5 Written questions
5 Matching questions
- Patentable subject matter is defined in 35 USC 101 as any new and useful:
- Is an interview before filing permitted?
- If amendment is filed after NOA what must be submitted?
- Can you appeal a restriction requirement?
- For an amendment after allowance to be entered, the remarks accompanying the proposed amendment must state the four "whys"
- a 1) Why it's neccessary
2) Why it requires no additional search or examination;
3) why claims are patentable;
4) why claims were not presented earlier
- b No, after asking for a reconsideration by examiner, it must be petitioned to the Commissioner.
- c 1. Why the amendment is needed
2. Why no new search or consideration is required
3. Why any amended or new claims are patentable
4. Why the amendments where not earlier presented
Think- to be patentable, we need a new search earlier.
- d 1. process
4. composition of matter
- e No.
5 Multiple choice questions
- No limit as long as done before aboandoned
- CFR 1.131 and 1.132
- Special application include:
1) made special by petition
2) reissued applications
3) transferred to different examiner
5) ready for allowance
6) ready for final rejection
7) pending more than 5 years
- Applicant should submit declaration along with a petition to withdraw the application from issue and fee.
- Two months but this is not statutory; therefore, it can be extended to 5 months
5 True/False questions
How does the exception to 103 rejections under 102 (e) (f) and (g) work? → A prior invention which would otherwise be prior art under either of these sections is not prior art to determine obviousness if the prior invention and the claimed invention were both, AT THE TIME THE CLAIMED OR LATER INVENTION WAS MADE, owned by the same entity or subject to an obligation to assign to the same entity.
For something to be prior art under 102 (b), the invention has to be what during the offer for sale? → "ready for patenting" therefore capable of enablement
Who can interview? → 1) Inventor/applicant
2) Registered attorney/agent: of record, or using his file, or known by examiner to be local representative of record attorney
Where is an exception to 35 USC 102 (e) (f) and (g) described: → After final rejection or after the applicant has filed a response to a non-official action, the examiner can, if authorized by agent, cause amendments to be made which will place the application in condition for allowance.
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