5 Written questions
5 Matching questions
- Changes After the CREATE Act of 12/10/2004:
- TIME (Limits), Periods of Reply, SSPs, Getting Extensions, and Computation (701, 35 U.S.C. 133, 37 CFR 1.135, 1.136(a)(b), 1.137):
- 3 Major needs for common ownership:
- Biotechnology Apps (706.02(n)):
- The Law on Prior-Art 35 U.S.C. 102: An inventor is entitled to a patent on the invention unless...
- a Now common ownership is not always necessary if there is a Joint Research Agreement (JRA) between Parties.
- b (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.
- c 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
- d By Law (35 U.S.C. 133) there is a statutory time limit for replying to office actions of 6 months. However, the USPTO is allowed to use SSPs (Shortened Statutory Periods) and does so in almost all cases.
- e Short note: A biotech app has to contain both the process and the compositioninformation for the invention together in 1 app OR if it is in 2 apps they both must have the same effective date. Both the process and the composition also have to be owned/assigned to the common owner.
5 Multiple choice questions
- 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!
- (A) An admission or denial of amendment to an app after final rejection, is not enough to save the app from abandonment; (B) admission of or refusal to admit an amendment that is not responsive to the last Offie action is also not enough to save the app from abandonment. (Get it within the deadline, just because the USPTO accepts an amendment will not absolve the applicant from having to meet deadlines.)
- 102(e): If somebody else has an app in already covering the same claims the earlier app wins. (no patent for later app)
102(f): If the applicant did not actually invent the invention, no patent.
102(g): If someone other than the applicant made the invention in the U.S. and did not abandon, suppress, conceal it. (your neigbor invents a widget, you cannot claim to have invented it in your application).
- 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
- 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).
5 True/False questions
NON-Statutory Time Periods: → 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.
Unexpected Results: → If you invent a superconductive material, or a process to manufacture or apply superconductivity, then file the petition for making it special. No fee required.
supplemental amendments are not allowed by right, but could be considered if the amendment is limited to the following six resolutions: → cancellation of a claim
adoption of examiner's suggestions
placement of the app into the condition of allowance (correcting the app to allow it to issue)
reply to an OA that was made after the original reply was filed
correction of typos and other formal errors; OR
simplification of issues for appeal.
When is something considered "invented" for the purposes of finding common ownership or JRA? → This is generally information that is material to patentability but that isnot considered favorable to patentability
The info that goes into the 37 CFR 1.56 "duty to disclose" statements (IDS; prior art submitted by the applicant) can be put into the sealed envelope for a 724 request
Basically: This is information that needs to be disclosed to let the examiner properly conduct the examination (it's material) but it isnot the favorable basic information needed to actually get the patent (like the parts of the disclosure that the claims directly rely on for patentability).
SSPs (710.02(b)): → If there is no response to an Office Action within the time period specified, the application is abandoned.