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162 Cards in this Set

  • Front
  • Back
When does a US Patent End
20 yrs from earliest domestic event
What if 1 inventor in a group screws up the oath
Only that 1 inventor has to sign the supplemental oath
Notice of omitted items
a minimum requirement is missing. Won't get filing date until cured.
What is the scope of "comprising"
everything in spec and their equivalents
What is the scope of "consisting"
limited to what is written
What is the scope of "consisting essentially of"
what is listed & their equivalent that don't materially change the app
What is the form of markush claims
"chosen from the group consisting of" coupled with "and"; "or"
What can be cited in a reissue
anything including new material and all the old objections/rejections
Who can ask for a reissue
only the owner
How can you broaden claims after your patent issues
Ask for a reissue within 2 yrs of patent issuing
Recipe for reissue
make an offer to surrender the original patent; get consent from assignee, copy of spec & claims & new oath & fee on one side of paper (new oath says that there is at least 1 error with original patent); pay fee; file IDS
What if you fail to file a divisional during restriction practice
You cannot file a continuation to claim the other disclosed invention
Amendment format during reissue/reexam
add - underlined; deleted - square brackets; they are cumulative
Differences b/t reissue/reexam
can broaden claims in a reissue; can file a continuation in a reissue
What can be cited in a reexam
only patents and other printed publications
Can you get extensions during a reissue
Yes, but only for cause (have to ask ahead of time)
What can a certificate of correction be used for
fixing typos; fixing inventorship after issue; fixing claim of priority
When can priority be fixed using a certificate of correction
When a proper claim has been made and perfected in a prior app
What is the claim in a design app
the ornamental design for (name of invention) as shown in the drawing
What are the maintenance fees for a design app
none
What does the preamble in a design application have
name of inventor and name of invention
What is the term for a design app
14 yrs from issue
What type of figures can be submitted
B/W photographs & Color drawings
What is the amount of time for foreign design app priority
6 months
What type fo plants can't be patented
bacteria & tuber propogated (Jerusalem artichoke or potato)
What are the requirements for a patentable plant
invented it yourself or discovered it in a cultivated land; and asexually reproduce the plant
How many figues can you submit
2 sets of drawings & 1 B/W photocopy
How many claims are in a plant patent
one
What can an examiner request for a plant pattent
a specimen
How can you overcome a rejection from an identical claim in another app
cancelling claim from one application
How can you overcome a rejection from an obvious variant in another application
filing a terminal disclaimer
When do you get a restriction
When the inventions are each able to support separate patents and are either: (1) independent - subjects are unconnected in design, operation, or effect; (2) distinct - capable of separate manufacture, use, or sale & patentable over each other
How can you avoid a restriction for an old app
For apps pending at least 3yrs prior to June 8, 1995, restriction can be avoided by paying a fee if same restriction was not brought prior to June 8, 1995 & applicant did not cause the restriction to issue.
How can you choose patent terms for older apps
If an app issues that was filed prior to June 8, 1995, can choose 20yr from filing or 17yr from issue
A process and apparatus are distinct if it can either be shown that:
(1) Process can be calimed by a materially different apparatus or by hand or; (2) apparatus can be used in a materially different process
An apparatus and product are distinct if it can either be shown that
(1) Apparatus is not the obvious one for making the product and can be used ot make other products; (2) Product claimed can be made by a materially different apparatus
How is double patenting possible and what are the types
Possible only if common inventor or assignee; types are same invention and obviousness
What is same invention double patenting
you claim something that is indistinguishable from what is claimed in a prior app; need to cancel claim
What is obviousness double patenting
occurs if you file a series of successive applications of successively better inventions; you can file a terminal disclaimer
What 4 things can be patented
a machine; a manufacture(a thing you turned into something); a composition of matter(paint, drug); process
Can an examiner use prior art against you that published after your filing date
Yes, but only to show the state of the art at the time of filing
Can abandoned apps be used as prior art
yes, but only if they were published or referenced in a published document
When is a thesis considered published
when it is cataloged
When is an oral presentation considered published
if copies of the presentation handed out to the public
When is something sent in the mail considered prior art
On date of receipt
Steps for figuring out a 103 rejection
Determine scope and content of prior art, determine PHOSITA, see if PHOSITA would have seen to combine the prior art or if prior art says to combine, see if PHOSITA would have arrived at your invention by combining
How can you rebut 103 rejection
secondary considerations - unexpected results, commercial success, longfelt need, failure of others
112 first paragraph requirements
(1) written description - sufficiently described to show that inventor owned at filing; (2) enablement - PHOSITA would not have to engage in undue experimentation in relation to field
Can you use negative limitations in claims
Yes, but only in chemical patents
How do you start a patent appeal
Send notice and pay money
How long after you send your notice is your appeal brief due
2 months after the PTO receives the notice
Can you extend the appeal brief due date
Yes, by up to 5 months for a total of 7 months
How long are the due dates after the appeal brief is filed and are they extendable
2 months and they are extendable for cause
What must the appeal brief contain
name of real party of interest; identify related appeals or interferences; status of claims; status of all amendments; summary of invention; arguments directed toward each and every invention; appendix of claims actually on appeal
After you file your appeal brief, what can the examiner do
allow your patent or send you an examiner answer
What can you do after you receive the examiner answer
Within 2 months you can file a reply brief and/or request an oral hearing
After the board decides your appeal what can you do
(1) If all rejected & board affims, you have 2 months to appeal to CAFC or dist ct; (2) Affirmed in part & reversed in part - same as above, but allowed will issue if you do nothing; (3) board can issue own grounds for rejection - you can then reopen prosecution before examiner or ask board for reconsideration
Can you defer issuance
Yes, but only for a month and only for good reason
PTO can withdrawl patent from issue because
mistake by PTO; violation of duty to disclose discovered by PTO; discovery of unpatentability; interference is required
Inventor can withdrawl patent from issue because
filing a continuation; getting an IDS considered; a claim is unpatentable (have to include a statement identifying unpatentable claims and include an amendment and explanation why amended claims are now patentable)
When are maintanence fees due
3.5, 7.5, 11.5
What is the term for a utility app
if filed before June 8, 1995 - 20 yrs from filing or 17yrs from issue; if filed or continued after June 8, 1995 - 20 yrs from filing
What are the minimum requirements for PTE
app filed on or after May 29, 2000, overall pendency longer than 3 yrs, and another specific event
How long do you have to wait for first action or hearing to qualify for PTE
14 months
How long do you have to wait for a PTO response to qualify for PTE
4 months
How long do youh have to wait for a successful appeal to qualify for PTE
4 months
How long do you have to wait for an app to print to qualify for PTE
4 months
How can you cut off your PTE eligibility
file a continuation
How long do you have to challenge PTE calculation
6 months from issue
What is the term for a plant app
if filed before June 8, 1995 - 20 yrs from filing or 17yrs from issue; if filed or continued after June 8, 1995 - 20 yrs from filing
What is needed for US app reasonable royalties
app going to publish, tell infringers what is infringing what claim; infringed claims in app have to be substantially similar to final claims
What is needed for PCT app reasonable royalties
having english translation on file & giving notice
How do you enter the PCT national phase via international application
send a copy of your international app and fee by 30 months; oath and trans can come up to a month later
How do you enter the PCT national phase via US application
file regular US app within 30 months of priority and claim priority from PCT
What do you need to get a PCT filing date
request, designation, name of applicant, spec, sig of 1 inventor
What can show up later when filing a PCT application
abstract & money
What is the deadline for changing PCT priority claim
16 months of very original priority or 4 months of filing PCT
What is the unity of invention PCT standard
distinct inventions will be kept together if their point of novelty is the same (i.e. composition & method of making the composition)
What is a PCT 102(e) date
apps filed before Nov 29, 2000 - FOT rule, on or after is international filing date if designates US and publishes in English
What is the 102(b) date for a PCT
international filing date
What is the term of a US patent stemming from PCT
20 yrs from international filing date
What is the time limit on getting a PCT started
12 months from priority
When are the preliminary opinion and international search report published
16 months from filing international app
When is the international app published
18 months from priority
What is the deadline for filing PCT amendment and phase 2 examination request
22 months from priority or 3 months from preliminary opinion
When is the limit for entering the national stage
30 months from priority
Who can file an international app at the USPTO
a us citizen or resident
How many indicia do you need when filing an amendment and what can be used
3 - inventor's name, filing date, title, app number, examiner name, group art number
What is a 131 affidavit used for
dates
What is a 132 affidavit used for
everything, except for dates
How can you spot a method claim
a combination of steps using -ing words and the preamble tells where the steps will take you
How can you spot a product plus process claim
usually claiming a thing by the method used to create it (i.e. superglue - glue made by the process of mixing A and B in darkness and adding light)
What are PTO keywords for a design claim
aesthetic, outward appearance, ornamental appearance
What does 112 first paragraph require
written description, enabling, best mode
What does 112 second paragraph require
have to particularly point out and distincly claim what the applicant believes he invented
What does 112 sixth paragraph require
means plus function claims are contrued according to the spec and spec's equivalence according to a PHOSITA
What is the test for 103 obviousness
Graham test - determine scope and content of prior art, determine differences between prior art and invention, determine the level of skill in the prior art. Also need a suggestion to combine references or PHOSITA could see to combine, combination must include everything claimed, need a reasonable likelihood of success. A suggestion of success is all you need.
What is not patentable under 101
scientific principles, naturally occuring phenomena, atomic weapons, devices useful only for illegal purposes, method of doing business
What can you file to avoid abandonment when you receive a final office action
response, appeal, continuation
What rule lets you file an amendment after final
116
What can be amended after final
reduce issues on appeal (cancel claims); adopt examiner's suggestions; present claims in better position for appeal
What is transitional after final and what rule is it
129 - if facing final in an app pending before June 8, 1993, and facing final rejection after June 8, 1995, pay examiner fee and final is withdrawn (2X)
What rule is RCE and how do you do it
114 - can file anytime after the close of prosecution, but before issue fee, abandonment, or end of court action. Need to file request, response, and pay fee.
What is a CPA
an RCE for a design app; considered a new app
What are the free petitions to make special categories
illness, environment, energy, age, terrorism, superconductivity
What are the fee petition to make special categories
prospective manufacture, infringement, safer DNA, HIV, small entity biotech, for the asking (fee, search report, distinguish from search report)
When can you get a suspension of action
when no outstanding responses and ask for a definite amount of time (free if cause, fee if no cause)
Exceptions for automatic extensions
when PTO says so, appeal, request for oral hearing, anything in an interference, re-exam, IDS, issue fee, notice of omitted items, refund, filing formal drawings
What is the max deadline for a notice of omitted items
2 months
What is the deadline for a refund
3 months
What is the deadline for filing formal drawings
3 months
What is the 2 month rule
If you file a reply to a final within 2 months of the final rejection post mark and the USPTO doesn't send you an advisory action within 3 months of postmark; abandonment is extended until the PTO mails the advisory or 6 month deadline, whichever comes first.
What can you extend for up to 7 months because they aren't statutorily set
notice of missing parts and appeal brief
What is the deadline for an examiner amendment
6 months
What if you forget to send something in for a re-exam
you get 1 month to correct it if you orignally file timely
When does the PTO tell you your app is abandoned after rejection
7 months after final rejection
Do you need an extension for an interview
no
When do you have a right to an interview
after the first office action, unless a continuation
When can you submit amendments
before any significant action is taken, after first office action, after final, after notice of allowance
What rule governs amendments after notice of allowance and what is it
312 - 4 whys - why needed now, why not done before, why it is still patentable, who no new issues presented
What do you need to do to amend spec in regular US app
hand in marked section - strike through or double bracket to take out; underline to add
What do you need to do to amend claims in regular US app
hand in marked claims - use status indicators; strike through or double bracket to take out, underline to add
What are rejections
based on law - 101, 102, 103, 112 - content of claims
What are objections
based on rules - 37 CFR … - form of claims
What can you swear back
102(a) and 102(e)
Where do 102 events and publications have to occur
events in US, but publications anywhere
When can an inventor not hurt himself under 102
102(a) & e
When is 102(d) a bar
when an inventor files an app in a foreign country more than 1 yr before the US app and it issues before the US app is filed
What is the 103C obviousness exception
cannot use a 102 e,f,g reference against the entity who owns or is assigned it
What is 102(g)(1)
interference when 2 applicants make the same exact invention (same disclosure and claims) - first to invent wins if not ASC (abandon inferred for short here)
What is 102(g)(2)
interference when someone makes the same thing prior in US and was not ASC, only 1 person applies
What is the window to record an assignment
3 months
What child application is an assignment not good for
CIP
What form does an assignment need to be in to be legal
written
What is the time to file for a notice of missing parts
2 months, extendable to 7
What is a certificate of mailing good for
anything except a new application, papers for an interference, and PCT
What is obviousness type double patenting, is it statutory, how do you get around it.
when your invention is an obvious varient of a commonly owned previously filed invention, it is non statutory, you get around it by filing a terminal disclaimer.
What is same invention type double patenting, is it statutory, how do you get around it.
It occurs when one commonly owned/invented invention has the same scope of claims as examined application, it is statutory, you cannot file a terminal disclaimer to get around, must cancel claims.
What are the dates for maintenance fees
from issue: 3.5, 7.5, 11.5
Term of a design patent
14 from issue
Term of an utility patent
20 years from filing
What is the unextendable time period for filing a DOE and NASA statement
30 days
What is the normal shortened statutory period for responding to a restriction requirement
1 month
What is the deadline for responding to a notice of missing parts
2 months
What is the period for responding in a reexamination
2 months
What is the period for all deadlines on appeal
2 months
What is the time for filing a petition after decision on reconsideration by examiner
2 months
What is the unextendable period to pay issue fee
3 months
What is the unextendable period to file formal drawings
3 months
What is the deadline after issuance for copying claim of issued patent or published application for interference
1 year
What is the foreign priority deadline for an utility application
1 year
What is the foreign priority deadline for a design application
6 months
Time limit for reviving patent lapsed for failure to pay maintenance fee
2 years
Date on which US apps are automatically published and IAs potentially can accrue a 102(e) date
Nov 20, 2000
What foreign inventive activity can you use to swear back
invention completion date
What is the WTO date
Jan 1, 1996
What is the NAFTA date
Dec 8, 1993
What is the date of the 1997 rule changes
Dec 1, 1997
What are the deadlines for claiming priority in a PCT
Can be added or changed within 16 months of priority and MUST be made within 4 months of the international application date
When can Art 19 amendments be made & what can they cover
they can cover the claims & are made after the international search report and written opinion are returned (16 months)
When can Art 34 amendments be made and what can they cover
they can be made by the later of 22 months from IA date or 3 months after search report is mailed
when is the deadline for the demand for preliminary examination
30 months