5 Written Questions
5 Matching Questions
- 715.07: What evidence do you need to show in the Affidavit?
- When an Office Action from the USPTO is defective:
If there are incorrect citations/references or other errors in an Office action:
- 37 CFR 1.135:
- Quality of Evidence:
- Avoiding Publication on an Abandoned App:
- a In order to successfully swear back, the applicant must show facts that the invention was actually made and practiced in the U.S., NAFTA Country, or WTO country prior to the referenced prior art being available. Here are the types of evidence that can show this:
A. attached sketches
B. attached blueprints
C. attached photos
D. attached reproductions of notebook entries (inventor's notebooks are a big deal)
E. an accompanying model
F. attached supporting statements by witnesses (verbal disclosures)
G. testimony from an interference proceeding. The applicant must clearly show which parts of the testimony are being relied upon.
H. Disclosure documents (see infra 1706) may used as documentary evidence of conception.
- b 1) If the applicant notifies the Office within 1 month of the action, then the Office will correct the error and restart the full time period from the date of the corrected OA.
2) If the applicant notifies the Office after 1 month (but still within the reply period), then the Office will correct the error, and give a new time period that is roughly equal to the amount of time that was left in the reply period.
- c If there is no response to an Office Action within the time period specified, the application is abandoned.
- d Remember: EVEN ABANDONED APPS GET PUBLISHED BY DEFAULT. Unless the abandonment happens early enough that the Pre-Grant Publication Division is notified of the abandonment early enough, the application will still get published.
- e Any Objective Evidence must be Supported by actual proof!
Any of the above points has to have proof to support the claim. A simple opinion or atty argument is not enough to count as actual proof for objective evidence. While factual evidence is the best, expert opinions might be allowed as long as they are not on the ultimate legal conclusion (e.g. an expert can testify about science in general, but the expert cannot be used to conclude that the invention is non-obvious).
5 Multiple Choice Questions
- It is the applicant's or atty/agent of record's duty to make records of the substance of the interview.
The substance of the interview on the merits has to be recorded, whether or not agreement on claims was reached or not. (points raised purely on procedure or discussion of typos in the app do not have to be recorded)
The examiner should review the record made by the interviewee and under 37 CFR 1.135(c) should give notice & 1 month to have the interviewee correct deficiencies in the record if there are any.
- 1) the new app is a continuation or substitution for an earlier app AND
2) all claims in the new app:
a) are drawn on the same invention as the earlier app AND
b) the claims were already properly given a final rejection in the earlier app.
3)But it is not proper to give final rejection on the first action when:
a) New issues were raised that required further searching
b) New matter was introduced.
- If you invent a superconductive material, or a process to manufacture or apply superconductivity, then file the petition for making it special. No fee required.
- already granted patents or published patent apps (either in the U.S. or abroad), publications describing the invention (usually in English), sale of the invention (even if the applicant is selling the invention himself, if he waits > 12 months he cannot patent it).
- (a): the invention was known or used by others in this country(meaning the U.S. only), or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, OR
(b): the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, OR
(c): the inventor abandons the invention OR
(d): The applicant already patented or applied for patent on the invention in a foreign country more than one year prior to the date of the application for patent in the United States, OR
(e): (In plain English): If somebody else files a U.S. patent app or international patent app that has an effective filing date before theeffective filing date of the current patent app that claims the same invention, whichever app has the earliest filing date will win.
5 True/False Questions
More on Diligence: → To reply to any Office Action on the merits (3 months is the most common one).
What absolutely has to be in the Petition to make Special? → 1. Has to be in writing;
2. Has to identify the app by the the app # and the filing date.
Whenever there is a final rejection, the normal 3 month SSP applies, but in addition to the 3 month period: → Needed when any claim of an application or patent under reexam is rejected based on prior art before the date of invention
Express Abandonment after the issue Fee is paid: → A. if issue fee is never paid, proceedings terminate the day the fees are due, app is abandoned as of midnight on the due date.
B. If the app was in interference and lost on all of its claims. The app is abandoned on the date that filing for appeal or review was due (assuming appeal is allowed).
C. Proceedings are completely terminated by the Board of Patent Appeals & Interferences.
D. Proceedings terminated after a court decision.
How may presumptions of validity be rebutted? → The applicant will file amendment(s) to reply to final rejections, and the amendments may be non-entered (not part of the official app). This is to buy time to either file an appeal, or to file an RCE under 37 CFR 1.114, possibly a CIP with new matter (37 CFR 1.53(b)), or for design patents a CPA under 37 CFR 1.53(d).