5 Written Questions
5 Matching Questions
- What if examiner thinks applicant's statement is not complete?
- Suspension for Statutory Invention Registration (SIR) if:
- Which three entities can suspension of action be performed by?
- Submission with a RCE if a reply to an OA is outstanding
- What factors should be considered in whether a preliminary amendment "unduly interferes" with preparation of first OA?
- a Examiner may give the applicant 1 month time period to complete the reply
- b 1) nature of changes to claims or spec that would result from entry of amendment;
2)state of preparation of first OA as of date of receipt or pre. Amendment
- c 1) submission must meet requirement of section 1.111 in order to continue prosecution.
Payment of the fee for an RCE does NOT toll the running of any time period set for reply.
- d PTO accepts a request to publish an SIR in the application
- e 1) Applicant
2) the PTO
3) overlapping applications by same applicant or assignee
5 Multiple Choice Questions
- 1) Interviews in conference room
2) Videoconferencing are okay (amended)
- 1) Applicant(s)
3) Attorney of record
4) Attorney not of record but acting in representative capacity
- Applicant must be ensure the substance of the interview is made of record in the app--often the examined agrees to do it. Full response to OA is still required.
- Petition to director
- 1) Good and sufficient cause
2) Applicant must specify time of requested suspension (not to exceed 6 months)
3) must pay fee (unless PTO's fault)
4) no response can be due from applicant (i.e., no outstanding Office Actions)
5 True/False Questions
Notice of Allowability → Application are examined in order in which they are filed in the US. (Applications are examined on a first come, first served basis)
When is a final rejection improper? → A final rejection is not proper if it is:
1) the first office action in a CIP at least one claim includes subject matter not present in parent;
2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter
Prospective manufacture → 1) sufficient capital facilities
2) will not manufacture w/o granted patent
3) will manufacture if patent is granted
4) made a prior art search or has good knowledge of prior art
Amendment is received in PTO before NOA is mailed, but does not get to examiner until after NOA is mailed → No limit as long as done before aboandoned
What is the limit for a Request for Continued Examination (RCE)? → No limit as long as done before aboandoned