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5 Written questions

5 Matching questions

  1. Petition to expunge information -
  2. When a reply is not responsive to every point made in a final rejection:
  3. The Required Response the must accompany the 37 CFR 1.137 Petition:For a PA:
  4. New matter with RCE
  5. Procedural Requirements for a Suspension:
  1. a The RCE may not have new matter! If there is new matter, there must be a CIP instead (with the later filing date).
  2. b must have fee
    available for: Information properly submitted that was not found to be material; Info unintentionally submitted in application; Info submitted in incorrect application; Cannot be used for info forming part of the original disclosure, however, applicant can try to petition for a waiver to get originally filed material expunged
  3. c If there is a CPA or RCE, the request must be filed along with those filings either with a check box on the transmittal form, or as a separate paper.
    If given with an RCE, the RCE must be valid under 37 CFR 1.114 including the 37 CFR 1.17(e) fee that cannot be deferred. Also, a request for suspension does not mean the RCE itself does not need the filing fee.
    if the request is with the CPA, the office must give a filing date to the CPA (it must be a valid CPA).
    The request should specify a whole-number of months (e.g. 2 months) for suspension, and 3 months is the maximum, if no number is given then 3 months is assumed:
    The request needs a processing fee in 37 CFR 1.17(i).
  4. d Filing any outstanding reply on a provisional app.
  5. e Normally the reply must reply to every point in the rejection. If it does not, then only a bona fide response will work to toll the time limits (3 month SSP) before the app is considered abandoned. If the submission is considered bona fide, the office will give notice, and 1 month (or 30 days whichever is longer) to complete the reply.

5 Multiple choice questions

  1. A. During a suspension period (like before entering an RCE) a supplemental reply is allowed by right
    B. Otherwise supplemental amendments are not allowed by right, but could be considered if the amendment is limited
  2. Any app that will: (A) contribute to discovery or development of energy resources; (B) more efficient utilization of and conservation of energy resources. No Fee Required.
  3. A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
    B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
    C. Filing an affidavit under 37 CFR 1.132 to show the earlier app is not by "another" (Claim that the applicants for the new invention are the same applicants as for the prior app too. There probably needs to be at least 1 inventor/assignee in overlap).
    D. File an Affidavit under 37 CFR 1.131 showing that this applicantactually invented the invention before the other prior applicant. (This is what Dad was talking about as being stupid and may potentially be fixed). The applicant needs to have some pretty good evidence (that would stand up in court) to show that he actually made the invention before the other competing app. was filed.
    E. See C above, amending to claim the benefit of a valid earlier NPA. (See also the big things about international applications too!)
    F. See D. above, amending to claim priority over a valid PA.
  4. 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)"
  5. 102(e): If somebody else has an app in already covering the same claims the earlier app wins. (no patent for later app)
    102(f): If the applicant did not actually invent the invention, no patent.
    102(g): If someone other than the applicant made the invention in the U.S. and did not abandon, suppress, conceal it. (your neigbor invents a widget, you cannot claim to have invented it in your application).

5 True/False questions

  1. What does a public proceeding do?A public use proceeding determines whether an invention claimed in an application had been in public use or on sale over 1 year before filing of application.

          

  2. What is considered objective evidence?Remember, the SSPs are shortened periods, the statutory max is still 6 months. So, under 37 CR 1.136(a) the applicant may request an extension of time such that the SSP + Extension == 6 months total.
    A 37 CFR 1.136 request is automatic as long as it is properly made and the fee is paid.
    The request for extension does not have to come during the SSP! It may be allowed at any date up until the last day of the 6 month statutory period.
    The 1.136(a) request may be filed along with the reply in question, before it is filed, or even after it is filed. However: if the 1.136 request is filed after the reply, then the reply's effective date will be considered the date that the extension was requested (this effectively bars making a 1.136(a) request after the max 6 month period is over).
    Under 37 CFR 1.136(b) there are other ways to request an extension, but 1.136(b) is not automatic, the applicant usually has to show good cause for why an extension should be granted. Remember: 1.136(b) only applies when 1.136(a) is not available, AND the 6 month maximum is still absolute, 1.136(b) cannot defeat it.

          

  3. Common Ownership:This means that a party or multiple parties had 100% ownership of both the prior invention and the the new invention at the time the new invention was invented.

    Example: A & B are wholly-owned subsidiaries of MegaCo, and A invents invention X, followed by invention X' (an obvious improvement on X) from B. Since MegaCo owned A & B fully, it is the common owner of both X & X' and will not have prior art problems.
    It works for assignment too: Companies A & B have an agreement to assign each other all inventions made. Employee X of company A has an agreement to assign all of his inventions to company A (but the agreement says nothing about company B). The invention goes from: X -> A <-> B and A & B are both common owners of the invention. Either A or B may then invent X' and not have to worry about prior art from X.
    However: Same example as above, but say that the assignment agreement is only concluded after B has invented X'. In this case, B was not a common owner of X, and A was not a common owner of X', so X' would fail on the 102(e)(f)(g) claims.

          

  4. Getting Extensions of Time (1.136):Remember, the SSPs are shortened periods, the statutory max is still 6 months. So, under 37 CR 1.136(a) the applicant may request an extension of time such that the SSP + Extension == 6 months total.
    A 37 CFR 1.136 request is automatic as long as it is properly made and the fee is paid.
    The request for extension does not have to come during the SSP! It may be allowed at any date up until the last day of the 6 month statutory period.
    The 1.136(a) request may be filed along with the reply in question, before it is filed, or even after it is filed. However: if the 1.136 request is filed after the reply, then the reply's effective date will be considered the date that the extension was requested (this effectively bars making a 1.136(a) request after the max 6 month period is over).
    Under 37 CFR 1.136(b) there are other ways to request an extension, but 1.136(b) is not automatic, the applicant usually has to show good cause for why an extension should be granted. Remember: 1.136(b) only applies when 1.136(a) is not available, AND the 6 month maximum is still absolute, 1.136(b) cannot defeat it.

          

  5. nfringement: In a situation where the app will disclose an invention that is already being actually infringed (not just potential infringement) on the open market, then a petition by the applicant, assignee, atty/agent of record accompanied by the fee (37 CFR 1.17(h)) may be made to make the app special if the petition states: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

          

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