5 Written questions
5 Matching questions
- In an NPA that was abandoned for (1) failure to prosecute (e.g. failure to reply to OA), or (2) file an appeal brief: The required reply is met by:
- RCE Deadlines: These are different than for just a normal reply! The RCE must be filed before the earliest of:
- 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:
- Applicant's Health:
- How may presumptions of validity be rebutted?
- a 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)
- b 1. Payment of the issue fee (when you actually get a patent). Exceptions may be made if the Office grants a petition under 37 CFR 1.313.
2. Abandonment of the app (The reason all of those replies above matter is that they keep the app alive instead of abandoning it. This buys time to get the RCE filed).
3. A filing of notice of appeal to the Federal Circuit or commencement of a civil action (RCE's cannot happen while court proceedings are going on). However, if the court proceeding is terminated, the RCE could be filed if the patent is not abandoned.
- c Presumptions of validity must be rebutted by a preponderance of evidence
- d unexpected and significant.
- e I don't feel so good! If the applicant makes a petition with evidence (like a doctor's certification) that she is in poor enough health that she may not be able to assist in the prosecution process, then the app may be made special. No fee required.
5 Multiple choice questions
- Face to face interviews are the standard
Phone interviews and remote teleconferencing are also available
Email: is not allowed for interviews without the express prior written consent of applicant or atty/agent of record.
Video Tapes: The applicant must be able to show the content of the video has a bearing on outstanding issues related to the app.
- 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.
- 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.
- The applicant will file amendment(s) to reply to final rejections, and the amendments may be non-entered (not part of the official app). This is to buy time to either file an appeal, or to file an RCE under 37 CFR 1.114, possibly a CIP with new matter (37 CFR 1.53(b)), or for design patents a CPA under 37 CFR 1.53(d).
- 1) File a valid U.S. app on 20001208, no claiming of benefits/priority. The effective filing date is simply 20001208 (nice & easy).
2) Now, file a valid U.S. app on 20010101 that properly claims the benefit of a previous NPA (or claims priority on a previous PA) that was given a filing date of 20000101 (1 year earlier). The effective filing date is allowed to be the earlier 20000101 date! (Everything is within the U.S. here).
3) File a foreign application in a foreign country (Japan) on 19980622. Then later on (but within 1 year to allow for claiming priority on a foreign app) you file a normal NPA in the U.S. on 19990621. The U.S. filing date is the effective filing date even if you are able to claim priority on the foreign filing.
4) File an IA (remember an IA is different than just filing a foreign app) in Sweden (in Swedish) on 20001201 (after the 20001129 date), and it designates the US. On 20010220 WIPO publishes the app IN ENGLISH. Then later on, the app is brought into the U.S. national stage (35 U.S.C. 371(c)). The earliest effective filing date is allowed to be the original IA filing date of 20001129!
5) Take the above example, change the language that WIPO uses in publishing to anything other than English. NOW THERE IS NO DATE AT ALL FOR THE IA BEING BROUGHT TO THE U.S. STAGE UNDER 102(e). The dates used in 102(a) and 102(b) still apply in this case, they will be from the date that WIPO published (200010220), even though it was not published in English.
6) Same IA as seen in 4-5 BUT it was filed before the 20001129 cutoff date: IA filed in Sweden designating the U.S. filed on 20000101. WIPO publishes it on 20010701 (language does not matter). The app is then brought onto the U.S. Stage on 20020701. The earliest effective date under 102(e) is the date that the patent was brought onto the US national stage (20020701). However, remember that for 102(a),(b) the date is still when WIPO published on 20010701.
7) New example: IA is filed in Sweden, with the U.S. designated on 20010301 (after the cutoff). WIPO then publishes IN ENGLISH on 20020901. Later on, on 20030501, there is a BRAND NEW APPLICATION filed under 35 U.S.C. 111 (the normal way to file an app) in the U.S. that claims the benefit of the earlier IA filing. Because WIPO published in English, the U.S. app under 102(e) gets the 20010301 date from the original IA app.
Remember: Normally for foreign filings all you can do is get a foreign priority (with the filing date NOT going back to the foreign filing date), and even then it has to be done within 12 months (this is longer than 12 months). This situation allows a normal U.S. NPA to actually claim the benefit on an IA.
8) Same example as above, but WIPO DOES NOT PUBLISH IN ENGLISH: Because WIPO did not publish in English, the new 102(e) date is now 20030501, the date of the U.S. filing with no benefit claimed to the earlier IA. However, remember that 102(a)(b) are still in play with the date that WIPO published, which in this case is 20020901.
9) Now assume the IA gets filed BEFORE 20001129: IA filed on 20000301 (before the cutoff!) designating the U.S.. On 20010901 WIPO publishes the app (it does no matter what the language is). Later on 20011201 there is a brand new 35 U.S.C. 111 app in the U.S. trying to claim the benefit or priority of the original IA. The IA date doesnot apply, the 102(e) effective date is the same as the U.S. filing date of 20011201! (Before the 20001129 cutoff there was no claiming of a previous IA). However, the WIPO publishing date of 20010901 can still be used under 102(a)(b).
5 True/False questions
: What is needed for affidavits under 37 CFR 1.132 → 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
10 Important cases where you CANNOT swear back: → 1. If the reference publication for the prior art is > 1 year older than the effective filing date (statutory bar under 35 U.S.C. 102(b)).
2. Where the referenced U.S. patent or application (102(e) prior art)claims the same invention as the app under question. (this would create an interference case).
3. If the prior art is a foreign patent or app (it could even be owned by the same applicant or the same assignees) that was filed > 12 months prior to the U.S. application date. (Remember the 102(b) statutory bar as well as the 12 month requirement for claiming priority over foreign apps!!)
4. If it is proven that the effective filing date for the app is actually priorto the date of the referenced prior art, then the affidavit is actually not necessary since the prior art should never have been referenced in the first place. (Remember, the affidavit is only for when the actual invention is before the prior art, if the effective filing date is already early enough, no need to swear anything back!)
5. Where the reference is to a prior U.S. patent or app issued to the same entity claiming the same invention. (This is known as "double patenting" and obviously, you can only get the patent once).
6. Where the reference is the disclosure of a prior U.S. patent to the same applicant (At this point, you should be trying to claim the benefit of the earlier app since it is not logical to swear back on your own invention).
7. Where the applicant has clearly admitted on the record that the subject matter in the reference is prior art (Something like an IDS statement or a statement in an interview. Think: Equitable Estoppel).
8. Where the subject matter in the prior art is covered under 35 U.S.C. 102(f) (remember: f is where the applicant or common owner did not actually invent the earlier invention)
9. Where the subject matter is prior art under 35 U.S.C. 102(g) (This isinterference where the same subject matter exists in 2 different patent apps. There are separate procedures for interference so swearing back is not an option).
10. Similar to #9 but in this case, the applicant has already lost the interference claim. (102(g) is when there is an interference on a claim and the applicant loses, under res judicata the issue has already been decided by the USPTO, so it is not possible to swear back at this point).
Improper RCE's: → 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!
Abandonment when all proceedings terminate: → A public use proceeding determines whether an invention claimed in an application had been in public use or on sale over 1 year before filing of application.
3 Major needs for common ownership: → 1. prior art to the claimed invention must be commonly owned (100% by the same party or joint parties) OR
2. subject to assignment to the common owner (like when an employee makes an invention that is assigned to the employer who is the common owner of multiple inventions). OR
3. There was a JRA in place