5 Written questions
5 Matching questions
- To revive an application as unintentional revival:
- Most rejections are based on 35 USC 112 first para
- Is preliminary amendment considered part of the original disclosure?
- In a continuation application, the first action can be made final IF
- Most rejections are based on 35 USC 101
- a Not considered part of original disclosure unless filed with original app and later filed oath refers to it
- b the rejection is the same as made in the parent
- c 112 first para (written description, enablement and best mode)
- d 35 USC 101 (patentable subject matter, lack of utility)
- e - the required reply
- a statement that the entire delay was unintentional
- any necessary terminal disclaimer/fee
5 Multiple choice questions
- Applicant generally has 3 months if it comes with an OA and 3 months if it comes separately
2) EOT's are available
3) if no reply--abandoned
- 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
- 1.136 (a) automatic extensions
1.136 (b) extensions for cause
- US application will be rejected if applicant files in another country before receiving a foreign license (if the invention was made in US).
- amendment, request for reconsideration, or filing of a continuation.
5 True/False questions
Is offering the application or the patent rights prior art? → received by PTO before first OA is mailed
Any second or Final Rejection can be appealed but no first action can be appealed except in a → A final rejection can be the first action in a continuing or substitute application, if all claims are to the same invention as the parent application and could have been finally rejected in parent.
If two applications are commonly owned or have a common inventor, what can the patent office do? → the rejection is the same as made in the parent
Amendment is received in PTO before NOA is mailed, but does not get to examiner until after NOA is mailed → the automatic extensions are used up.
If an application is filed before August 25th, 2006, under which categories will special status be granted with a fee? → - prospective manufacture
- safer DNA
- HIV / AIDS and cancer
- Superconductivity materials
- biotech applications filed by a small entity
- For the asking
--claims to a single invention are presented or the inventor agrees to accept any restriction
--the results of a ptentability search are presented
a copy of each reference located is submitted
a detailed dicussion of those references is provided
--the procedure contemplates an interview during the initial three month response period following a first action to resolve