5 Written questions
5 Matching questions
- Where can interviews occur?
- Period for Reply
- When is a final rejection improper?
- How will authorization to charge all required fees be to a deposit account be treated?
- An untimely response in prosecuting an application results in abandonment. What about reexamination?
- a As a constructive petition for extension of time
- b A reexamination is NOT a patent application, and a reexamination request can neither be abandoned nor withdrawn.
- c 1) Due dates are calculated from PTO mailing date
2) EOT cannot exceed the 6 month statutory period for Office actions
- d 1) Interviews in conference room
2) Videoconferencing are okay (amended)
- e A final rejection is not proper if it is:
1) the first office action in a CIP at least one claim includes subject matter not present in parent;
2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter
5 Multiple choice questions
- 1 month
That IS IT! A total automatic extension greater than 5 months is NOT POSSIBLE!
Rather, the issues must be raised by a motion in the interference
- prior art is the set of circumstances set forth in 35 USC 102 ONLY.
- PTO accepts a request to publish an SIR in the application
- Applicant should submit declaration along with a petition to withdraw the application from issue and fee.
5 True/False questions
Automatic extensions cannot be obtained in six circumstances: → 1. where the Office Action so states
2. A Reply Brief (responsive to an Examiners Answer in an Appeal to the Board of Patent Appeals and Interferences)
3. A request for an oral hearing in an Appeal
4. Responding to a decision of the Board
5. Anything in an interferences
6. Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must filed before that due date
Notice of Allowability → time is not extendable for: submitting an oath or declaration and submitting formal drawings
After applicant's reply → Amendments after final rejection may be entered which means that the Patent Office will proceed on the assumption that they never existed. Amendments sought after Final Rejection and after allowance are subject to special rules. Second and supplemental amendment after final may be refused entry if they unduly interfere with preparation of office action.
Only two procedures are available to challenge whether a pending application should issue: → a protest or a Public Use Proceeding.
Protests are covered in chapter 1900
Most rejections are based on 35 USC 103 → 35 USC 103 (obviousness)