5 Written questions
5 Matching questions
- 715.07: What evidence do you need to show in the Affidavit?
- to get the 37 CFR 1.130 affidavit there are 2 important points that are easier to meet:
- Order of examination of applications (708, and 37 CFR 1.102 in Charts):
- Review: When amendments are not fully responsive: (37 CFR 1.135)
- Petition to expunge information -
- a must have fee
available for: Information properly submitted that was not found to be material; Info unintentionally submitted in application; Info submitted in incorrect application; Cannot be used for info forming part of the original disclosure, however, applicant can try to petition for a waiver to get originally filed material expunged
- b An amendment being used in reply to an OA must be fully responsive to every issue raised in the OA.
The examiner may accept the amendment to avoid abandonment (this is when the response is bona fide but still missing some items to be fully complete, the examiner will then notify the applicant about the problem and have the applicant fix it).
Bona fide usually means unintentional omission, if the applicant is deliberately leaving something out it is not the same thing.
This does not apply for amendments after the Final Office Action, those amendments (37 CFR 1.116) are only for fixing formal problems that make the application more suited for either allowance or appeal. If an invalid amendment is entered then, the deadline for getting in the amendment continues to run.
For non-final actions, the examiner may notify the applicant that the amendment is incomplete (the applicant has the rest of the SSP + 1.136(a) extension period to file a correct response)
Setting a new time period (only for inadvertent omissions)
- c 1. There does not have to be a common owner or JRA at the time the new invention is made, just a common owner at the present time.
2. The inventions do not have to be patently distinct like is required in 37 CFR 1.131. (terminal disclaimer takes care of that)
- d Briefly, normally apps will be examined in the order in which they are filed and assigned to examiners. However, under some circumstances (seen in 37 CFR 1.102, like apps that are very important to a branch of public service, or apps that have a special petition) then those special-case apps may jump to the front of the line for examination.
- e In order to successfully swear back, the applicant must show facts that the invention was actually made and practiced in the U.S., NAFTA Country, or WTO country prior to the referenced prior art being available. Here are the types of evidence that can show this:
A. attached sketches
B. attached blueprints
C. attached photos
D. attached reproductions of notebook entries (inventor's notebooks are a big deal)
E. an accompanying model
F. attached supporting statements by witnesses (verbal disclosures)
G. testimony from an interference proceeding. The applicant must clearly show which parts of the testimony are being relied upon.
H. Disclosure documents (see infra 1706) may used as documentary evidence of conception.
5 Multiple choice questions
- Normally the reply must reply to every point in the rejection. If it does not, then only a bona fide response will work to toll the time limits (3 month SSP) before the app is considered abandoned. If the submission is considered bona fide, the office will give notice, and 1 month (or 30 days whichever is longer) to complete the reply.
- A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
C. Filing an affidavit under 37 CFR 1.132 to show the earlier app is not by "another" (Claim that the applicants for the new invention are the same applicants as for the prior app too. There probably needs to be at least 1 inventor/assignee in overlap).
D. File an Affidavit under 37 CFR 1.131 showing that this applicantactually invented the invention before the other prior applicant. (This is what Dad was talking about as being stupid and may potentially be fixed). The applicant needs to have some pretty good evidence (that would stand up in court) to show that he actually made the invention before the other competing app. was filed.
E. See C above, amending to claim the benefit of a valid earlier NPA. (See also the big things about international applications too!)
F. See D. above, amending to claim priority over a valid PA.
- For a new patent app, the applicant may claim a deferral for a period up to 3 years after the earliest relied-upon filing date (earliest date the app claims the benefit of, claims foreign priority over, or claims priority over for PAs).
Example: A new app claims foreign priority over a foreign app filed on 20000103. The action will resume on 20030104 (next working day after the 3 year time period).
- 1) This reply must have an answer for every ground mentioned in the rejection of the app.
2) If there is no reply under the SSP + 3 month extension, the app is abandoned.
- even if the invention produces the beneficial result, that is evidence showing the invention is obvious. The applicant's best bet is to try to show that the magnitude of the beneficial effect was so significantly different than what was expected that it ought to be non-obvious.
5 True/False questions
Proprietary information can be submitted if it is believed to be material to patentability: → If it is material, it will be made of record in app
If it is NOT material, it will be resealed and retained in case applicant files a petition to expunge
Will not be made available to public until issuance of the patent
Info submitted in reissue or reexams will be sealed. If important to reasonable examiner, it will become permanent part of app; if not, it will be resealed pending possible petition to expunge
Info that is only favorable to patentability should not be submitted
Certain New Applications getting Accelerated Examinations: If there is a new app that needs examination the applicant, assignee, or atty/agent may get accelerated examination if he: → 1) Submits petition to make special & 37 CFR 1.17(h) fee.
2) Presents all claims to only 1 single invention (no divisionals happening) or if the Office decides there are multiple inventions, the applicant will make an election without traverse as a prerequisite (agree to choose (elect) just one invention if the USPTO thinks the claims are for > 1 invention).
3) Submit a statement saying that a pre-exam search was already made, listing the field of search by class, subclass, publication, Chemical Abstracts, foreign patents, etc (Basically: the applicant submits info from a search done before the examination would begin instead of having the search happen after the examination).
4) Submit one copy each of the references deemed most closely related to the subject matter disclosed in the app if those references are not already on record. (Sounds like an IDS)
5) Submit a detailed discussion of the references, and the discussion should point out with the particularity needed in 37 CFR 1.111(b)(c) how the claimed subject matter is still patentable given those references. (How my invention is different enough from the prior art that it should still get a patent).
Amendments to the Specification: → 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.
Hitting the Pause Button: Suspending & Deferring Action on an App(37 CFR 1.103 in Charts; 709): → Briefly, normally apps will be examined in the order in which they are filed and assigned to examiners. However, under some circumstances (seen in 37 CFR 1.102, like apps that are very important to a branch of public service, or apps that have a special petition) then those special-case apps may jump to the front of the line for examination.
Earliest effective filing date if applicant is claiming foreign priority → If the applicant is claiming foreign priority (35 U.S.C. 119(a)-(d); 35 U.S.C. 365(a), (b)) then the effective filing date is still the date of the U.S. application (unless also claiming a U.S. patent seen above). Remember: foreign priority dates are not the same as claiming a benefit, and have fewer privileges.