5 Written questions
5 Matching questions
- nfringement: In a situation where the app will disclose an invention that is already being actually infringed (not just potential infringement) on the open market, then a petition by the applicant, assignee, atty/agent of record accompanied by the fee (37 CFR 1.17(h)) may be made to make the app special if the petition states:
- Review of 35 U.S.C. 102(e)(f)(g):
- 9 CRUCIAL Examples Showing 102 in action: (pages 231-240):
- Final Rejections: (37 CFR 1.113, 706.07(a))
- 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:
- a 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).
- b Usually the second rejection after a 1.111 reply is considered a Final Rejection.
- c 1) File a valid U.S. app on 20001208, no claiming of benefits/priority. The effective filing date is simply 20001208 (nice & easy).
2) Now, file a valid U.S. app on 20010101 that properly claims the benefit of a previous NPA (or claims priority on a previous PA) that was given a filing date of 20000101 (1 year earlier). The effective filing date is allowed to be the earlier 20000101 date! (Everything is within the U.S. here).
3) File a foreign application in a foreign country (Japan) on 19980622. Then later on (but within 1 year to allow for claiming priority on a foreign app) you file a normal NPA in the U.S. on 19990621. The U.S. filing date is the effective filing date even if you are able to claim priority on the foreign filing.
4) File an IA (remember an IA is different than just filing a foreign app) in Sweden (in Swedish) on 20001201 (after the 20001129 date), and it designates the US. On 20010220 WIPO publishes the app IN ENGLISH. Then later on, the app is brought into the U.S. national stage (35 U.S.C. 371(c)). The earliest effective filing date is allowed to be the original IA filing date of 20001129!
5) Take the above example, change the language that WIPO uses in publishing to anything other than English. NOW THERE IS NO DATE AT ALL FOR THE IA BEING BROUGHT TO THE U.S. STAGE UNDER 102(e). The dates used in 102(a) and 102(b) still apply in this case, they will be from the date that WIPO published (200010220), even though it was not published in English.
6) Same IA as seen in 4-5 BUT it was filed before the 20001129 cutoff date: IA filed in Sweden designating the U.S. filed on 20000101. WIPO publishes it on 20010701 (language does not matter). The app is then brought onto the U.S. Stage on 20020701. The earliest effective date under 102(e) is the date that the patent was brought onto the US national stage (20020701). However, remember that for 102(a),(b) the date is still when WIPO published on 20010701.
7) New example: IA is filed in Sweden, with the U.S. designated on 20010301 (after the cutoff). WIPO then publishes IN ENGLISH on 20020901. Later on, on 20030501, there is a BRAND NEW APPLICATION filed under 35 U.S.C. 111 (the normal way to file an app) in the U.S. that claims the benefit of the earlier IA filing. Because WIPO published in English, the U.S. app under 102(e) gets the 20010301 date from the original IA app.
Remember: Normally for foreign filings all you can do is get a foreign priority (with the filing date NOT going back to the foreign filing date), and even then it has to be done within 12 months (this is longer than 12 months). This situation allows a normal U.S. NPA to actually claim the benefit on an IA.
8) Same example as above, but WIPO DOES NOT PUBLISH IN ENGLISH: Because WIPO did not publish in English, the new 102(e) date is now 20030501, the date of the U.S. filing with no benefit claimed to the earlier IA. However, remember that 102(a)(b) are still in play with the date that WIPO published, which in this case is 20020901.
9) Now assume the IA gets filed BEFORE 20001129: IA filed on 20000301 (before the cutoff!) designating the U.S.. On 20010901 WIPO publishes the app (it does no matter what the language is). Later on 20011201 there is a brand new 35 U.S.C. 111 app in the U.S. trying to claim the benefit or priority of the original IA. The IA date doesnot apply, the 102(e) effective date is the same as the U.S. filing date of 20011201! (Before the 20001129 cutoff there was no claiming of a previous IA). However, the WIPO publishing date of 20010901 can still be used under 102(a)(b).
- d A. That there is an infringing product actually on the market or in use.
B. That a rigid comparison of the infringing product with the claims of the current app will show that the subject matter disclosed & claimed in the app is unquestionably infringed upon by the other product.
That the applicant has made a careful & through search of prior art or has good knowledge of pertinent prior art. (one copy of each referenced prior art necessary).
- e 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.
5 Multiple choice questions
- If there is objective evidence of: (especially for defeating obviousness)
2) unexpected positive results
3) commercial success
4) a long-felt but unsolved need that this invention addresses
5) failure of other inventions to meet the need
6) expert opinions, etc.
- 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.
- 1. Has to be in writing;
2. Has to identify the app by the the app # and the filing date.
- If there is a reply filed within 2 months of the final Office action, the SSP will expire at the end of 3 months on the FOA or on the mailing date of the Advisory Action whichever is later. (Basically, if the reply is within the shortened 2 month window, then if the Advisory Action is somewhat late, you can get the later date of the Advisory Action or the normal SSP to file appeals or RCE's in addition to normal replies.
However, the 6 month total time period (SSP + 3 month extension) is still the final time limit after the final rejection
- 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
RCE Deadlines: These are different than for just a normal reply! The RCE must be filed before the earliest of: → 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
Earliest effective filing date for provisional apps → 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)
Review of 35 U.S.C. 103(c): → (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.)
unavoidable → 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.
When the app was actually abandoned, but circumstances allow the app to be Revived: (37 CFR 1.137) → 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).