5 Written questions
5 Matching questions
- Earliest effective filing date for continuation/divisional
- When your Patent App claims the same invention as another app or patent:
- Avoiding Publication on an Abandoned App:
- Deferral of Examination instead of Suspension of Examination (37 CFR 1.103(d)):
- a 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).
- b 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.
- c Remember: you cannot file an affidavit in this situation!Instead, see 37 CFR 41.202 (interferences) for how to resolve issues when the prior art is a claimed previous invention.
Also remember: this is different from a case where a previous patent/app has prior art, but is not actually claiming the prior art for the same invention. IF the 2 inventions are shown to be substantially different, then as long as the previous app does not claim the subject matter, it can be sworn-behind.
Remember the 1 year bar. the 1 year time limit includes the anniversary date of the prior art (just like Rule 6 from FRCP) so prior art on June 10 2005 can still be sworn back for an app on June 10, 2006.
The "same invention" here does not mean the prior and current apps are identical, it just means that the two are not "patently distinct".
- d Remember: EVEN ABANDONED APPS GET PUBLISHED BY DEFAULT. Unless the abandonment happens early enough that the Pre-Grant Publication Division is notified of the abandonment early enough, the application will still get published.
- e 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)
5 Multiple choice questions
- weighed against the evidence that the results were not expected and significantly different from the teachings of the prior art.
- Printed Matter: The text of a book is not patentable (a mechanism to make a book might be, but not the text itself).
Naturally Occurring Articles: You cannot patent a plant/animal found in nature (genetically engineered ones are different). Example: Peeled shrimp are not patentable (although a new mechanism to actually peel the shrimp could be).
Scientific Principles: Theoretical discoveries that are not actual inventions cannot be patented.
- 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)
- 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.
- 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.
5 True/False questions
Co-authorship: → (What are the rules for deciding if it is the same inventive entity):
If the applicant is one of the co-authors of the prior art, he may file the 37 CFR 1.132 affidavit if the work referenced by the claim was his own work. (Another method is a normal 37 CFR 1.131 affidavit claiming to have invented the item before the prior art got published).
Appeals & RCEs: → 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!!
Special Status for a Small Entity making a Biotech Patent: → 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.
Prima Facie Case: → Just like with other forms of evidence in the affidavits, it is not sufficient to merely allege diligence, there must be facts showing the diligent work. For example, even if the applicant is doing nothing, he may be 'diligent' if he can show evidence that there is a valid reason for inaction, and that this reason means the applicant was actually being diligent.
The (watch out McCoy) nexus requirement: → the evidence the applicant puts forth must have a common nexus with the actual invention being claimed.