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5 Written questions

5 Matching questions

  1. Timing
  2. Option 1: Directly to the Federal Circuit Court of Appeals:
  3. What do appeal matters concern and who deals with them?
  4. 1206: Amendments, affidavits, other evidence that gets filed with or after the appeal:
  5. 1211.01: Further consideration of a rejection:
  1. a it is not a matter of right to have new amendments added on to the application during the appeal process. The amendment process during appeals is under 37 CFR 41.33, and not under the (more permissive) 37 CFR 1.116.
  2. b If all claims were previously rejected then this court's decision is final on the patent one way or another.
    If however some claims were previously allowed, then only the claims that were rejected are at an end, the allowed claims can continue to issuance.
    Remand: The court can remand back to prosecution just as the Board can, although the examiner cannot request a re-hearing. The court will give the merits it wants the examiner to consider.
  3. c Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences
  4. d 1) Must be filed within the greater of: 2 months of PTO receipt of notice; or
    2) time left to reply to the action being appealed
    3) EOT for up to 5 months
    4) Failure to file brief dismisses appeal and abandons application if no allowed claims
  5. e 1) The examiner's supplemental answer may have new grounds for rejection of a claim if it is in response to the board sending the app back for further consideration.
    2) Whenever the examiner makes a supplemental answer (even if it does not have new grounds for rejection) the applicant must file one of these forms of response to avoid having the appeal dismissed:
    1. Reopen prosecution on the claim, this is the normal 37 CFR 1.111 response to a rejection and it can also have the 37 CFR 1.130/1.131/1.132 affidavits & evidence accompanying the response.
    2. Maintain the appeal: By filing a brief (37 CFR 41.41) the appeal can be kept going after the remand & supplemental response.

5 Multiple choice questions

  1. 1. cancel claims (remaining claims could be allowed)
    2. rewrite dependent claims into independent form (if a broader independent claim is shot down, the dependent claim with all of the limitations of its parent + extra limitations might still be allowable and needs to become an independent claim if the parent is no more).
  2. Optional; must be filed within 2 months of examiner's answer
    Good cause extension of time
  3. MPEP section 1208 recites 11 content requirements
  4. 1. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary
    Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question.

    2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground.

    3)1214.03: The Rehearing:
    The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed.
  5. Remember, these are for shortening the life of a claim to that of a pre-existing patent. They are useful in avoiding some double-patenting rejections (like a judicial double patenting rejection).

    It must expressly disclaim the terminal part of the patent's term.
    IT must state that the patent on the matter will only be enforceable for the limited time period that is disclaimed.
    Who has to sign a disclaimer: Either the applicant, the assignee (if assigned in full), applicant & assignee together (for partial assignment), or the atty/agent of record.

5 True/False questions

  1. 1212: If the board has a matter of interest in deciding the case (like wanting more info on case law, or the applicability of prior art that is not already on the record), then it canmake a request for the appellant to file a brief that gives the board the info it wants. If the appellant does not respond within the time period set by the board, the appeal may be dismissed.

          

  2. Option 2: Going to the DC Circuit Court:If all claims were previously rejected then this court's decision is final on the patent one way or another.
    If however some claims were previously allowed, then only the claims that were rejected are at an end, the allowed claims can continue to issuance.
    Remand: The court can remand back to prosecution just as the Board can, although the examiner cannot request a re-hearing. The court will give the merits it wants the examiner to consider.

          

  3. Reconsideration and Court AppealOne important caveat: Remember that when filing an RCE after a final rejection the applicant has a choice: Either appeal, or file the RCE. By filing an RCE the applicant is agreeing not to file an appeal, at least until the claim is rejected under the RCE itself. So even if there are 2 rejections in the original app, when the applicant files an RCE he is waiving the appeal until there is another rejection.

          

  4. 1211: When the Board remands an appeal back to the Examiner:
    This can happen in different situations where the board wants the examiner to look at the app again:
    1. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary
    Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question.

    2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground.

    3)1214.03: The Rehearing:
    The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed.

          

  5. What is two actions by patentee are not appealable?(37 CFR 1.4131): Step 1: The applicant has to file notice of appeal, which simply means that the applicant notifies the USPTO of the intent to appeal and includes a fee.

    Step 2: Actually file an appeal brief:
    TIME LIMITS: The applicant has 2 months from the receipt of the notice to appeal until the appeal brief itself is due. If there is an appeal while there are other outstanding deadlines, the appeal acts to toll the other deadlines (just like a pause button). One weird thing: The notice of appeal is supposed to be sent in person or via the Express Mail system. A mailing certificate does not apply here. Instead the USPTO will consider the "date in" at the post office to be the date of receipt of the notice, and that is the date from which the 2 month period begins counting.

          

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