5 Written questions
5 Matching questions
- When amendments are received by the Office AFTER the mailing of allowance (but the amendment's effective date is before the allowance):
- More 37 CFR 1.292 Public Use Proceedings:
- If the postmark of the OA is later than the actual date stamped on the OA: (it got sent late, not necessarily delayed in transit) The previously set time period is reset if:
- supplemental amendments are not allowed by right, but could be considered if the amendment is limited to the following six resolutions:
- Abandonment for Failing to Reply During a Statutory Period: (711.02; 37 CFR 1.135)
- a After the petition is properly filed it is up to the examiner to make a determination if the evidence in the petition creates a prima facie case that the invention was in use or on sale in the U.S. > 12 months before the effective filing date.
+ If the determination is that the prima facie case is not established.... the process is over, nothing more will be done (no appeal by the 37 CFR 1.292 petitioner)
- b 1) The petition is filed within 2 weeks of receipt of OA; and
2) the reply period had to be for: payment of the issue fee (getting a granted patent), or the reply period was only a 1 month/30 day reply period; and
3) The petition includes this evidence:
1. Evidence showing the actual date of receipt at the correspondence address
2. A copy of the original envelope showing the postmark date (used to prove the date on which the OA was actually sent)
3. Statement setting forth the fact that the OA was received on the date show by the evidence in (1) and that the envelope in (2) actually contained the OA.
- c Generally entry into the record for these amendments is up to the examiner, who may reject them. The rule for these amendments matches the rule for ones that actually are sent after the allowance is made (37 CFR 1.312 below).
- d If either (A) the applicant never replies to an OA, or (B) the reply is considered insufficient (not everything needed for the reply is given) then the USPTO
- e cancellation of a claim
adoption of examiner's suggestions
placement of the app into the condition of allowance (correcting the app to allow it to issue)
reply to an OA that was made after the original reply was filed
correction of typos and other formal errors; OR
simplification of issues for appeal.
5 Multiple choice questions
- Consider the delay that caused the original abandonment
Consider the actual delay in filing the 37 CFR 1.137 petition to revive the app itself (anything > 3 months will be read against the "unintentional" or "unavoidable" claims)
Under 37 CFR 1.137(d) the petition needs to have a terminal disclaimer(remember a terminal disclaimer will shorten the life of the patent from the normal 20 years from filing time).
This disclaimer fee only applies to design patents OR other patent apps that were filed before June 8, 1995 (modern apps do not need the disclaimer fee anymore)
- A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
C. Perfecting Priority (35 U.S.C. 120) within the time period of 37 CFR 1.78(a), by amending the spec to make a specific reference to a prior app (or by filing an ADS with the reference) and by establishing that the prior app satisfies enablement and description requirements ofr 35 U.S.C. 112. (Try to refer back to a previous app, remember there needs to be at least 1 common inventor/assignee, and the claims have to be supported by the prior valid application).
D. Perfecting a priority claim under 35 U.S.C. 119(e) for a prior PA. Remember that to get priority the NPA the NPA has to be filed within 12 months of the original PA. So, under a 102(b) rejection (which is for an invention being known for > 12 months) there is always going to have to be an intermediate NPA in there somewhere that keeps the chain intact to get the original filing date of the PA.
- 1) the reply will be reconsidered and reexamined.
2) Notification will be made to the applicant of allowances/rejections and the applicant can reply under 37 CFR 1.111 unless the action is final.
- This is where the applied for inventions are not identical but they are also very similar (a 1.131 affidavit requires the inventions to be significantly different, this is an in-between, it is not a double-patent since the claims are not identical, but the claims are still very close together).
There has to be a terminal disclaimer on claims that are very similar to the prior art (shortening the life of the claims to that of the prior patent)
There has to be an oath of common ownership between the prior art and the new patent.
However, to get the 37 CFR 1.130 affidavit there are 2 important points that are easier to meet
- The usual operation for patent examinations is a FIFO where applications go to the appropriate Technology Center (TC) and often sit on the document racks for months+ waiting to be examined. However, under some circumstances (37 CFR 1.102) applications for certain types of inventions can move ahead in the queue. In order to do so, there must be a petition with a good-faith statement that the app in question should qualify for expedited review. Sometimes there is also a petition fee, but for some types of inventions the fee is waived by statute.
5 True/False questions
37 CFR 1.136(a) Procedures: (710.02(e)) → 1) These are automatic unless prohibited by statute, a CFR rule, or if the applicant has been informed that there is no extension by the Office.
2) The applicant may include the request for extension within the time period of the extended request, along with a fee (which is reduced by 50% for SES applicants). The request may be on a separate paper, included as part of the cover letter, or anywhere else on the submission.
3) The applicant can make the requests preemptively in the applicantion by:
A. authorizing in the original app that any reply requiring a petition for time extension should be treated as having the request automatically.
B. There is also an authorization for charging the extension fee that should be made indicating the Patent Deposit Account number to use in making the withdrawals for the fee.
4) Simply paying the 37 CFR 1.136(a) extension fee at the time of submitting the response (assuming it is after the SSP and before the 6 month max) the applicant is constructively making a request for extension.
Applicant's Health: → I don't feel so good! If the applicant makes a petition with evidence (like a doctor's certification) that she is in poor enough health that she may not be able to assist in the prosecution process, then the app may be made special. No fee required.
As usual, the evidence from the prima facie prior art references that says the invention is obvious has to be → weighed against the evidence that the results were not expected and significantly different from the teachings of the prior art.
An RCE has to be filed when prosecution of an app is closed. "Closed" means: → 1. the app is under appeal
2. there has been a final rejection under the last Office action.
3. there has been a notice of allowance (the claims are being allowed)
4. Any action that closes prosecution (meaning no more exams are being made). Example: Ex parte Quayle where the claims are substantively OK, but the app needs to have formal corrections made before it is finalized.
Remember: an RCE is not the same thing as a 37 CFR 1.53(b) continuation. For design patents, the CPA is sued instead, but remember, there is no CPA for a utility or plant patent.
The Law on Prior-Art 35 U.S.C. 102: An inventor is entitled to a patent on the invention unless... → (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.