5 Written questions
5 Matching questions
- Avoiding Publication on an Abandoned App:
- Amdendments After all Claims are allowed (Ex Parte Quayle):
- In an NPA that was abandoned for (1) failure to prosecute (e.g. failure to reply to OA), or (2) file an appeal brief: The required reply is met by:
- Getting Extensions of Time (1.136):
- 37 CFR 1.136(a) Procedures: (710.02(e))
- a 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.
- b Once the remaining claims have been allowed, then amendments are not allowed on the merits of the patent, only for correcting formal errors.
- c Filing the reply that was expected by the OA
Filing an appeal brief if one was expected
OR: for final rejections where prosecution would close, filing an RCE on the application (the revival will make the application copending with any continuing app)
- d 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.
- e Remember, the SSPs are shortened periods, the statutory max is still 6 months. So, under 37 CR 1.136(a) the applicant may request an extension of time such that the SSP + Extension == 6 months total.
A 37 CFR 1.136 request is automatic as long as it is properly made and the fee is paid.
The request for extension does not have to come during the SSP! It may be allowed at any date up until the last day of the 6 month statutory period.
The 1.136(a) request may be filed along with the reply in question, before it is filed, or even after it is filed. However: if the 1.136 request is filed after the reply, then the reply's effective date will be considered the date that the extension was requested (this effectively bars making a 1.136(a) request after the max 6 month period is over).
Under 37 CFR 1.136(b) there are other ways to request an extension, but 1.136(b) is not automatic, the applicant usually has to show good cause for why an extension should be granted. Remember: 1.136(b) only applies when 1.136(a) is not available, AND the 6 month maximum is still absolute, 1.136(b) cannot defeat it.
5 Multiple choice questions
- Short note: A biotech app has to contain both the process and the compositioninformation for the invention together in 1 app OR if it is in 2 apps they both must have the same effective date. Both the process and the composition also have to be owned/assigned to the common owner.
- 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.
- This is generally information that is material to patentability but that isnot considered favorable to patentability
The info that goes into the 37 CFR 1.56 "duty to disclose" statements (IDS; prior art submitted by the applicant) can be put into the sealed envelope for a 724 request
Basically: This is information that needs to be disclosed to let the examiner properly conduct the examination (it's material) but it isnot the favorable basic information needed to actually get the patent (like the parts of the disclosure that the claims directly rely on for patentability).
- The reply should have whatever fees are owed to the Office.
- The invention must be at a stage where the inventor has prepared drawings or other descriptions that are sufficient to enable a person skilled in the art to practice the invention.
5 True/False questions
Quality of Evidence: → 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).
Earliest effective filing date for continuation/divisional → 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)
Say you make a reply, and then before the Office can fully consider it you supplement the reply with a new amendment. The Office usually prefers the original reply to be correct on its own, but supplemental replies are allowed when: → A. During a suspension period (like before entering an RCE) a supplemental reply is allowed by right
B. Otherwise supplemental amendments are not allowed by right, but could be considered if the amendment is limited
3 Month Deadlines: → To reply to any Office Action on the merits (3 months is the most common one).
Environmental Quality: → Any app that has a petition showing the app will disclose an invention that would "materially enhance the quality of the environment". No fee required.