applicant for each
 Office-initiated suspension of action, even for second or subsequent suspensions, and
 must include a suspension period (a maximum of 6 months). When the suspension period has
 expired, the examiner should take up action on the application or evaluate all
 possibilities for giving an action on the merits. For example, if a reference is still
 not available after waiting for six months, the examiner should try to find another
 source for the information or update the search to find another reference that can be
 used to make a rejection. If, in an extraordinary circumstance, a second or subsequent
 suspension is necessary, the examiner must obtain the TC director’s approval (see
 MPEP §
 1003 ) and prepare another suspension notification with a
 suspension period (a maximum of 6 months). The notification for a second or subsequent
 suspension must be signed by the TC Director.
 

 Suspension of action under 37 CFR 1.103(f) is decided by the TC
 Director who oversees Licensing and Review.
 

 The following form paragraphs should be used in actions relating to
 suspension of action at the initiative of the Office.
 

 ¶ 7.52 Suspension of Action, Awaiting New Reference

 A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry
 as to the status of the application.
 

 Examiner Note:
 
 1. Maximum period for suspension is six months.

 2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003 .
 

 3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
 
 

 ¶ 7.53 Suspension of Action, Possible Interference

 All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry
 as to the status of the application.
 

 Examiner Note:
 
 1. Maximum period for suspension is six months.

 2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003 .
 

 3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
 
 

 

 

 
 709.01 Overlapping Applications by Same Applicant or Owned by Same
 Assignee [R-11.2013]
 

 In general, examiners should not consider ex parte 
 questions which are pending before the Office in inter partes 
 proceedings involving the same applicant. This situation may arise when at least one
 application or patent of the same applicant that is involved in an interference,
 derivation proceeding, inter partes reexamination or inter
 partes review contains claims which overlap with claims of an application
 (original or reissue) under examination or with claims involved in an ex
 parte reexamination proceeding. An examiner should consult with the TC
 Quality Assurance Specialist to determine the appropriate course of action. 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:53