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5 Written questions

5 Matching questions

  1. In an application that was abandoned for failing to pay the issue fee, publication fee, or a maintenance fee:
  2. What are the 3 requirements for deferral of Examination instead of Suspension of Examination
  3. Requesting an extension
  4. unavoidable
  5. 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:
  1. a 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. b The reply should have whatever fees are owed to the Office.
  3. 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)
  4. d When an employee makes a clerical error that is the sole cause of the delay in making the reply, and the business had a process that would normally work to get the reply made, and that the employee was trained and exercised due care then the delay could be seen as unavoidable.
  5. e The initial time period for reply is set for a shortened statutory time period of 2 months, with the 37 CFR 1.136(a) option to extend by an additional 4 months.

5 Multiple choice questions

  1. filing a US patent application
  2. By Law (35 U.S.C. 133) there is a statutory time limit for replying to office actions of 6 months. However, the USPTO is allowed to use SSPs (Shortened Statutory Periods) and does so in almost all cases.
  3. Under 37 CFR 1.3, any paper that violates the decorum rules of the USPTO will not be entered into the apps record, and will never be published.
  4. 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).
  5. 1. If the reference publication for the prior art is > 1 year older than the effective filing date (statutory bar under 35 U.S.C. 102(b)).
    2. Where the referenced U.S. patent or application (102(e) prior art)claims the same invention as the app under question. (this would create an interference case).
    3. If the prior art is a foreign patent or app (it could even be owned by the same applicant or the same assignees) that was filed > 12 months prior to the U.S. application date. (Remember the 102(b) statutory bar as well as the 12 month requirement for claiming priority over foreign apps!!)
    4. If it is proven that the effective filing date for the app is actually priorto the date of the referenced prior art, then the affidavit is actually not necessary since the prior art should never have been referenced in the first place. (Remember, the affidavit is only for when the actual invention is before the prior art, if the effective filing date is already early enough, no need to swear anything back!)
    5. Where the reference is to a prior U.S. patent or app issued to the same entity claiming the same invention. (This is known as "double patenting" and obviously, you can only get the patent once).
    6. Where the reference is the disclosure of a prior U.S. patent to the same applicant (At this point, you should be trying to claim the benefit of the earlier app since it is not logical to swear back on your own invention).
    7. Where the applicant has clearly admitted on the record that the subject matter in the reference is prior art (Something like an IDS statement or a statement in an interview. Think: Equitable Estoppel).
    8. Where the subject matter in the prior art is covered under 35 U.S.C. 102(f) (remember: f is where the applicant or common owner did not actually invent the earlier invention)
    9. Where the subject matter is prior art under 35 U.S.C. 102(g) (This isinterference where the same subject matter exists in 2 different patent apps. There are separate procedures for interference so swearing back is not an option).
    10. Similar to #9 but in this case, the applicant has already lost the interference claim. (102(g) is when there is an interference on a claim and the applicant loses, under res judicata the issue has already been decided by the USPTO, so it is not possible to swear back at this point).

5 True/False questions

  1. When is an affidavit or declaration of prior invention needed?Oath or declaration established invention of the subject matter; and If conception - applicant must SHOW (alleging is not enough) evidence of facts establishing diligence

          

  2. New matter with RCEWhen 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).

          

  3. As usual, the evidence from the prima facie prior art references that says the invention is obvious has to beOath or declaration established invention of the subject matter; and If conception - applicant must SHOW (alleging is not enough) evidence of facts establishing diligence

          

  4. 3 Major needs for common ownership:This means that a party or multiple parties had 100% ownership of both the prior invention and the the new invention at the time the new invention was invented.

    Example: A & B are wholly-owned subsidiaries of MegaCo, and A invents invention X, followed by invention X' (an obvious improvement on X) from B. Since MegaCo owned A & B fully, it is the common owner of both X & X' and will not have prior art problems.
    It works for assignment too: Companies A & B have an agreement to assign each other all inventions made. Employee X of company A has an agreement to assign all of his inventions to company A (but the agreement says nothing about company B). The invention goes from: X -> A <-> B and A & B are both common owners of the invention. Either A or B may then invent X' and not have to worry about prior art from X.
    However: Same example as above, but say that the assignment agreement is only concluded after B has invented X'. In this case, B was not a common owner of X, and A was not a common owner of X', so X' would fail on the 102(e)(f)(g) claims.

          

  5. Amendments that are filed after a Final Rejection (714.12, 714.13) (like a 37 CFR 1.116 amendment in response to the final rejection):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.

          

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