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5 Written questions

5 Matching questions

  1. When is an affidavit or declaration of prior invention needed?
  2. Procedural Requirements for a Suspension:
  3. Express Abandonment after the issue Fee is paid:
  4. Actual practice after final rejection
  5. Whenever there is a final rejection, the normal 3 month SSP applies, but in addition to the 3 month period:
  1. a If there is a CPA or RCE, the request must be filed along with those filings either with a check box on the transmittal form, or as a separate paper.
    If given with an RCE, the RCE must be valid under 37 CFR 1.114 including the 37 CFR 1.17(e) fee that cannot be deferred. Also, a request for suspension does not mean the RCE itself does not need the filing fee.
    if the request is with the CPA, the office must give a filing date to the CPA (it must be a valid CPA).
    The request should specify a whole-number of months (e.g. 2 months) for suspension, and 3 months is the maximum, if no number is given then 3 months is assumed:
    The request needs a processing fee in 37 CFR 1.17(i).
  2. b If the issue fee has already been paid, then the applicant will have to issue the express abandonment letter, along with a 37 CFR 1.313(c) petition to withdraw the patent (and the 37 CFR 1.17(c) fee).
  3. c Needed when any claim of an application or patent under reexam is rejected based on prior art before the date of invention
  4. d 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).
  5. e If there is a reply filed within 2 months of the final Office action, the SSP will expire at the end of 3 months on the FOA or on the mailing date of the Advisory Action whichever is later. (Basically, if the reply is within the shortened 2 month window, then if the Advisory Action is somewhat late, you can get the later date of the Advisory Action or the normal SSP to file appeals or RCE's in addition to normal replies.

    However, the 6 month total time period (SSP + 3 month extension) is still the final time limit after the final rejection

5 Multiple choice questions

  1. The app itself (description/claims/drawings), an IDS, an ADS, oaths/decls, statement claiming SES (small entity), and a petition to make special
  2. 102(e): If somebody else has an app in already covering the same claims the earlier app wins. (no patent for later app)
    102(f): If the applicant did not actually invent the invention, no patent.
    102(g): If someone other than the applicant made the invention in the U.S. and did not abandon, suppress, conceal it. (your neigbor invents a widget, you cannot claim to have invented it in your application).
  3. weighed against the evidence that the results were not expected and significantly different from the teachings of the prior art.
  4. A. If the holding was due to an insufficient reply: The applicant may argue that the reply was actually sufficient.
    B. If the holding was due to a late reply:
    If there is no question that the reply was non-existent or late, then there is no further appeal.
    If the applicant and the examiner disagree as to the dates for the response period and the applicant has a case to show he could have met the deadline, the applicant may attempt to argue the reply was actually on time.
    Petition to Withdraw Holding of Abandonment: (37 CFR 1.181(a))
    Here's a rare find: no fee required to file these petitions.
    Allegations that an OA was never received by the applicant may be in these petitions.
    Also: If the applicant can show proof (using the infamous postcard receipt that establishes a prima facie case for the USPTO receiving documents) that the reply actually was sent to the USPTO on time.
    Or: A certificate of mailing may be used as well. The statements made must be based on the personal knowledge related to the mailing.
    2 Month Deadline: If the applicant fails to file the petition to withdraw the abandonment within 2 months of the mailing date of the Notice of Abandonment, then the petition will not be considered timely, and may be dismissed outright.
  5. Now common ownership is not always necessary if there is a Joint Research Agreement (JRA) between Parties.

5 True/False questions

  1. Deferral of Examination instead of Suspension of Examination (37 CFR 1.103(d)):1) Period of suspension must be a whole-number of months (36 months max) from the earliest effective filing date.
    2) Publication fee (37 CFR 1.18(d)) AND
    3) Processing fee (37 CFR 1.17(i).

          

  2. When the examiner needs more information that is reasonably necessary to conduct the examination, he may request the info from any applicant or assignee of the patent app.1) The examiner may be allowed to compel the disclosure of information if it is reasonably necessary
    2) This information does not have to be the same type of info that is already required to be disclosed in an IDS.
    3) The burden of production for a request is finding info that is reasonably and readily available, which is a much lower burden than required under 37 CFR 1.56(c) disclosure statements.

          

  3. Amendments to the Claims:Drawings must be updated on separate sheets with each amended drawing sheet having: "Replacement Sheet" at the top
    The replacement sheets must be entered no matter what kind of changes are made to an existing drawing (even if it is only to redraw the same picture with better quality)
    Completely New drawings must be on new sheets
    Annotated (marked-up) copies may also be included with the replacement sheets, and may be required if the examiner requests the annotated copies. They should be labeled as "Annotated Sheet"
    The amendment or the previously mentioned "Remarks & Arguments" section should explain the changes made to the drawings.

          

  4. In an application that was abandoned for failing to pay the issue fee, publication fee, or a maintenance fee:A. If the holding was due to an insufficient reply: The applicant may argue that the reply was actually sufficient.
    B. If the holding was due to a late reply:
    If there is no question that the reply was non-existent or late, then there is no further appeal.
    If the applicant and the examiner disagree as to the dates for the response period and the applicant has a case to show he could have met the deadline, the applicant may attempt to argue the reply was actually on time.
    Petition to Withdraw Holding of Abandonment: (37 CFR 1.181(a))
    Here's a rare find: no fee required to file these petitions.
    Allegations that an OA was never received by the applicant may be in these petitions.
    Also: If the applicant can show proof (using the infamous postcard receipt that establishes a prima facie case for the USPTO receiving documents) that the reply actually was sent to the USPTO on time.
    Or: A certificate of mailing may be used as well. The statements made must be based on the personal knowledge related to the mailing.
    2 Month Deadline: If the applicant fails to file the petition to withdraw the abandonment within 2 months of the mailing date of the Notice of Abandonment, then the petition will not be considered timely, and may be dismissed outright.

          

  5. What forms of communication are allowed?Face to face interviews are the standard
    Phone interviews and remote teleconferencing are also available
    Email: is not allowed for interviews without the express prior written consent of applicant or atty/agent of record.
    Video Tapes: The applicant must be able to show the content of the video has a bearing on outstanding issues related to the app.

          

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