5 Written questions
5 Matching questions
- When do interviews occur?
- A patent application published in the US resulting from an international application entering the national stage is prior art under 102(e) as of its international filing date ONLY IF
- What is a revival?
- Due dates for the following cannot be extended even for cause:
- There is no unrestricted right to entry of amendments after final rejection unless what five conditions occur?
- a 1. IDS
2. Any due date set by statute (such as 6 month absolute deadline set for response to Office Action)
3. The issue fee can now, by statute, be paid late upon a proper showing, but cannot be extended
4. The deadline for responding to a Notice of Omitted Items (2)
5. The three month deadline to obtain a refund for a fee paid as a large entity.
6. Filing Formal Drawings at time Issue Fee is paid.
- b Interviews do not occur before a first office action unless it's a continuation (or CPA) or substitute application
2) No right to an interview after a final rejection
3) Not normally allowed after filing an appeal brief
- c 1) Amendment cancels claims or complies with objections as to form
2) Places case in condition for allowance or better form for appeal
3) Adopts suggestions by examiner
4) Period for reply cannot be extended more than 6 months from the date of the final action
5) If applicant replies within 2 months from date of mailing of final rejection, and the PTO does not issues an advisory action until after the end of the 3 month shortened period for reply, any extension fee will be calculated from the mailing date of the advisory action
- d the IA was published in English.
- e Bringing an abandoned application back to life.
5 Multiple choice questions
- - the required reply
- a statement that the entire delay was unintentional
- any necessary terminal disclaimer/fee
- By filing a written declaration identifying the application; however, express abandonment of the application may not be recognized by the Office unless it is actually received in time to act before date of issue or publication.
- 35 USC 112 second para (particularly pointing out and distinctly claiming.
- 6 months and NO! A response to every Office Action MUST be filed within six months to avoid abandonment.
5 True/False questions
Drawings may be amended by: → establishing a date of invention to remove prior art arising under 102(a) and 102(e) BUT NOT 102(b)
What is the deadline on appeals? → TWO MONTHS.
To test an objection → If a reply to an action is outstanding, the submission must meet reply requirements (37 CFR 1.111). Otherwise, the submission may be
- an IDS
- an amendment
- new arguments
- or new evidence
When will a supplemental reply be considered as a matter of right? → 1) Should be filed after app gets app number and filing date if not filed with original app
2) Should be filed with original app if claims are canceled to reduce the filing fee
3) For CPA's, preliminary amendments must be filed on the filing date of the CPA
Most rejections are based on 35 USC 112 first para → describes objective indications that the invention is not obvious. These are indications that the real world puts a high value on the invention, and include unexpected results, commercial success, failure of others, copying by others, licensing, and skepticism of experts.