5 Written questions
5 Matching questions
- Procedural Requirements for a Suspension:
- Prior art might include:
- Deadlines & Considerations for a 1.137 petition to revive:
- Requirements for being able to Swear Back under 37 CFR 1.131:
- When a reply is not responsive to every point made in a final rejection:
- a already granted patents or published patent apps (either in the U.S. or abroad), publications describing the invention (usually in English), sale of the invention (even if the applicant is selling the invention himself, if he waits > 12 months he cannot patent it).
- b 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)
- c 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.
- d 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!
- e If there is a CPA or RCE, the request must be filed along with those filings either with a check box on the transmittal form, or as a separate paper.
If given with an RCE, the RCE must be valid under 37 CFR 1.114 including the 37 CFR 1.17(e) fee that cannot be deferred. Also, a request for suspension does not mean the RCE itself does not need the filing fee.
if the request is with the CPA, the office must give a filing date to the CPA (it must be a valid CPA).
The request should specify a whole-number of months (e.g. 2 months) for suspension, and 3 months is the maximum, if no number is given then 3 months is assumed:
The request needs a processing fee in 37 CFR 1.17(i).
5 Multiple choice questions
- The usual operation for patent examinations is a FIFO where applications go to the appropriate Technology Center (TC) and often sit on the document racks for months+ waiting to be examined. However, under some circumstances (37 CFR 1.102) applications for certain types of inventions can move ahead in the queue. In order to do so, there must be a petition with a good-faith statement that the app in question should qualify for expedited review. Sometimes there is also a petition fee, but for some types of inventions the fee is waived by statute.
- The big difference is that Specified Time Limits are not directly written in law, and are made with the examiner's discretion. If an applicant misses a Specified Time Limit, the app is generally not abandoned, but the subject matter that the deadline covered could be lost (like making a disclaimer that no claims may rely on certain subject matter). Also, if an applicant is late by a short time the examiner may still allow the submission at his own discretion.
SSPs are statutory time limits, and as such are much stricter. Also, since SSPs cover responses to Office actions, if the applicant does not respond in time, the application is considered fully abandoned, not just one part of it.
- After a final rejection, if a proper RCE is entered to the Office, the Office will withdraw the finality of the action, and begin re-examining the application with the amendments in the RCE. (With a proper RCE you get a new examination).
Remember, the proper RCE needs to include (or to have an earlier filed) response to EVERY ground stated in a final rejection in order to make it viable to be re-examined.
- Examiner will review the file to make sure all the necessary elements (oath, spec, claims, drawings, etc.) are present.
The claim then gets put on a storage rack waiting for the first Office action.
When the examination begins, the examiner (1) reads the spec and claims, and then (2) searches prior art.
- An RCE creates a new examination, so an appeal and an RCE really don't make sense at the same time. When an RCE is filed during an appeal (but before the appeal decision is made) it effectively withdraws the appeal. Even if the RCE is improper the appeal is withdrawn too!!
5 True/False questions
Earliest effective filing date if applicant is claiming foreign priority → If applicant is filing a continuation/divisional of one or more U.S. or international apps, (and if the apps are valid on their own for having filing dates under 35 U.S.C. 120 for U.S. or 35 U.S.C. 365 for IA) then the effective filing date is: the earliest filing date in the line of continuation or divisional apps. (Remember that these apps are not allowed to have any new matter in them)
What forms of communication are allowed? → 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.
to get the 37 CFR 1.130 affidavit there are 2 important points that are easier to meet: → A. some suggestion or motivation in the references themselves, or on generally available knowledge to modify the reference or combine teachings of the reference. (Either the invention is just putting known items together (like peanut-butter & jelly) OR somebody who is skilled in the art would know how to put the things together.
B. There must be a reasonable expectation of sucess (putting all the stuff together oughta work to make it obvious, if some magic unexpected result occurs then the patent might not be obvious at that point.)
C. Prior art reference(s) must teach or suggest all the limitations that are in the claim. The teaching to to make the combination of items seen in the claim AND the suggestion that success would be likely both have to be found in the prior art, not based simply on the info in the applicant's disclosure. (This is saying that somebody else has to have already mentioned the possibility of the combination AND that it would likely work in prior art, it is not simply enough to eyeball the application and say: duh this is obvious).
Earliest effective filing date for a CIP → Filing a reply under 37 CFR 1.116, unlike the broader 1.111, this reply is only to fix formal errors in the app (like an Ex parte Quayle situation); or if the applicant got some of the claims, it might cancel the finally rejected claims in order to have a formally correct patent.
Filing an appeal that the final rejection should not have been made (requires notice of appeal & brief).
OR: Under 37 CFR 1.114 file a Request for Continued Examination (RCE) to keep examination alive.
Any of the above must be filed withing the 3 month SSP + 3 month extension under 37 CFR 1.136(a).
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: → unexpected and significant.