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5 Written Questions

5 Matching Questions

  1. What is the purpose of affidavits or declarations
  2. 37 CFR 1.135(b):
  3. The basics of the Examination Process:
  4. When an Office Action from the USPTO is defective:

    If there are incorrect citations/references or other errors in an Office action:
  5. Manufacture: an application for an invention that has prospects of going into manufacture soon could get expedited treatment as long as there is a fee (37 CFR 1.17(h)) paid and a statement by applicant, assignee, atty/registered agent says:
  1. a 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.
  2. b Examiner will review the file to make sure all the necessary elements (oath, spec, claims, drawings, etc.) are present.
    The claim then gets put on a storage rack waiting for the first Office action.
    When the examination begins, the examiner (1) reads the spec and claims, and then (2) searches prior art.
  3. c Purpose is to demonstrate any fact to justify patentability; e.g., commercial success, unexpected results, the cited reference is the applicant's own work or was derived from applicant
    Needed when claims are rejected or objected to
  4. d A. that there is sufficient capital/materials/facilities to make the invention now, or that if the patent is granted there will be sufficient capital/materials/facilities to make the invention. AND
    B. That the invention will not get manufactured, or that manufacture will not increase, unless the patent is granted. AND
    C. That the prospective manufacturer has obligated itself to manufacture the invention in quantity in the US, and to begin immediately upon allowance of the claims or the issuance of the patent. AND
    D. The applicant or assignee has already made or caused to be made a careful & thorough search of prior art, or has a good knowledge of the pertinent prior art.
    The applicant has to supply a copy of each reference if not already on file with the USPTO (sounds similar to an IDS).
  5. e (A) An admission or denial of amendment to an app after final rejection, is not enough to save the app from abandonment; (B) admission of or refusal to admit an amendment that is not responsive to the last Offie action is also not enough to save the app from abandonment. (Get it within the deadline, just because the USPTO accepts an amendment will not absolve the applicant from having to meet deadlines.)

5 Multiple Choice Questions

  1. 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.
  2. 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.
  3. Printed Matter: The text of a book is not patentable (a mechanism to make a book might be, but not the text itself).
    Naturally Occurring Articles: You cannot patent a plant/animal found in nature (genetically engineered ones are different). Example: Peeled shrimp are not patentable (although a new mechanism to actually peel the shrimp could be).
    Scientific Principles: Theoretical discoveries that are not actual inventions cannot be patented.
  4. there is a preliminary hearing on the matter. Both parties will be notified that the hearing will take place. The Office of Patent Legal Administration (OPLA) handles the hearing and will make the decision on the petition. At the hearing there can be testimony taken using similar procedures to testimony in interference hearings.
  5. If there is no response to an Office Action within the time period specified, the application is abandoned.

5 True/False Questions

  1. When the app was actually abandoned, but circumstances allow the app to be Revived: (37 CFR 1.137)Once the remaining claims have been allowed, then amendments are not allowed on the merits of the patent, only for correcting formal errors.


  2. Biotechnology Apps (706.02(n)):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.


  3. Unavoidable Abandonment: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.


  4. Limited action after final rejectionFile the petition to make it special. The 37 CFR 1.17(h) fee is required.


  5. If an expert claims 'disbelief' that an invention will work (and if it actually is proven to work) thenA. That there is an infringing product actually on the market or in use.
    B. That a rigid comparison of the infringing product with the claims of the current app will show that the subject matter disclosed & claimed in the app is unquestionably infringed upon by the other product.
    That the applicant has made a careful & through search of prior art or has good knowledge of pertinent prior art. (one copy of each referenced prior art necessary).


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