5 Written questions
5 Matching questions
- When may affidavits and declarations not be submitted?
- Review: When amendments are not fully responsive: (37 CFR 1.135)
- When the app was actually abandoned, but circumstances allow the app to be Revived: (37 CFR 1.137)
- Replying to the Request:
- a May not be submitted if the rejection is based on a US patent to others claiming same patentable invention (interference)
- b 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.
- c In order to get a patent app revived, the applicant must first show that the app was abandoned: 1. Due to unavoidable circumstances (37 CFR 1.137(a)); 2. Due to uninentional oversight in not replying. (37 CFR 1.137(b)). Additionally, since these abandonments are always related to failing to respond or pay a necessary fee on the app, the petition must be accompanied by the proper response for whatever underlying reason created the abandonment in the first place (like if you owed a fee, the fee should be included with the revival petition).
- d 1) making the reply
2) requesting an extension
3) Petitioning that the request is unfair
- e An amendment being used in reply to an OA must be fully responsive to every issue raised in the OA.
The examiner may accept the amendment to avoid abandonment (this is when the response is bona fide but still missing some items to be fully complete, the examiner will then notify the applicant about the problem and have the applicant fix it).
Bona fide usually means unintentional omission, if the applicant is deliberately leaving something out it is not the same thing.
This does not apply for amendments after the Final Office Action, those amendments (37 CFR 1.116) are only for fixing formal problems that make the application more suited for either allowance or appeal. If an invalid amendment is entered then, the deadline for getting in the amendment continues to run.
For non-final actions, the examiner may notify the applicant that the amendment is incomplete (the applicant has the rest of the SSP + 1.136(a) extension period to file a correct response)
Setting a new time period (only for inadvertent omissions)
5 Multiple choice questions
- An RCE creates a new examination, so an appeal and an RCE really don't make sense at the same time. When an RCE is filed during an appeal (but before the appeal decision is made) it effectively withdraws the appeal. Even if the RCE is improper the appeal is withdrawn too!!
- Filing the reply that was expected by the OA
Filing an appeal brief if one was expected
OR: for final rejections where prosecution would close, filing an RCE on the application (the revival will make the application copending with any continuing app)
- If unexpectedly or through the unforeseen fault or imperfection of these agencies (referring to the mail system, to worthyemployees, etc.) and instrumentalities, there occurs a failure, it may be said to be unavoidable
Unavoidable means that it was not possible to file a response all the way up until the petition to revive is filed with the necessary response.
+ There has to be the petition fee (37 CFR 1.17(l))
+ There may have to be a terminal disclaimer too.
+ The burden for unavoidable is higher to meet than unintentional, and its fee is lower too.
- Usually the second rejection after a 1.111 reply is considered a Final Rejection.
- 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
Say you make a reply, and then before the Office can fully consider it you supplement the reply with a new amendment. The Office usually prefers the original reply to be correct on its own, but supplemental replies are allowed when: → cancellation of a claim
adoption of examiner's suggestions
placement of the app into the condition of allowance (correcting the app to allow it to issue)
reply to an OA that was made after the original reply was filed
correction of typos and other formal errors; OR
simplification of issues for appeal.
Abandonment for Failing to Reply During a Statutory Period: (711.02; 37 CFR 1.135) → If either (A) the applicant never replies to an OA, or (B) the reply is considered insufficient (not everything needed for the reply is given) then the USPTO
Petition to expunge information - → Must be made by adding/deleting/replacing a ¶ or §, or by substituting in an entirely new spec.
A ¶ or § must be unambiguously identified using page & line numbers or a ¶ number.
To make a big deletion and use underline for new material
Where the change is [[var]]very small (<>
If you are amending just one ¶, try to use its number (the following amends ¶ 013)
If you are amending one ¶, but are adding in an additional ¶ then the new paragraph gets a decimal number: Original ¶ 013, newly amended ¶¶ 013.1, 013.2 ...
There needs to be 2 copies: one that is marked up with all the changes (As above) and then the final substitute which is a clean copy.
Taking back amendments:
Once something is changed by an amendment, you can't withdraw the changes. The only solution is to file another amendment that changes the app back to the way you want it.
How is a JRA different from common ownership? → A JRA is different than common ownership in that multiple parties do not have to share or assign ownership of inventions back & forth. For example, if a University A has a JRA with corp. B, then A can invent X under the JRA, but retain ownership of X, while B may invent X' (normally defeated under 102(f)(g)) and still get a patent on it because of the JRA. B still does not own X, and A still does not own X'.
However: If there is a JRA that comes into effect AFTER the new invention is made, the new invention is not covered.
Also: JRA's are often narrow, so a JRA covering invention Y will not allow the partner to make a new invention X' based on the partner's previous invention X. (Look at thetime and scope of the JRA to determine if it works).
Earliest effective filing date if applicant is claiming foreign priority → For swearing back, the inventor does not have to always give the actual date of an invention, just show that the invention happened before the referenced art. However, for showing diligence in the invention (see below) the applicant must have actual dates.