5 Written questions
5 Matching questions
- What is considered objective evidence?
- 3 Major points needed for the JRA:
- Biotechnology Apps (706.02(n)):
- What has to be Recorded from the Interview? (713.04):
- 37 CFR 1.136(a) Procedures: (710.02(e))
- a comparative date; unexpected results; commercial success; long-felt but unsolved need; failure of others; skepticism of experts, etc.
Opinion evidence is also entitled to be considered
- b It is the applicant's or atty/agent of record's duty to make records of the substance of the interview.
The substance of the interview on the merits has to be recorded, whether or not agreement on claims was reached or not. (points raised purely on procedure or discussion of typos in the app do not have to be recorded)
The examiner should review the record made by the interviewee and under 37 CFR 1.135(c) should give notice & 1 month to have the interviewee correct deficiencies in the record if there are any.
- c Short note: A biotech app has to contain both the process and the compositioninformation for the invention together in 1 app OR if it is in 2 apps they both must have the same effective date. Both the process and the composition also have to be owned/assigned to the common owner.
- d 1. claimed invention was made on behalf of the parties to the JRA and
2. the invention was made due to activities of the JRA (not just invented at random, but as part o f the JRA) and
3. The app has to be amended to clearly disclose the names of the parties to the JRA.
- e 1) These are automatic unless prohibited by statute, a CFR rule, or if the applicant has been informed that there is no extension by the Office.
2) The applicant may include the request for extension within the time period of the extended request, along with a fee (which is reduced by 50% for SES applicants). The request may be on a separate paper, included as part of the cover letter, or anywhere else on the submission.
3) The applicant can make the requests preemptively in the applicantion by:
A. authorizing in the original app that any reply requiring a petition for time extension should be treated as having the request automatically.
B. There is also an authorization for charging the extension fee that should be made indicating the Patent Deposit Account number to use in making the withdrawals for the fee.
4) Simply paying the 37 CFR 1.136(a) extension fee at the time of submitting the response (assuming it is after the SSP and before the 6 month max) the applicant is constructively making a request for extension.
5 Multiple choice questions
- even if the invention produces the beneficial result, that is evidence showing the invention is obvious. The applicant's best bet is to try to show that the magnitude of the beneficial effect was so significantly different than what was expected that it ought to be non-obvious.
- 1. examine patent, claims, search prior art ->
2. If rejecting a claim, issue first rejection ->
3. Applicant may appeal under 37 CFR 1.111, may have amendments (but no new matter!) to back the appeal ->
4. If not accepted, a second rejection (that is usually a final rejection) is issued ->
5. If there is a final rejection, then the applicant has 1 more chance under the (narrower) 37 CFR 1.116 to appeal 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!!
- The applicant will file amendment(s) to reply to final rejections, and the amendments may be non-entered (not part of the official app). This is to buy time to either file an appeal, or to file an RCE under 37 CFR 1.114, possibly a CIP with new matter (37 CFR 1.53(b)), or for design patents a CPA under 37 CFR 1.53(d).
- The initial time period for reply is set for a shortened statutory time period of 2 months, with the 37 CFR 1.136(a) option to extend by an additional 4 months.
5 True/False questions
Evidence Needed to Prove Common Ownership: → A JRA is different than common ownership in that multiple parties do not have to share or assign ownership of inventions back & forth. For example, if a University A has a JRA with corp. B, then A can invent X under the JRA, but retain ownership of X, while B may invent X' (normally defeated under 102(f)(g)) and still get a patent on it because of the JRA. B still does not own X, and A still does not own X'.
However: If there is a JRA that comes into effect AFTER the new invention is made, the new invention is not covered.
Also: JRA's are often narrow, so a JRA covering invention Y will not allow the partner to make a new invention X' based on the partner's previous invention X. (Look at thetime and scope of the JRA to determine if it works).
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.
Hitting the Pause Button: Suspending & Deferring Action on an App(37 CFR 1.103 in Charts; 709): → 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's Health: → 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.
If there is a substantial delay in the Applicant receiving an OA: The Office will restart the original time period for reply to run from the actual receipt date by the applicant under the following circumstances: → 1. Has to be in writing;
2. Has to identify the app by the the app # and the filing date.