5 Written questions
5 Matching questions
- Review: When amendments are not fully responsive: (37 CFR 1.135)
- Prior art might include:
- 716.10 Attribution:
- Unexpected Results:
- The main sequence (5 steps) for how claims are treated by the USPTO is:
- a 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).
- b already granted patents or published patent apps (either in the U.S. or abroad), publications describing the invention (usually in English), sale of the invention (even if the applicant is selling the invention himself, if he waits > 12 months he cannot patent it).
- c This is when there is prior art or a previous patent app where the subject matter is not being claimed and it turns out the inventor of the invention is the same author of the prior art. Assuming the 102(b) statutory bar is not in place, then the author has 2 options: (1) swear back the reference under 37 CFR 1.131 or (2) make an unequivocal affidavit that the same applicant for the patent created the referenced art under 37 CFR 1.132.
- d 1. examine patent, claims, search prior art ->
2. If rejecting a claim, issue first rejection ->
3. Applicant may appeal under 37 CFR 1.111, may have amendments (but no new matter!) to back the appeal ->
4. If not accepted, a second rejection (that is usually a final rejection) is issued ->
5. If there is a final rejection, then the applicant has 1 more chance under the (narrower) 37 CFR 1.116 to appeal the final rejection.
- e 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)
5 Multiple choice questions
- Generally entry into the record for these amendments is up to the examiner, who may reject them. The rule for these amendments matches the rule for ones that actually are sent after the allowance is made (37 CFR 1.312 below).
- If either (A) the applicant never replies to an OA, or (B) the reply is considered insufficient (not everything needed for the reply is given) then the USPTO
- Oath or declaration established invention of the subject matter; and If conception - applicant must SHOW (alleging is not enough) evidence of facts establishing diligence
- If the app is a CIP of a proper U.S. app or IA, any claims in the new app that are not supported by the parent app (new matter) will get the filing date of the new application (new matter, new filing date). However, other claims that are fully supported by the parent apps (not new material) are still given the effective filing date of the earlier parent application.
- 1. the app is under appeal
2. there has been a final rejection under the last Office action.
3. there has been a notice of allowance (the claims are being allowed)
4. Any action that closes prosecution (meaning no more exams are being made). Example: Ex parte Quayle where the claims are substantively OK, but the app needs to have formal corrections made before it is finalized.
Remember: an RCE is not the same thing as a 37 CFR 1.53(b) continuation. For design patents, the CPA is sued instead, but remember, there is no CPA for a utility or plant patent.
5 True/False questions
Inventions for Countering Terrorism: → 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.
More on Diligence: → Just like with other forms of evidence in the affidavits, it is not sufficient to merely allege diligence, there must be facts showing the diligent work. For example, even if the applicant is doing nothing, he may be 'diligent' if he can show evidence that there is a valid reason for inaction, and that this reason means the applicant was actually being diligent.
When an Office Action from the USPTO is defective:
If there are incorrect citations/references or other errors in an Office action: → 1) If the applicant notifies the Office within 1 month of the action, then the Office will correct the error and restart the full time period from the date of the corrected OA.
2) If the applicant notifies the Office after 1 month (but still within the reply period), then the Office will correct the error, and give a new time period that is roughly equal to the amount of time that was left in the reply period.
When must an affidavit or oath of declaration of prior invention be filed? → Must be filed before final rejection; before appeal; after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195; under 129
Evidence Needed to Prove the JRA: → In order to prove this, (1) the applicant or applicant's atty/agent of record must make a statement to the effect that the prior inventions and the new invention were all commonly owned; (2) the statement should be clear & conspicuous (on a separate sheet as part of the app) to notify the examiner.
Example: "Application X and Patent A were, at the time the invention of Application X was made, were both owned by Corp. Z (common owner)"