5 Written questions
5 Matching questions
- When interviews are (and are not) Granted:
- What are the geographical limitations of an affidavit or declaration of prior invention?
- How statutory periods are computed:
- When is an affidavit or declaration of prior invention needed?
- a 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.
- b Before Filing: Interviews are not allowed before an app is filed, but an examiner may (at his discretion) give limited information on which field a patent should be filed in.
Before first OA: If the app is a continuation or substitute app (there already was a previous app) then interviews are normally granted before the first office action in these cases.
After first OA, but before final OA: The most common time for an interview is after the initial OA (usually where claims receive initial rejection) and before the final actions are taken on the app.
After a final Rejection: Normally 1 interview is allowed, but the examiner should be notified as to the specific subject matter of the meeting (preferably in writing). The interview must be held before the 6 month statutory time limit after the final rejection, but there is no need to get a 37 CFR 1.136(a) extension of the SSP just to have the interview. Further interviews may be granted at the examiner's discretion if he believes it will expedite resolution of appeal or disposal of the app.
On Appeal after brief is filed: If the applicant has filed a brief related to an appeal on the patent, then generally interviews are notgranted (the patent is now being examined by parties other than the examiner)
After App goes to Issue: If the patent has gone to issue, nointerviews (once again, it is outside of the examiners purview at that point)
- c Needed when any claim of an application or patent under reexam is rejected based on prior art before the date of invention
- d 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.
- e Remember: If the end of the statutory period falls on a Sat/Sun/Federal Holiday in D.C. then simply find the next day that the USPTO is open (next business day) and that day becomes the last day that a response will be accepted. (Remember: Express Mailing with Certificates of Mailing or Faxes with Certificates of Transmission to get the effective date of the response too!).
When months are mentioned this can get a little tricky. Remember: The last day of any month corresponds to the last day of the target month only if the first month has more days than the last month so a 3 month limit: Nov. 30 —> Feb. 28 (29 in leap years); Dec 31 -> Mar. 30; BUT: Feb 28 -> May 28!!.
5 Multiple choice questions
- Now common ownership is not always necessary if there is a Joint Research Agreement (JRA) between Parties.
- Short note: A biotech app has to contain both the process and the compositioninformation for the invention together in 1 app OR if it is in 2 apps they both must have the same effective date. Both the process and the composition also have to be owned/assigned to the common owner.
- If an RCE is not filed properly, the Office notifies the applicant. The improper RCE does not toll the deadline for getting a proper reply in to the Office!
- 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.
- After the petition is properly filed it is up to the examiner to make a determination if the evidence in the petition creates a prima facie case that the invention was in use or on sale in the U.S. > 12 months before the effective filing date.
+ If the determination is that the prima facie case is not established.... the process is over, nothing more will be done (no appeal by the 37 CFR 1.292 petitioner)
5 True/False questions
When the app was actually abandoned, but circumstances allow the app to be Revived: (37 CFR 1.137) → Remember: you cannot file an affidavit in this situation!Instead, see 37 CFR 41.202 (interferences) for how to resolve issues when the prior art is a claimed previous invention.
Also remember: this is different from a case where a previous patent/app has prior art, but is not actually claiming the prior art for the same invention. IF the 2 inventions are shown to be substantially different, then as long as the previous app does not claim the subject matter, it can be sworn-behind.
Remember the 1 year bar. the 1 year time limit includes the anniversary date of the prior art (just like Rule 6 from FRCP) so prior art on June 10 2005 can still be sworn back for an app on June 10, 2006.
The "same invention" here does not mean the prior and current apps are identical, it just means that the two are not "patently distinct".
Certain New Applications getting Accelerated Examinations: If there is a new app that needs examination the applicant, assignee, or atty/agent may get accelerated examination if he: → May not be submitted if the rejection is based on a US patent to others claiming same patentable invention (interference)
Swearing Back of a Reference: (715) → "Swearing Back" means that under some circumstances the applicant can file an affidavit (under 37 CFR 1.131 or sometimes 37 CFR 1.132) that the applicant actually invented the matter that is discussed in the prior art before the prior art was published (swearing back in time before the prior art was published). The date sworn back to will actually be earlier than the effective filing date of the patent.
716.10 Attribution: → If there is subject matter in a prior patent or patent app that isnot covered in the claims of that patent then if there is evidence submitted showing that the applicant for the new patent was the source of the same material in the prior app, then that evidence can defeat the prior art reference.
When submitting papers containing trade secrets the applicant must do 4 things: → 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.