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5 Written questions

5 Matching questions

  1. Reconsideration and Court Appeal
  2. Terminal Disclaimers
  3. 1205.03: If a brief is non-compliant:
  4. When should the request for an oral hearing be made?
  5. Appeals
  1. a 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.
  2. b Remember, appeals are only for decisions by the USPTO on the actual merits of the patent, other decisions are protested via petition instead. Remember, any petition not filed within 2 months of the underlying action may be dismissed by the USPTO under 37 CFR 1.181(f).
  3. c TIME: the request is 2 months from the examiner's initial or supplemental answer (just like other time limits in an appeal), however it can only be extended for good cause (37 CFR 1.136(b)) not automatically.
  4. d f the brief is non compliant, the applicant will be notified and has a 1 month (30 day) time to correct. The time is extendable under 1.136 (a)(b), and the appeal will be dismissed if the applicant fails to comply. If the applicant actually disagrees with the finding that the brief is non-conformant, he may petition under 37 CFR 1.181 or 41.3, but the due date for the corrections will not toll.
  5. e 1) Can request rehearing on paper within 2 months from Boards decision
    2) Good cause extension of time available
    3) Court action must start within 2 months (at least 60 days) from decision

5 Multiple choice questions

  1. 1. claim cancellations
    2. any corrections to comply with formal requirements (spelling, punctuation ...)
    3. present the previously rejected claims in a form that is better for appeal; or
    4. Actually amend the spec or claims, however there has to be a good showing and cause given for why this was necessary and also not done earlier.
  2. What's the big difference? In the Circuit Court it is actually possible to introduce new evidence while the court of appeals does not allow this. However, the plaintiff will have to show good cause why this evidence was not actually given to the Board or examiner earlier in the process. (Note: new evidence that was previously withheld due to fraud or gross negligence is not allowed).
    The circuit court can issue the same decisions as the appellate court above.
  3. Say there is a final office action (3 month SSP), and the applicant files notice to appeal within 1 month of the office action. If the applicant fails to submit his actual appeal brief within 2 months of the notice, but still gets it in before the original SSP. Then the applicant still has to file a petition for a time extension. (Same thing can happen with an RCE, if the RCE is filed > 2 months after the office action, but before the 3 month SSP, a petition for a 1 month extension is needed).
  4. Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over.
    TIME: 2 months after the Board's final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause.
  5. MPEP section 1208 recites 11 content requirements

5 True/False questions

  1. 1207: The Examiner's Answer to an Appeal Brief: What are the three options an examiner has after reading the appeal brief:Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over.
    TIME: 2 months after the Board's final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause.

          

  2. Appeal Conference and Examiner's Answer1) File notice of appeal within 2 months of final (second) rejection on merits
    2) EOT available for up to 3 more months

          

  3. Decision by BoardRemember, appeals are only for decisions by the USPTO on the actual merits of the patent, other decisions are protested via petition instead. Remember, any petition not filed within 2 months of the underlying action may be dismissed by the USPTO under 37 CFR 1.181(f).

          

  4. Amendments filed on or after the date of the appeal brief: (less leeway)Like any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained.
    Components of the brief:
    1. Real party of interest (the inventor/applicant/assignee)
    2. Related appeals & interferences (background info on other proceedings)
    3. Status of Claims (which ones are allowed/rejected)
    4. Status of Amendments
    5. Summary of claimed subject matter
    6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were)
    7. Argument (why the claims should not be rejected)
    8. Claims appendix
    9. Evidence appendix (this is where additional affidavits and other evidence are put)
    10. Related proceedings appendix.

          

  5. Disclaimers: Remember, there are 2 kinds:A failure to provide the appeal brief will result in dismissal of the appeal. However, if some of the claims in the patent were originally allowed, then the parts of the app that are allowed will go back to the examiner and the app will not be immediately abandoned. If however none of the claims were originally allowed, the entire app gets abandoned if the applicant fails to provide a brief. (The normal 37 CFR 1.137 revival terms are available if the abandonment was legally 'unintentional' or 'unavoidable'; remember that a successful 37 CFR 1.137 acts as an RCE).

          

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