5 Written questions
5 Matching questions
- Can prosecution be suspended in a reexamination?
- Most rejections are based on 35 USC 112 first para
- What is the purpose of these dates?
- Can you petition for suspension of action while there is an action outstanding?
- Every response by an applicant must
- a 112 first para (written description, enablement and best mode)
- b No.
- c no.
- d 1) Reply to every rejection and objection in OA
2) Be a bona fide attempt to advance case to final action
3) Be in writing, typed or written in permanent ink and proper size paper
4) Be properly signed
- e To establish the applicants own right to a patent, and also move back the date of the applicant invention as prior art under 35 USC 102 (g) during an interference preceding.
5 Multiple choice questions
- 1. US patents or published applications and PCT applications (having an international Application date after Nov 29, 2000) designating the US which are published in English, all have 102(e) dates once they publish
2. The prior art date is the earliest effective US filing date or International filing date once the US application or International Application has published.
- a protest or a Public Use Proceeding.
Protests are covered in chapter 1900
- still expire at 12 months.
- 1) Prosecution must be CLOSED
2) Applicant must request RCE by filing submission and fee PRIOR TO the earliest of payment, abandonment, and filing notice of appeal
3) RCE is entitled to benefit of a certificate of mailing (CPAs are not)
4) A request for a CPA filed in an app having a filing date on or after May 29, 2000 for which CPA practice is not available (utility) will be treated as RCE
- CFR 1.131 and 1.132
5 True/False questions
What is a supplemental reply? → If a reply to an action is outstanding, the submission must meet reply requirements (37 CFR 1.111). Otherwise, the submission may be
- an IDS
- an amendment
- new arguments
- or new evidence
Can oaths be amended? → No, they just be supplemented or replaced. They cannot be amended except for information disclosed in ADS, ie address and bibliographic information.
After a First Official Action, the ball is returned to the Examiner, so is an extension required if Examiner amends? → "enter" the amendment because it raises new issues, or does not place the application in better condition for appeal.
Amendments After Notice of Allowance → 1) Failure to Reply
2) Express Abandonment
3) Termination of Proceedings
How will any reply that states the information required to be submitted is unknown or is not readily available be treated? → It will be accepted as a complete reply--safe harbor