5 Written questions
5 Matching questions
- Hitting the Pause Button: Suspending & Deferring Action on an App(37 CFR 1.103 in Charts; 709):
- Express Abandonment after the issue Fee is paid:
- 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:
- 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:
- 3 Major points needed for the JRA:
- a If the issue fee has already been paid, then the applicant will have to issue the express abandonment letter, along with a 37 CFR 1.313(c) petition to withdraw the patent (and the 37 CFR 1.17(c) fee).
- b unexpected and significant.
- c 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.
- d 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.
- e Under some circumstances the applicant may request that the Office suspend or defer action (the examination process) on a patent app. HOWEVER: suspension cannot be made if there is an outstanding reply to an Office action that is due (you can't suspend when you owe a response to the USPTO). Also, unless the suspension is requested at the same time as a valid CPA or RCE request, the Office will require the applicant to show "good cause" for why the suspension should be granted.
5 Multiple choice questions
- 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))
- The applicant my petition under 37 CFR 1.181 that a request for information is unfair, but the petition is not a response, and the time period keeps on going while the petition is being considered.
- Presumptions of validity must be rebutted by a preponderance of evidence
- the evidence the applicant puts forth must have a common nexus with the actual invention being claimed.
- A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
C. Filing an affidavit under 37 CFR 1.132 to show the earlier app is not by "another" (Claim that the applicants for the new invention are the same applicants as for the prior app too. There probably needs to be at least 1 inventor/assignee in overlap).
D. File an Affidavit under 37 CFR 1.131 showing that this applicantactually invented the invention before the other prior applicant. (This is what Dad was talking about as being stupid and may potentially be fixed). The applicant needs to have some pretty good evidence (that would stand up in court) to show that he actually made the invention before the other competing app. was filed.
E. See C above, amending to claim the benefit of a valid earlier NPA. (See also the big things about international applications too!)
F. See D. above, amending to claim priority over a valid PA.
5 True/False questions
3 Month Deadlines: → To reply to any Office Action on the merits (3 months is the most common one).
1 Month Deadlines (not less than 30 days for Feb. months): → 1) Winning PArty in a terminated interference (MPEP 2300)
2) To Reply to an Ex Parte Quayle action (714.14)
3) A multiplicity rejection (but no other rejection) See 2173.05(n)
unavoidable → 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.
Amedendments to the Drawings: → Any amendments to claims need to reproduce all of the claims that have ever existed in the patent app (basically amending claims means putting in a new substitute set of claims)
Each claim has to be listed in the following format:
Claim (): canceled or not entered in which case the claim is never written out)>
Example: Claim 1 (previously presented): A spoon that is too big.
Claims have to be in numerically ascending order
If you have a bunch of canceled or not entered claims that are consecutive, they can be grouped together.
The accepted words to use for the claim's status are:
original (has never been amended)
currently amended (the claim is being updated in this amendment)
previously presented (was amended in a previous round of amendments but is not changed in the current amendment)
withdrawn (even though the claim is withdrawn it must still be written out)
new (a brand-new claim being added by this amendment)
canceled (claim was canceled, it is not written out)
not entered (claim was never formally entered, not written out
Who may file an affidavit of prior invention? → 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