5 Written questions
5 Matching questions
- If the prior art teaches that there is anexpected beneficial result then
- Earliest effective filing date for continuation/divisional
- What if ALL of this fails and the App Cannot be Revived?
- Common Ownership:
- The Law on Prior-Art 35 U.S.C. 102: An inventor is entitled to a patent on the invention unless...
- a If applicant is filing a continuation/divisional of one or more U.S. or international apps, (and if the apps are valid on their own for having filing dates under 35 U.S.C. 120 for U.S. or 35 U.S.C. 365 for IA) then the effective filing date is: the earliest filing date in the line of continuation or divisional apps. (Remember that these apps are not allowed to have any new matter in them)
- b Step 1: Request a reconsideration of the revival under 37 CFR 1.137(e). This has to be made within 2 months of the denial of the petition (extendable under 37 CFR 1.136(a)).
Step 2: If the reconsideration also fails, you are SOL. At this point, it is possible to file a substitute application that matches the original app. BUT: The substitute cannot benefit from the filing date of the abandoned app!!
- c (a): the invention was known or used by others in this country(meaning the U.S. only), or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, OR
(b): the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, OR
(c): the inventor abandons the invention OR
(d): The applicant already patented or applied for patent on the invention in a foreign country more than one year prior to the date of the application for patent in the United States, OR
(e): (In plain English): If somebody else files a U.S. patent app or international patent app that has an effective filing date before theeffective filing date of the current patent app that claims the same invention, whichever app has the earliest filing date will win.
- d even if the invention produces the beneficial result, that is evidence showing the invention is obvious. The applicant's best bet is to try to show that the magnitude of the beneficial effect was so significantly different than what was expected that it ought to be non-obvious.
- e This means that a party or multiple parties had 100% ownership of both the prior invention and the the new invention at the time the new invention was invented.
Example: A & B are wholly-owned subsidiaries of MegaCo, and A invents invention X, followed by invention X' (an obvious improvement on X) from B. Since MegaCo owned A & B fully, it is the common owner of both X & X' and will not have prior art problems.
It works for assignment too: Companies A & B have an agreement to assign each other all inventions made. Employee X of company A has an agreement to assign all of his inventions to company A (but the agreement says nothing about company B). The invention goes from: X -> A <-> B and A & B are both common owners of the invention. Either A or B may then invent X' and not have to worry about prior art from X.
However: Same example as above, but say that the assignment agreement is only concluded after B has invented X'. In this case, B was not a common owner of X, and A was not a common owner of X', so X' would fail on the 102(e)(f)(g) claims.
5 Multiple choice questions
- 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
- Under 37 CFR 1.3, any paper that violates the decorum rules of the USPTO will not be entered into the apps record, and will never be published.
- 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).
- that will also go towards a non-obvious meeting of the long-felt need.
- A. During a suspension period (like before entering an RCE) a supplemental reply is allowed by right
B. Otherwise supplemental amendments are not allowed by right, but could be considered if the amendment is limited
5 True/False questions
SSPs vs. Specified Time Limits: (710.02(d)) → The big difference is that Specified Time Limits are not directly written in law, and are made with the examiner's discretion. If an applicant misses a Specified Time Limit, the app is generally not abandoned, but the subject matter that the deadline covered could be lost (like making a disclaimer that no claims may rely on certain subject matter). Also, if an applicant is late by a short time the examiner may still allow the submission at his own discretion.
SSPs are statutory time limits, and as such are much stricter. Also, since SSPs cover responses to Office actions, if the applicant does not respond in time, the application is considered fully abandoned, not just one part of it.
To get a prima facie case of obviousness there are 3 elements that must be met: → 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)
Restarting the Period: → 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.
Earliest effective filing date for a CIP → 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.
Energy: → Every patent must have utility to be valid. This requirement is very loose and generally is only used to stop patents on things like perpetual motion machines (although some do get through anyway).
Just because an invention is 'immoral' or could be used for illegal purposes it can still be patented.
Exception: Written straight into the statute, any invention that is useful only for making nuclear weapons is not patentable.