5 Written questions
5 Matching questions
- Establishing the Dates (important if you want to beat the prior art):
- Inventions for Countering Terrorism:
- Applicant's Health:
- The Office has to determine if the information is important to the reasonable examiner in deciding whether or not to issue the application (this is the favorability issue, favorable information that is important to deciding the allowance has to get published).
- Just as with any other prima facie case, the burden is on the applicant to actually hork up the evidence showing that the results were both:
- a If it is important: Tough, the material is going to be cited in the next Office action and will end up in the file history, and will eventually get published. (Info important to the determination cannot be kept secret just because of its proprietary nature. Of course, recall the national security issues which would prevent publishing of the app at all, however, those are different considerations).
If it is not important: The office will re-seal the info back into the envelope, and then hold it waiting for a petition to expunge the record of the proprietary information.
- b I don't feel so good! If the applicant makes a petition with evidence (like a doctor's certification) that she is in poor enough health that she may not be able to assist in the prosecution process, then the app may be made special. No fee required.
- c For swearing back, the inventor does not have to always give the actual date of an invention, just show that the invention happened before the referenced art. However, for showing diligence in the invention (see below) the applicant must have actual dates.
- d unexpected and significant.
- e File the petition, No Fee Required.
5 Multiple choice questions
- A public use proceeding determines whether an invention claimed in an application had been in public use or on sale over 1 year before filing of application.
- Now common ownership is not always necessary if there is a Joint Research Agreement (JRA) between Parties.
- 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).
- (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.
- 1) Petition is filed within 2 weeks of the actual receipt of the OA.
2) A substantial portionof the reply period had already elapsed (like 1 month out of a 2 or 3 month reply period). AND
3) The petition itself has to include:
1. Evidence showing the actual date of receipt of the OA, like copy of the envelope, some evidence showing that the receipt actually was on the later date. AND
2. A statement setting forth the date of the receipt of the OA, and explanation of how the evidence show the receipt was on the later date.
5 True/False questions
718: Another Alternative: Affidavits under 37 CFR 1.130: → These are similar in function to 37 CFR 1.131 (they defeat prior art) but are not the same thing as swearing back.
A 1.132 affidavit is that the invention that is the subject of the prior art reference was actually invented by the same entity responsible for the current application (could be the same inventors or the inventions could have the same assignee)
Remember from the earlier lessons on 103, 102(e)(f)(g) where normally the prior art would defeat the claims, but the same entity (common owner, JRA) was responsible for the earlier invention.
What are the geographical limitations of an affidavit or declaration 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
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.
2 Month Deadlines: → To reply to any Office Action on the merits (3 months is the most common one).
Remember that upon first filing the app will often consist of: → The app itself (description/claims/drawings), an IDS, an ADS, oaths/decls, statement claiming SES (small entity), and a petition to make special