5 Written questions
5 Matching questions
- Any new (not previously examined) application require a fee if
- How will authorization to charge all required fees be to a deposit account be treated?
- Final Rejection
- Who can perform express abandonment?
- Express abandonment after receipt of Notice of Allowance
- a 1) claims are to a single invention
2) a search was made
3) provides copies of closest references
4) provide detailed discussion of references and why claims are patentable over them. If not met applicant gets second chance to meet them
- b 1) Applicant with assignee's consent
3) Attorney/Agent of record
4) Attorney/Agent not of record, who acts in a representative capacity when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application
- c A final rejection is any second or later rejection, unless: new rejection of claim that was not added or substantively amended; rejection is based on newly cited art other than info submitted and IDS.
- d Applicant should submit declaration along with a petition to withdraw the application from issue and fee.
- e As a constructive petition for extension of time
5 Multiple choice questions
- 1) Adding new matter to an application (must use a CIP for that)
3) Design applications
4) Patents under reexaminations (reissues are fine)
5) Patents and international application filed before June 8, 1995
6) Application after the filing of notice of appeal or civil suit unless appeal or suit is terminated while application is still pending
- US application will be rejected if applicant files in another country before receiving a foreign license (if the invention was made in US).
- 1) If there is failure to reply it will be automatically become abandoned
2) If applicant replies within the time period but the reply is not fully responsive, the application still may be abandoned (EOT may be given if response appears to be a bona fide attempt to respond)
- 1) infringing product/method is on the market/in use
2) comparison to claims made
3) search of prior art or good knowledge
- 1) PTO will withdraw the finality of any OA
2) Will be treated as request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision
3) If filed after a decision but before filing an appeal, it will serve to reopen prosecution. However, applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board should be removed
5 True/False questions
After applicant's reply → 1) Examiner must respond within 2 MONTHS of receipt
2) Examiner may not make next action a final rejection if it relies on the new material
What is the difference in the treatment of a supplemental oath or declaration and a supplemental reissue oath or declaration? → A supplemental oath or declaration is NOT treated as an amendment, but a supplemental reissue oath or decl. is so treated
How will any reply that states the information required to be submitted is unknown or is not readily available be treated? → As a constructive petition for extension of time
Suspension for Statutory Invention Registration (SIR) if: → A RCE provides a way for an applicant to obtain continued examination of an application after prosecution has closed by filing a submission and paying a fee. If a subsequent action is made final, an applicant can get continued examination again by filing submission and fee.
Period for Reply → 1) Due dates are calculated from PTO mailing date
2) EOT cannot exceed the 6 month statutory period for Office actions