5 Written questions
5 Matching questions
- More on 37 CFR 1.121 (how to actually make amendments):
- Review of 35 U.S.C. 102(e)(f)(g):
- When may affidavits and declarations not be submitted?
- NON-Statutory Time Periods:
- 9 CRUCIAL Examples Showing 102 in action: (pages 231-240):
- 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 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).
- c 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).
- d The amendment should have a coversheet (see example in MPEP) that clearly says AMENDMENT at the top, and that lists out all the amendments to the specifications, drawings, claims and where they go in the original app (like what pages an amendment applies to). At the end of the amendment, there is usually a section called: Remarks/Arguments that gives a brief description of why the amendments were added.
Each amendment should begin on a separate sheet for its given section (1 for specs, 1 for claims, 1 for drawings)
- e May not be submitted if the rejection is based on a US patent to others claiming same patentable invention (interference)
5 Multiple choice questions
- (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.
- 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.
- Applicant may request a suspension for up to a maximum of 3 months at the time it files for a CPA or RCE. The request has to be filed at the same time as the CPA/RCE.
This is to allow up to 3 months to give the applicant time to write amendments or arguments to put in the CPA/RCE for the next round of examination.
- The amendments must be made before the issue fee is paid
The applicant may attempt to file amendments after allowance, but remember Ex Parte Quayle, there is no right to have the amendment examined and added, just the ability to request at the exmainer's discretion.
The applicant has to make a detailed statement as to how the new amendment is needed for: (A) proper disclosure and protection of the invention, and (B) require no substantial work on the part of the office.
- 1. the app is under appeal
2. there has been a final rejection under the last Office action.
3. there has been a notice of allowance (the claims are being allowed)
4. Any action that closes prosecution (meaning no more exams are being made). Example: Ex parte Quayle where the claims are substantively OK, but the app needs to have formal corrections made before it is finalized.
Remember: an RCE is not the same thing as a 37 CFR 1.53(b) continuation. For design patents, the CPA is sued instead, but remember, there is no CPA for a utility or plant patent.
5 True/False questions
RCE Deadlines: These are different than for just a normal reply! The RCE must be filed before the earliest of: → 1. Payment of the issue fee (when you actually get a patent). Exceptions may be made if the Office grants a petition under 37 CFR 1.313.
2. Abandonment of the app (The reason all of those replies above matter is that they keep the app alive instead of abandoning it. This buys time to get the RCE filed).
3. A filing of notice of appeal to the Federal Circuit or commencement of a civil action (RCE's cannot happen while court proceedings are going on). However, if the court proceeding is terminated, the RCE could be filed if the patent is not abandoned.
What forms of communication are allowed? → Face to face interviews are the standard
Phone interviews and remote teleconferencing are also available
Email: is not allowed for interviews without the express prior written consent of applicant or atty/agent of record.
Video Tapes: The applicant must be able to show the content of the video has a bearing on outstanding issues related to the app.
The Office has to determine if the information is important to the reasonable examiner in deciding whether or not to issue the application (this is the favorability issue, favorable information that is important to deciding the allowance has to get published). → 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
Petitions to Expunge Info from the Record: (37 CFR 1.59(b)) → 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.
What if ALL of this fails and the App Cannot be Revived? → Step 1: Request a reconsideration of the revival under 37 CFR 1.137(e). This has to be made within 2 months of the denial of the petition (extendable under 37 CFR 1.136(a)).
Step 2: If the reconsideration also fails, you are SOL. At this point, it is possible to file a substitute application that matches the original app. BUT: The substitute cannot benefit from the filing date of the abandoned app!!