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Archived updates for Thursday, May 12, 2005

USPTO Revising URAA Transitional After Final Practice

For any submission under 37 CFR 1.129(a) ("Transitional procedures for limited examination after final rejection and restriction practice") filed on or after June 8, 2005, the United States Patent and Trademark Office (Office) announced on May 6, 2005 that it is changing its final action practice for the Office action immediately following a submission under the URAA transitional limited examination procedure.

Under the new practice, the next Office action following timely filing of a submission under 37 CFR 1.129(a) (and payment of the fee set forth in 37 CFR 1.17(r)) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits shall be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a). Any information disclosure statement submitted under 37 CFR 1.129(a) without the statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) (in view of applicant’s payment of the fee set forth in 37 CFR 1.17(r)).

Section 706.07(g) of the Manual of Patent Examining Procedure will be revised in due course to reflect this change in practice.

The URAA provided (among other things) for the Office to prescribe regulations to provide further limited (re)examination after final rejection of applications that have been pending for two years or longer as of June 8, 1995, taking into account any reference made in such application to any earlier filed applications under 35 U.S.C. 120, 121, or 365(c). The purpose of this transitional procedure was to facilitate the completion of the prosecution of applications pending in the Office as of June 8, 1995.

Under 37 CFR 1.129(a), if the first submission after final rejection was initially denied entry in the application because (1) new issues were raised that required further consideration and/or search, or (2) the issue of new matter was raised, then the next action in the application will not be made final. Likewise, if the second submission after final rejection was initially denied entry in the application because (1) new issues were raised that required further consideration and/or search, or (2) the issue of new matter was raised, then the next action in the application will not be made final.

This final action practice is having a greater than anticipated effect in working against the completion of prosecution of applications filed before June 8, 1995. In addition, a review of the Statement of Administration Action revealed that the final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) (treating such Office action as the equivalent to a first action in a continuing application) was not the contemplated implementation of the transitional procedure provided for in § 532(a)(2)(A) of the URAA. Therefore, the Office is changing its final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) to bring about the completion of prosecution of applications to which the transitional procedure set forth in 37 CFR 1.129(a) applies.

For more, click on "Changes to the Transitional Procedures for Limited Examination After Final Rejection in Certain Applications Filed Before June 8, 1995" published May 6, 2005.
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