5 Written questions
5 Matching questions
- Quality of Evidence:
- What are the geographical limitations of an affidavit or declaration of prior invention?
- Hitting the Pause Button: Suspending & Deferring Action on an App(37 CFR 1.103 in Charts; 709):
- Earliest effective filing date if applicant is claiming foreign priority
- Special Status for a Small Entity making a Biotech Patent:
- a Under some circumstances the applicant may request that the Office suspend or defer action (the examination process) on a patent app. HOWEVER: suspension cannot be made if there is an outstanding reply to an Office action that is due (you can't suspend when you owe a response to the USPTO). Also, unless the suspension is requested at the same time as a valid CPA or RCE request, the Office will require the applicant to show "good cause" for why the suspension should be granted.
- b prior invention may not be established under this section before Dec 8, 1993 in a NAFTA country or before Jan 1, 1996 in a WTO country.
- c If the applicant is claiming foreign priority (35 U.S.C. 119(a)-(d); 35 U.S.C. 365(a), (b)) then the effective filing date is still the date of the U.S. application (unless also claiming a U.S. patent seen above). Remember: foreign priority dates are not the same as claiming a benefit, and have fewer privileges.
- d 1) Applicant must make petition & pay 37 CFR 1.17(h) fee. AND:
2) state that SES has already been established, or include a statement to establish SES; AND
3) state that the subject of the patent is a 'major asset' of the small entity; AND
4) state that development of the technology will be severely impaired if examination is delayed, and include evidence for why the statement is true.
- e Any Objective Evidence must be Supported by actual proof!
Any of the above points has to have proof to support the claim. A simple opinion or atty argument is not enough to count as actual proof for objective evidence. While factual evidence is the best, expert opinions might be allowed as long as they are not on the ultimate legal conclusion (e.g. an expert can testify about science in general, but the expert cannot be used to conclude that the invention is non-obvious).
5 Multiple choice questions
- If there is a reply filed within 2 months of the final Office action, the SSP will expire at the end of 3 months on the FOA or on the mailing date of the Advisory Action whichever is later. (Basically, if the reply is within the shortened 2 month window, then if the Advisory Action is somewhat late, you can get the later date of the Advisory Action or the normal SSP to file appeals or RCE's in addition to normal replies.
However, the 6 month total time period (SSP + 3 month extension) is still the final time limit after the final rejection
- 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
- Applicant may request a suspension for up to a maximum of 3 months at the time it files for a CPA or RCE. The request has to be filed at the same time as the CPA/RCE.
This is to allow up to 3 months to give the applicant time to write amendments or arguments to put in the CPA/RCE for the next round of examination.
- 1. There does not have to be a common owner or JRA at the time the new invention is made, just a common owner at the present time.
2. The inventions do not have to be patently distinct like is required in 37 CFR 1.131. (terminal disclaimer takes care of that)
- This is where the examiner initially examines the patent app and the prior art.
Almost all the time, the examiner will issue an initial rejection of the claims in the First Office Action taken after the app is received.
The applicant gets back copies of the best references found to support the rejection.
After the first office action, the applicant has the 3 month Shortened Statutory Period (SSP) in which to reply to the Office Action. The SSP may be extended by an extra 3 months under 1.136(a) by paying a fee.
The initial rejection is usually non-final BUT (706.07(b)) sometimes an app may receive a final rejection on the first Office action
5 True/False questions
Amendments to the Specification: → Any amendments to claims need to reproduce all of the claims that have ever existed in the patent app (basically amending claims means putting in a new substitute set of claims)
Each claim has to be listed in the following format:
Claim (): canceled or not entered in which case the claim is never written out)>
Example: Claim 1 (previously presented): A spoon that is too big.
Claims have to be in numerically ascending order
If you have a bunch of canceled or not entered claims that are consecutive, they can be grouped together.
The accepted words to use for the claim's status are:
original (has never been amended)
currently amended (the claim is being updated in this amendment)
previously presented (was amended in a previous round of amendments but is not changed in the current amendment)
withdrawn (even though the claim is withdrawn it must still be written out)
new (a brand-new claim being added by this amendment)
canceled (claim was canceled, it is not written out)
not entered (claim was never formally entered, not written out
What if ALL of this fails and the App Cannot be Revived? → comparative date; unexpected results; commercial success; long-felt but unsolved need; failure of others; skepticism of experts, etc.
Opinion evidence is also entitled to be considered
When the applicant argues that the app was not truly abandoned (Reconsideration of Holding of Abandonment): (711.03) → A. If the holding was due to an insufficient reply: The applicant may argue that the reply was actually sufficient.
B. If the holding was due to a late reply:
If there is no question that the reply was non-existent or late, then there is no further appeal.
If the applicant and the examiner disagree as to the dates for the response period and the applicant has a case to show he could have met the deadline, the applicant may attempt to argue the reply was actually on time.
Petition to Withdraw Holding of Abandonment: (37 CFR 1.181(a))
Here's a rare find: no fee required to file these petitions.
Allegations that an OA was never received by the applicant may be in these petitions.
Also: If the applicant can show proof (using the infamous postcard receipt that establishes a prima facie case for the USPTO receiving documents) that the reply actually was sent to the USPTO on time.
Or: A certificate of mailing may be used as well. The statements made must be based on the personal knowledge related to the mailing.
2 Month Deadline: If the applicant fails to file the petition to withdraw the abandonment within 2 months of the mailing date of the Notice of Abandonment, then the petition will not be considered timely, and may be dismissed outright.
37 CFR 1.136(a) Procedures: (710.02(e)) → 1) These are automatic unless prohibited by statute, a CFR rule, or if the applicant has been informed that there is no extension by the Office.
2) The applicant may include the request for extension within the time period of the extended request, along with a fee (which is reduced by 50% for SES applicants). The request may be on a separate paper, included as part of the cover letter, or anywhere else on the submission.
3) The applicant can make the requests preemptively in the applicantion by:
A. authorizing in the original app that any reply requiring a petition for time extension should be treated as having the request automatically.
B. There is also an authorization for charging the extension fee that should be made indicating the Patent Deposit Account number to use in making the withdrawals for the fee.
4) Simply paying the 37 CFR 1.136(a) extension fee at the time of submitting the response (assuming it is after the SSP and before the 6 month max) the applicant is constructively making a request for extension.
Amdendments After all Claims are allowed (Ex Parte Quayle): → Once the remaining claims have been allowed, then amendments are not allowed on the merits of the patent, only for correcting formal errors.