5 Written questions
5 Matching questions
- Abandonment when all proceedings terminate:
- Order of examination of applications (708, and 37 CFR 1.102 in Charts):
- Evidence Needed to Prove Common Ownership:
- Requirements for being able to Swear Back under 37 CFR 1.131:
- When submitting papers containing trade secrets the applicant must do 4 things:
- a Briefly, normally apps will be examined in the order in which they are filed and assigned to examiners. However, under some circumstances (seen in 37 CFR 1.102, like apps that are very important to a branch of public service, or apps that have a special petition) then those special-case apps may jump to the front of the line for examination.
- b The invention has to have been created in either the U.S., a member of NAFTA (Canada & Mex), or in a WTO country for apps after 19960101 (If a country joined the WTO after that date, then whatever date that country joined is the effective date for inventions made in that country).
For example: If I make a Kim Jong Il Pez dispenser in North Korea, I can't swear back to it.
When the statutory bar from 35 U.S.C. 102(b) does not apply. Remember, that 102(b) gives a 12 month deadline from the first time the applicant itself publishes or puts the invention on sale to file for a patent. When trying to swear back, the 12 month limit still applies, so swearing back will only ever work for prior art that was made less than 12 months before the app was filed. (You can't claim to have invented something 10 years ago and swear back to it, the statutory bar is in place!)
First Main Situation: There is a prior art reference under 35 U.S.C. 102(a) (some prior art published on the subject matter taught by the patent). If the prior art was made < style="font-weight: bold;">claims of the earlier patent must not cover the same invention as the later patent for this to work.
Second Main Situation: With 102(e) prior art (prior filed patent app is the prior art), if the prior filed app discloses the prior art, but does notclaim the prior art as its own (which would cause an interference case) then it is possible to swear back that the invention was made before the filing date of the 102(e) referenced app. Important: Remember, disclosures in apps that are not claimed can be used as prior art, but they are not something that can actually be sued over unless they fall under a claim!
- c 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.
- d In order to prove this, (1) the applicant or applicant's atty/agent of record must make a statement to the effect that the prior inventions and the new invention were all commonly owned; (2) the statement should be clear & conspicuous (on a separate sheet as part of the app) to notify the examiner.
Example: "Application X and Patent A were, at the time the invention of Application X was made, were both owned by Corp. Z (common owner)"
- e 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.
5 Multiple choice questions
- Consider the delay that caused the original abandonment
Consider the actual delay in filing the 37 CFR 1.137 petition to revive the app itself (anything > 3 months will be read against the "unintentional" or "unavoidable" claims)
Under 37 CFR 1.137(d) the petition needs to have a terminal disclaimer(remember a terminal disclaimer will shorten the life of the patent from the normal 20 years from filing time).
This disclaimer fee only applies to design patents OR other patent apps that were filed before June 8, 1995 (modern apps do not need the disclaimer fee anymore)
- Normally the reply must reply to every point in the rejection. If it does not, then only a bona fide response will work to toll the time limits (3 month SSP) before the app is considered abandoned. If the submission is considered bona fide, the office will give notice, and 1 month (or 30 days whichever is longer) to complete the reply.
- 1) Before 11/29/2000: NO claiming back to a previous IA, either by bringing the IA onto the national stage, OR by filing a new US app and claiming foreign priority on the IA.
2) On or After 11/292000: This is more fun. Look at the original IA filing date. If the IA specifies the US, and if the PCT/WIPO publishes it in ENGLISH (even if the original app is not English) then the original filing date of the IA will be effective for 102(e) purposes. If it is not in ENGLISH then no dice!
- (What are the rules for deciding if it is the same inventive entity):
If the applicant is one of the co-authors of the prior art, he may file the 37 CFR 1.132 affidavit if the work referenced by the claim was his own work. (Another method is a normal 37 CFR 1.131 affidavit claiming to have invented the item before the prior art got published).
- Not every time period is specified under the 35 U.S.C. 133 statute with the 6 month limit. In some cases (like a "Notice to File Missing Parts" when an application is incomplete (this is not a response to an Office action and is therefore not under the statute)). The Office has more discretion and in that case a 2 month shortened period may receive an automatic 5-month extension under 37 CFR 1.136(a), and if there is good cause the USPTO might even grant a further extension under 37 CFR 1.136(b).
5 True/False questions
Deferral of Examination instead of Suspension of Examination (37 CFR 1.103(d)): → For a new patent app, the applicant may claim a deferral for a period up to 3 years after the earliest relied-upon filing date (earliest date the app claims the benefit of, claims foreign priority over, or claims priority over for PAs).
Example: A new app claims foreign priority over a foreign app filed on 20000103. The action will resume on 20030104 (next working day after the 3 year time period).
Quality of Evidence: → 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.
Proprietary information can be submitted if it is believed to be material to patentability: → 1) Applicant must make petition & pay 37 CFR 1.17(h) fee. AND:
2) state that SES has already been established, or include a statement to establish SES; AND
3) state that the subject of the patent is a 'major asset' of the small entity; AND
4) state that development of the technology will be severely impaired if examination is delayed, and include evidence for why the statement is true.
Main forms of Rejection: Assuming a claim is actually properly made and supported by the patent app, the claim will usually only be rejected for 2 reasons: → 1. Prior Art: Under 35 U.S.C. 102 if there is even one single reference that establishes that there is valid prior art to a claim, then the claim may be rejected.
2. Obviousness: Under 35 U.S.C. 103, this is trickier, while there is not one single source showing the invention, many sources that each show parts of the claim when put together would be obvious to someone skilled in the art. So if the claim is for already-existing components A+B+C, if the combination of A+B+C would be obvious to a normal professional skilled in the art, then the claim fails on obviousness.
The (watch out McCoy) nexus requirement: → 1) making the reply
2) requesting an extension
3) Petitioning that the request is unfair