5 Written questions
5 Matching questions
- As usual, the evidence from the prima facie prior art references that says the invention is obvious has to be
- Evidence Needed to Prove the JRA:
- Hitting the Pause Button: Suspending & Deferring Action on an App(37 CFR 1.103 in Charts; 709):
- More on Diligence:
- The Law on Prior-Art 35 U.S.C. 102: An inventor is entitled to a patent on the invention unless...
- a (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.
- b Once the examiner has the prima facie case of obviousness made, the burden of overcoming the obviousness is back on the applicant. Just as with the common ownership, the applicant must clearly show that the invention is within the scope of the JRA, and that the JRA was in effect before the later invention was made.
- c weighed against the evidence that the results were not expected and significantly different from the teachings of the prior art.
- d Under some circumstances the applicant may request that the Office suspend or defer action (the examination process) on a patent app. HOWEVER: suspension cannot be made if there is an outstanding reply to an Office action that is due (you can't suspend when you owe a response to the USPTO). Also, unless the suspension is requested at the same time as a valid CPA or RCE request, the Office will require the applicant to show "good cause" for why the suspension should be granted.
- e Just like with other forms of evidence in the affidavits, it is not sufficient to merely allege diligence, there must be facts showing the diligent work. For example, even if the applicant is doing nothing, he may be 'diligent' if he can show evidence that there is a valid reason for inaction, and that this reason means the applicant was actually being diligent.
5 Multiple choice questions
- Before or after the first examination and OA is made.
- A JRA is different than common ownership in that multiple parties do not have to share or assign ownership of inventions back & forth. For example, if a University A has a JRA with corp. B, then A can invent X under the JRA, but retain ownership of X, while B may invent X' (normally defeated under 102(f)(g)) and still get a patent on it because of the JRA. B still does not own X, and A still does not own X'.
However: If there is a JRA that comes into effect AFTER the new invention is made, the new invention is not covered.
Also: JRA's are often narrow, so a JRA covering invention Y will not allow the partner to make a new invention X' based on the partner's previous invention X. (Look at thetime and scope of the JRA to determine if it works).
- 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.
- Any app that will: (A) contribute to discovery or development of energy resources; (B) more efficient utilization of and conservation of energy resources. No Fee Required.
- To reply to any Office Action on the merits (3 months is the most common one).
5 True/False questions
Actual practice after final rejection → 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).
Deadlines & Considerations for a 1.137 petition to revive: → 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)
Who may file an affidavit of prior invention? → Inventor; Assignee (when affidavit from inventor cannot be produced); Owner of patent under reexam; and Party qualified when inventor is dead, insane, or refuses to sign
1 Month Deadlines (not less than 30 days for Feb. months): → 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.
Improper RCE's: → After a final rejection, if a proper RCE is entered to the Office, the Office will withdraw the finality of the action, and begin re-examining the application with the amendments in the RCE. (With a proper RCE you get a new examination).
Remember, the proper RCE needs to include (or to have an earlier filed) response to EVERY ground stated in a final rejection in order to make it viable to be re-examined.