5 Written questions
5 Matching questions
- Unintentional Abandonment:
- Earliest effective filing date for continuation/divisional
- Constructive RTP
- Amendments requested by Examiner:
- The Law on Prior-Art 35 U.S.C. 102: An inventor is entitled to a patent on the invention unless...
- a filing a US patent application
- b The examiner can also make requests for amendments too.
- c If applicant is filing a continuation/divisional of one or more U.S. or international apps, (and if the apps are valid on their own for having filing dates under 35 U.S.C. 120 for U.S. or 35 U.S.C. 365 for IA) then the effective filing date is: the earliest filing date in the line of continuation or divisional apps. (Remember that these apps are not allowed to have any new matter in them)
- d In this case the applicant unintentionally failed to respond to an OA. The applicant could offer proof, or will (if responding promptly enough) be able to swear a statement that the delay was unintentional. Remember, that bad faith on the applicant's part will usually end in the patent being revoked.
- e (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 Multiple choice questions
- 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.
- 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.
- When an invention that might otherwise seem obvious has unexpected positive results then as long as the applicant can produce the objective proof that the positive results occurred and were not actually expected by prior art, then that can go against prior art.
This can include: A much greater effect than expected by prior art (like prior art anticipated a 2x gain, but I got an 8x gain)
Having superior properties than is expected.
Also: absence of a property that actually was expected can also work (like a drug that the prior art taught would be addictive, but unexpectedly turned out not to be addictive).
- If there is subject matter in a prior patent or patent app that isnot covered in the claims of that patent then if there is evidence submitted showing that the applicant for the new patent was the source of the same material in the prior app, then that evidence can defeat the prior art reference.
- The applicant no longer has a right to file amendments, but they are still generally allowed in some instances for amendments that:
Cancel claims (to make all the remaining claims valid for issuance)
Comply with formal requirements (fix typos and other mistakes that do not affect the merits of the app)
Presenting claims in a better form for appeal (if the applicant will appeal the final rejection, this amends the claims to be ready to go into the appeal).
If the amendment actually will affect the merits of the app, it will be accepted only if there is a showing of a good and sufficient reason for why the amendment was not made sooner. (37 CFR 1.116(c))
Amendments that put the app into the correct for for allowance (granting of the patent on whatever claims have been allowed) or for appeal is allowed after final rejection.
ANY OTHER AMENDMENTS that do not meet the above criteria will not be allowed. The Office will issue an Advisory Action to inform the applicant that the amendment is not allowed.
5 True/False questions
After an initial rejection (non-final), the applicant must reply to the Office Action (37 CFR 1.111 in Charts): → 1. clearly label the information as 'trade secret', 'proprietary', 'subject to protective order'
2. File the materials in a separate sealed envelope with a cover letter that identifies the documents.
3. See MPEP 724.02 for more info
4. When the material is submitted, a petition & fee under 37 CFR 1.59 to have the material expunged can be sent at the same time as the material itself.
Petition to expunge information - → Must be made by adding/deleting/replacing a ¶ or §, or by substituting in an entirely new spec.
A ¶ or § must be unambiguously identified using page & line numbers or a ¶ number.
To make a big deletion and use underline for new material
Where the change is [[var]]very small (<>
If you are amending just one ¶, try to use its number (the following amends ¶ 013)
If you are amending one ¶, but are adding in an additional ¶ then the new paragraph gets a decimal number: Original ¶ 013, newly amended ¶¶ 013.1, 013.2 ...
There needs to be 2 copies: one that is marked up with all the changes (As above) and then the final substitute which is a clean copy.
Taking back amendments:
Once something is changed by an amendment, you can't withdraw the changes. The only solution is to file another amendment that changes the app back to the way you want it.
37 CFR 1.136(a) Procedures: (710.02(e)) → The big difference is that Specified Time Limits are not directly written in law, and are made with the examiner's discretion. If an applicant misses a Specified Time Limit, the app is generally not abandoned, but the subject matter that the deadline covered could be lost (like making a disclaimer that no claims may rely on certain subject matter). Also, if an applicant is late by a short time the examiner may still allow the submission at his own discretion.
SSPs are statutory time limits, and as such are much stricter. Also, since SSPs cover responses to Office actions, if the applicant does not respond in time, the application is considered fully abandoned, not just one part of it.
New matter with RCE → The RCE may not have new matter! If there is new matter, there must be a CIP instead (with the later filing date).
Applicant's Age: → Get off my lawn! If the applicant is >= 65 years old, a petition along with proof (like a birth certificate or sworn statement) may make the app special. No fee required.