5 Written questions
5 Matching questions
- Unavoidable Abandonment:
- Prima Facie Case:
- 1 Month Deadlines (not less than 30 days for Feb. months):
- What is considered objective evidence?
- Replying to the Request:
- a 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
- b A. requirements for restriction or election of species in a patent (deciding on which invention to keep in a patent and which other ones to split into divisional apps).
B. If a reply to an action is bona fide, but there is an inadvertent omission, the examiner may allow 1 month to correct it.
- c 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.
- d Remember, the 37 CFR 1.132 affidavit may be filed to traverse a rejection (get around an objection). That sometimes include evidence that the same person invented the prior art that is being referenced, or that the new invention is actually non-obvious. However, the evidence must be weighed against the prima facie case that the invention is obvious.
1) The weight is a preponderance of evidence
2) After the prima facie case is established, the burden is on the applicant to meet the weight of the evidence in his favor.
- e 1) making the reply
2) requesting an extension
3) Petitioning that the request is unfair
5 Multiple choice questions
- 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".
- Once the examiner has the prima facie case of obviousness made, the burden of overcoming the obviousness is back on the applicant. Just as with the common ownership, the applicant must clearly show that the invention is within the scope of the JRA, and that the JRA was in effect before the later invention was made.
- 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
- 1. examine patent, claims, search prior art ->
2. If rejecting a claim, issue first rejection ->
3. Applicant may appeal under 37 CFR 1.111, may have amendments (but no new matter!) to back the appeal ->
4. If not accepted, a second rejection (that is usually a final rejection) is issued ->
5. If there is a final rejection, then the applicant has 1 more chance under the (narrower) 37 CFR 1.116 to appeal the final rejection.
- If there is no response to an Office Action within the time period specified, the application is abandoned.
5 True/False questions
The following list comprises the main steps in a patent examination process (assuming no interference claims): → 1. Investigation of the app and of prior art (37 CFR 1.104 in Charts)
2. After an initial rejection (non-final), the applicant must reply to the Office Action (37 CFR 1.111 in Charts)
3. Replies to the intial Office Action (37 CFR 1.112)
4. Final Rejections: (37 CFR 1.113, 706.07(a))
Superconductivity: → 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.
Earliest effective filing date for provisional apps → (Provisional apps) If the app is claiming priority of a 35 U.S.C. 119(e) PA, the effective filing date for any claims that are fully supported by specific information in the PA is the same as the filing date of the PA
If the postmark of the OA is later than the actual date stamped on the OA: (it got sent late, not necessarily delayed in transit) The previously set time period is reset if: → 1) The petition is filed within 2 weeks of receipt of OA; and
2) the reply period had to be for: payment of the issue fee (getting a granted patent), or the reply period was only a 1 month/30 day reply period; and
3) The petition includes this evidence:
1. Evidence showing the actual date of receipt at the correspondence address
2. A copy of the original envelope showing the postmark date (used to prove the date on which the OA was actually sent)
3. Statement setting forth the fact that the OA was received on the date show by the evidence in (1) and that the envelope in (2) actually contained the OA.
10 Important cases where you CANNOT swear back: → 1. claimed invention was made on behalf of the parties to the JRA and
2. the invention was made due to activities of the JRA (not just invented at random, but as part o f the JRA) and
3. The app has to be amended to clearly disclose the names of the parties to the JRA.