5 Written questions
5 Matching questions
- How may presumptions of validity be rebutted?
- Limited action after final rejection
- When must an affidavit or oath of declaration of prior invention be filed?
- to get the 37 CFR 1.130 affidavit there are 2 important points that are easier to meet:
- a Presumptions of validity must be rebutted by a preponderance of evidence
- b Filing a reply under 37 CFR 1.116, unlike the broader 1.111, this reply is only to fix formal errors in the app (like an Ex parte Quayle situation); or if the applicant got some of the claims, it might cancel the finally rejected claims in order to have a formally correct patent.
Filing an appeal that the final rejection should not have been made (requires notice of appeal & brief).
OR: Under 37 CFR 1.114 file a Request for Continued Examination (RCE) to keep examination alive.
Any of the above must be filed withing the 3 month SSP + 3 month extension under 37 CFR 1.136(a).
- c 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
- d If you invent a superconductive material, or a process to manufacture or apply superconductivity, then file the petition for making it special. No fee required.
- e 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)
5 Multiple choice questions
- If the Office makes a mistake in an action (like a missing reference or some defect in the document) then if the applicant brings this to the Office's attention within 1 month, the Office will correct the action and restart the time period.
- 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
- A. if issue fee is never paid, proceedings terminate the day the fees are due, app is abandoned as of midnight on the due date.
B. If the app was in interference and lost on all of its claims. The app is abandoned on the date that filing for appeal or review was due (assuming appeal is allowed).
C. Proceedings are completely terminated by the Board of Patent Appeals & Interferences.
D. Proceedings terminated after a court decision.
- 1. clearly label the information as 'trade secret', 'proprietary', 'subject to protective order'
2. File the materials in a separate sealed envelope with a cover letter that identifies the documents.
3. See MPEP 724.02 for more info
4. When the material is submitted, a petition & fee under 37 CFR 1.59 to have the material expunged can be sent at the same time as the material itself.
- It is the applicant's or atty/agent of record's duty to make records of the substance of the interview.
The substance of the interview on the merits has to be recorded, whether or not agreement on claims was reached or not. (points raised purely on procedure or discussion of typos in the app do not have to be recorded)
The examiner should review the record made by the interviewee and under 37 CFR 1.135(c) should give notice & 1 month to have the interviewee correct deficiencies in the record if there are any.
5 True/False questions
Just as with any other prima facie case, the burden is on the applicant to actually hork up the evidence showing that the results were both: → 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.
Amendment after notice of Allowance (37 CFR 1.312): → The amendments must be made before the issue fee is paid
The applicant may attempt to file amendments after allowance, but remember Ex Parte Quayle, there is no right to have the amendment examined and added, just the ability to request at the exmainer's discretion.
The applicant has to make a detailed statement as to how the new amendment is needed for: (A) proper disclosure and protection of the invention, and (B) require no substantial work on the part of the office.
For 102(a), (b) prior art (already known or published, or known by the inventor for > 12 months before the effective filing date) there are 4 major ways to fight a rejection: → Inventor; Assignee (when affidavit from inventor cannot be produced); Owner of patent under reexam; and Party qualified when inventor is dead, insane, or refuses to sign
Recombinant DNA: → If the app relates to safety of research in the field of Recombinant DNA (not every single app related to DNA, just safety of research). These apps need to have the 37 CFR 1.17(h) fee along with the petition.
Petitioning that the request is unfair → The applicant my petition under 37 CFR 1.181 that a request for information is unfair, but the petition is not a response, and the time period keeps on going while the petition is being considered.