PPH: Only requesting subset of claims in OLE

1

The requirements for PPH request at the USPTO (OLE - office of later examination, in this case) include:

  • at least one claim was allowed in office of earlier examination (OEE)
  • all claims requested for PPH correspond to all allowed claims from OEE

My question: is one allowed to request PPH for only a subset of the claims at the OLE office, such that some of the claims get accelerated exam under PPH and the other claims get 'normal' processing? If not, is it common that if only some claims are allowed at the OEE, one will forfeit the corresponding rejected claims at the OLE before requesting PPH?

The best source I could find for this is a FAQ pdf from the USPTO, though I have seen a more rigorous list of eligibility elsewhere.

user132162

Posted 2017-09-15T21:21:41.433

Reputation: 1 166

You cannot have only some claims granted and some still pending, so what would be aim of this? – DonQuiKong – 2017-09-15T21:33:55.330

I thought some claims can be allowed, while others are rejected and will be considered in an RCE? – user132162 – 2017-09-15T21:45:51.193

The examiner can tell you which claims are allowable, but to get a granted patent you need to have only allowable claims. If you have some claims "allowed" and some pending, the patent application as such is still pending. – DonQuiKong – 2017-09-15T22:21:54.203

Yes, and as far as I'm aware one may apply for PPH even if the application is pending, as the relevant requirement is 'at least one claim allowed'. Regardless of whether or not that is the case, I guess I was still interested to know how to deal with the case when OLE claims are not a subset of the OEE claims. – user132162 – 2017-09-16T20:09:31.533

No answers