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5 Written questions

5 Matching questions

  1. Prima Facie Case:
  2. 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:
  3. Petition to expunge information -
  4. 9 CRUCIAL Examples Showing 102 in action: (pages 231-240):
  5. 3 Major needs for common ownership:
  1. a 1. prior art to the claimed invention must be commonly owned (100% by the same party or joint parties) OR
    2. subject to assignment to the common owner (like when an employee makes an invention that is assigned to the employer who is the common owner of multiple inventions). OR
    3. There was a JRA in place
  2. b must have fee
    available for: Information properly submitted that was not found to be material; Info unintentionally submitted in application; Info submitted in incorrect application; Cannot be used for info forming part of the original disclosure, however, applicant can try to petition for a waiver to get originally filed material expunged
  3. 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).
  4. d Remember, the 37 CFR 1.132 affidavit may be filed to traverse a rejection (get around an objection). That sometimes include evidence that the same person invented the prior art that is being referenced, or that the new invention is actually non-obvious. However, the evidence must be weighed against the prima facie case that the invention is obvious.
    1) The weight is a preponderance of evidence
    2) After the prima facie case is established, the burden is on the applicant to meet the weight of the evidence in his favor.
  5. e 1) Petition is filed within 2 weeks of the actual receipt of the OA.
    2) A substantial portionof the reply period had already elapsed (like 1 month out of a 2 or 3 month reply period). AND
    3) The petition itself has to include:
    1. Evidence showing the actual date of receipt of the OA, like copy of the envelope, some evidence showing that the receipt actually was on the later date. AND
    2. A statement setting forth the date of the receipt of the OA, and explanation of how the evidence show the receipt was on the later date.

5 Multiple choice questions

  1. 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.
  2. Drawings must be updated on separate sheets with each amended drawing sheet having: "Replacement Sheet" at the top
    The replacement sheets must be entered no matter what kind of changes are made to an existing drawing (even if it is only to redraw the same picture with better quality)
    Completely New drawings must be on new sheets
    Annotated (marked-up) copies may also be included with the replacement sheets, and may be required if the examiner requests the annotated copies. They should be labeled as "Annotated Sheet"
    The amendment or the previously mentioned "Remarks & Arguments" section should explain the changes made to the drawings.
  3. File the petition to make it special. The 37 CFR 1.17(h) fee is required.
  4. 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!
  5. (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).

5 True/False questions

  1. Other Requests for Suspension when there is a CPA or RCE (37 CFR 1.104(b)(c)):This is where the examiner initially examines the patent app and the prior art.
    Almost all the time, the examiner will issue an initial rejection of the claims in the First Office Action taken after the app is received.
    The applicant gets back copies of the best references found to support the rejection.
    After the first office action, the applicant has the 3 month Shortened Statutory Period (SSP) in which to reply to the Office Action. The SSP may be extended by an extra 3 months under 1.136(a) by paying a fee.
    The initial rejection is usually non-final BUT (706.07(b)) sometimes an app may receive a final rejection on the first Office action


  2. Express Abandonment after the issue Fee is paid:Drawings must be updated on separate sheets with each amended drawing sheet having: "Replacement Sheet" at the top
    The replacement sheets must be entered no matter what kind of changes are made to an existing drawing (even if it is only to redraw the same picture with better quality)
    Completely New drawings must be on new sheets
    Annotated (marked-up) copies may also be included with the replacement sheets, and may be required if the examiner requests the annotated copies. They should be labeled as "Annotated Sheet"
    The amendment or the previously mentioned "Remarks & Arguments" section should explain the changes made to the drawings.


  3. What is considered objective evidence?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


  4. Amendments that are filed after a Final Rejection (714.12, 714.13) (like a 37 CFR 1.116 amendment in response to the final rejection):The applicant no longer has a right to file amendments, but they are still generally allowed in some instances for amendments that:
    Cancel claims (to make all the remaining claims valid for issuance)
    Comply with formal requirements (fix typos and other mistakes that do not affect the merits of the app)
    Presenting claims in a better form for appeal (if the applicant will appeal the final rejection, this amends the claims to be ready to go into the appeal).
    If the amendment actually will affect the merits of the app, it will be accepted only if there is a showing of a good and sufficient reason for why the amendment was not made sooner. (37 CFR 1.116(c))
    Amendments that put the app into the correct for for allowance (granting of the patent on whatever claims have been allowed) or for appeal is allowed after final rejection.
    ANY OTHER AMENDMENTS that do not meet the above criteria will not be allowed. The Office will issue an Advisory Action to inform the applicant that the amendment is not allowed.


  5. 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.