5 Written questions
5 Matching questions
- Earliest effective filing date for provisional apps
- Proprietary information can be submitted if it is believed to be material to patentability:
- Special Status for a Small Entity making a Biotech Patent:
- Constructive RTP
- Petitioning that the request is unfair
- a If it is material, it will be made of record in app
If it is NOT material, it will be resealed and retained in case applicant files a petition to expunge
Will not be made available to public until issuance of the patent
Info submitted in reissue or reexams will be sealed. If important to reasonable examiner, it will become permanent part of app; if not, it will be resealed pending possible petition to expunge
Info that is only favorable to patentability should not be submitted
- b filing a US patent application
- c 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.
- d 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.
- e (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
5 Multiple choice questions
- 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.
- 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).
- pending apps, abandoned apps, apps entering the National stage under 35 U.S.C. 371, in a patent, or in a reexamination (basically in any situation where an examiner needs info). The requests for information are made at the examiner's discretion
- 1) The examiner may be allowed to compel the disclosure of information if it is reasonably necessary
2) This information does not have to be the same type of info that is already required to be disclosed in an IDS.
3) The burden of production for a request is finding info that is reasonably and readily available, which is a much lower burden than required under 37 CFR 1.56(c) disclosure statements.
- Get off my lawn! If the applicant is >= 65 years old, a petition along with proof (like a birth certificate or sworn statement) may make the app special. No fee required.
5 True/False questions
Who is allowed to swear back a reference? (715.04 who can file the 37 USC 1.131 affidavit) → 1) All of the inventors of the subject matter claimed
2) An aff/decl by less than all the inventors where it is shown that less than all of the named inventors on the app actually invented the subject matter being sworn back to.
3) When there is a 37 CFR 1.47 petition that is accepted (when the inventor refuses to sign or cannot sign) then the aff can be signed by the 37 CFR 1.47 applicant, or by legal representative.
4) When it is not possible to produce the inventor, then the assignee or other party with proprietary interest may sign.
Formally, the affidavit just has to be a sworn, written statement (may be an oath or declaration)
unavoidable → When an employee makes a clerical error that is the sole cause of the delay in making the reply, and the business had a process that would normally work to get the reply made, and that the employee was trained and exercised due care then the delay could be seen as unavoidable.
Getting Extensions of Time (1.136): → Remember, the SSPs are shortened periods, the statutory max is still 6 months. So, under 37 CR 1.136(a) the applicant may request an extension of time such that the SSP + Extension == 6 months total.
A 37 CFR 1.136 request is automatic as long as it is properly made and the fee is paid.
The request for extension does not have to come during the SSP! It may be allowed at any date up until the last day of the 6 month statutory period.
The 1.136(a) request may be filed along with the reply in question, before it is filed, or even after it is filed. However: if the 1.136 request is filed after the reply, then the reply's effective date will be considered the date that the extension was requested (this effectively bars making a 1.136(a) request after the max 6 month period is over).
Under 37 CFR 1.136(b) there are other ways to request an extension, but 1.136(b) is not automatic, the applicant usually has to show good cause for why an extension should be granted. Remember: 1.136(b) only applies when 1.136(a) is not available, AND the 6 month maximum is still absolute, 1.136(b) cannot defeat it.
Amendments to the Specification: → 1) making the reply
2) requesting an extension
3) Petitioning that the request is unfair
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).