5 Written questions
5 Matching questions
- 37 CFR 1.135:
- Unintentional Abandonment:
- Whenever there is a final rejection, the normal 3 month SSP applies, but in addition to the 3 month period:
- 9 CRUCIAL Examples Showing 102 in action: (pages 231-240):
- Earliest effective filing date for a CIP
- a 1) File a valid U.S. app on 20001208, no claiming of benefits/priority. The effective filing date is simply 20001208 (nice & easy).
2) Now, file a valid U.S. app on 20010101 that properly claims the benefit of a previous NPA (or claims priority on a previous PA) that was given a filing date of 20000101 (1 year earlier). The effective filing date is allowed to be the earlier 20000101 date! (Everything is within the U.S. here).
3) File a foreign application in a foreign country (Japan) on 19980622. Then later on (but within 1 year to allow for claiming priority on a foreign app) you file a normal NPA in the U.S. on 19990621. The U.S. filing date is the effective filing date even if you are able to claim priority on the foreign filing.
4) File an IA (remember an IA is different than just filing a foreign app) in Sweden (in Swedish) on 20001201 (after the 20001129 date), and it designates the US. On 20010220 WIPO publishes the app IN ENGLISH. Then later on, the app is brought into the U.S. national stage (35 U.S.C. 371(c)). The earliest effective filing date is allowed to be the original IA filing date of 20001129!
5) Take the above example, change the language that WIPO uses in publishing to anything other than English. NOW THERE IS NO DATE AT ALL FOR THE IA BEING BROUGHT TO THE U.S. STAGE UNDER 102(e). The dates used in 102(a) and 102(b) still apply in this case, they will be from the date that WIPO published (200010220), even though it was not published in English.
6) Same IA as seen in 4-5 BUT it was filed before the 20001129 cutoff date: IA filed in Sweden designating the U.S. filed on 20000101. WIPO publishes it on 20010701 (language does not matter). The app is then brought onto the U.S. Stage on 20020701. The earliest effective date under 102(e) is the date that the patent was brought onto the US national stage (20020701). However, remember that for 102(a),(b) the date is still when WIPO published on 20010701.
7) New example: IA is filed in Sweden, with the U.S. designated on 20010301 (after the cutoff). WIPO then publishes IN ENGLISH on 20020901. Later on, on 20030501, there is a BRAND NEW APPLICATION filed under 35 U.S.C. 111 (the normal way to file an app) in the U.S. that claims the benefit of the earlier IA filing. Because WIPO published in English, the U.S. app under 102(e) gets the 20010301 date from the original IA app.
Remember: Normally for foreign filings all you can do is get a foreign priority (with the filing date NOT going back to the foreign filing date), and even then it has to be done within 12 months (this is longer than 12 months). This situation allows a normal U.S. NPA to actually claim the benefit on an IA.
8) Same example as above, but WIPO DOES NOT PUBLISH IN ENGLISH: Because WIPO did not publish in English, the new 102(e) date is now 20030501, the date of the U.S. filing with no benefit claimed to the earlier IA. However, remember that 102(a)(b) are still in play with the date that WIPO published, which in this case is 20020901.
9) Now assume the IA gets filed BEFORE 20001129: IA filed on 20000301 (before the cutoff!) designating the U.S.. On 20010901 WIPO publishes the app (it does no matter what the language is). Later on 20011201 there is a brand new 35 U.S.C. 111 app in the U.S. trying to claim the benefit or priority of the original IA. The IA date doesnot apply, the 102(e) effective date is the same as the U.S. filing date of 20011201! (Before the 20001129 cutoff there was no claiming of a previous IA). However, the WIPO publishing date of 20010901 can still be used under 102(a)(b).
- b If there is no response to an Office Action within the time period specified, the application is abandoned.
- c In this case the applicant unintentionally failed to respond to an OA. The applicant could offer proof, or will (if responding promptly enough) be able to swear a statement that the delay was unintentional. Remember, that bad faith on the applicant's part will usually end in the patent being revoked.
- d 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
- e If the app is a CIP of a proper U.S. app or IA, any claims in the new app that are not supported by the parent app (new matter) will get the filing date of the new application (new matter, new filing date). However, other claims that are fully supported by the parent apps (not new material) are still given the effective filing date of the earlier parent application.
5 Multiple choice questions
- A. that there is sufficient capital/materials/facilities to make the invention now, or that if the patent is granted there will be sufficient capital/materials/facilities to make the invention. AND
B. That the invention will not get manufactured, or that manufacture will not increase, unless the patent is granted. AND
C. That the prospective manufacturer has obligated itself to manufacture the invention in quantity in the US, and to begin immediately upon allowance of the claims or the issuance of the patent. AND
D. The applicant or assignee has already made or caused to be made a careful & thorough search of prior art, or has a good knowledge of the pertinent prior art.
The applicant has to supply a copy of each reference if not already on file with the USPTO (sounds similar to an IDS).
- 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)
- Drawings must be updated on separate sheets with each amended drawing sheet having: "Replacement Sheet" at the top
The replacement sheets must be entered no matter what kind of changes are made to an existing drawing (even if it is only to redraw the same picture with better quality)
Completely New drawings must be on new sheets
Annotated (marked-up) copies may also be included with the replacement sheets, and may be required if the examiner requests the annotated copies. They should be labeled as "Annotated Sheet"
The amendment or the previously mentioned "Remarks & Arguments" section should explain the changes made to the drawings.
- Briefly, normally apps will be examined in the order in which they are filed and assigned to examiners. However, under some circumstances (seen in 37 CFR 1.102, like apps that are very important to a branch of public service, or apps that have a special petition) then those special-case apps may jump to the front of the line for examination.
- Once the remaining claims have been allowed, then amendments are not allowed on the merits of the patent, only for correcting formal errors.
5 True/False questions
What types of material are covered & what is the process on their use? → Examiner will review the file to make sure all the necessary elements (oath, spec, claims, drawings, etc.) are present.
The claim then gets put on a storage rack waiting for the first Office action.
When the examination begins, the examiner (1) reads the spec and claims, and then (2) searches prior art.
Replying to the Request: → 1) making the reply
2) requesting an extension
3) Petitioning that the request is unfair
Prior art might include: → already granted patents or published patent apps (either in the U.S. or abroad), publications describing the invention (usually in English), sale of the invention (even if the applicant is selling the invention himself, if he waits > 12 months he cannot patent it).
HIV/AIDS & Cancer inventions: → File the petition to make it special. The 37 CFR 1.17(h) fee is required.
The Office has to determine if the information is important to the reasonable examiner in deciding whether or not to issue the application (this is the favorability issue, favorable information that is important to deciding the allowance has to get published). → If it is important: Tough, the material is going to be cited in the next Office action and will end up in the file history, and will eventually get published. (Info important to the determination cannot be kept secret just because of its proprietary nature. Of course, recall the national security issues which would prevent publishing of the app at all, however, those are different considerations).
If it is not important: The office will re-seal the info back into the envelope, and then hold it waiting for a petition to expunge the record of the proprietary information.