Patent Bar

Front 1

Review Of New Matter Objections And Rejections

Back 1

New matter both rejected and objected is APPEALLABE not PETITION.

Front 2

Final Rejection – Time For Reply

Back 2

If applicant replies w/i 2 months after mailing final rejection and an Advisory Action is mailed after 3-month shortened statutory period, extension fee is counted from the date of the mailing AA.

Front 3

37 CFR § 1.85(a) - Correction of drawing

Back 3

Correcting the drawings to comply with 37 CFR § 1.84(a)(1) and (k), and making them suitable for reproduction is a bona fide response

Front 4

Minimum Requirements for an IDS

Back 4

NO information in the IDS be disclosed w/i 3 months from IDS filing date.

Front 5

Capture Bibliographic Information in ADS

Back 5

ADS errors may be recaptured by request, supplemental ADS submission, and oath/declaration under 37 CFR § 1.63 or § 1.67/letter pursuant to 37 CFR 1.33(b).

Front 6

Affidavit Practice - 37 CFR 1.132

Back 6

Disclosure of factual evidence of time, effort and knowledge required for the practice of invention can rebut a prima facie case of nonenablement rejection.

Front 7

Impermissible Recapture

Back 7

Exists if the limitation being omitted or broadened was originally presented/argued/stated to overcome objection/rejection

Front 8

Continuation Application

Back 8

Filed under 35 USC 111(a) with new and proper specification, any necessary drawings, signed declaration and all required fees.

Front 9

Continued status of small entity.

Back 9

Continuation, divisional, or CIP application, including a CPA or reissue application requires a new assertion of small entity status.

Front 10

A Product Appearing To Be Substantially Identical Is Found And A 35 U.S.C. 102/103 Rejection Made

Back 10

Although produced by a different process, the burden shifts to applicant to prove an unobvious difference between claimed product and prior art.

Front 11

Written description requirement

Back 11

A claim that omits essential/critical feature of the invention originally disclosed lacks of written description requirement.

Front 12

Reasonable Diligence

Back 12

1/ Entire period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses.
2/ Work relied upon to show reasonable diligence must be directly related to the reduction to practice.

Front 13

CPA

Back 13

1/ Only for filing date before 5/29/2000
2/ After 5/29/2000, it is treated as RCE
3/ After 7/14/2003, CPA is only for design application.
4/ NO new matter
5/ Must file with (1) filing fee, (2) oath/declaration

Front 14

How to overcome a rejection based on the statutory double patenting?

Back 14

Amending the conflicting claims so that they are not coextensive in scope.

Front 15

What're factors to determine undue experimentation?

Back 15

1/ The breadth of the claims.
2/ The nature of the invention.
3/ The state of the prior art.
4/ The level of one of ordinary skill.

Front 16

When an abandoned U.S. patent application become a prior art?

Back 16

When it is properly incorporated by reference in the disclosure of a U.S. application publication.

Front 17

Markush Claim

Back 17

Consisting of ...and

Front 18

Essential Material

Back 18

1/ Neccessary to describe the claimed invention
2/ Provide enabling disclosure of the claimed invention
3/ Describe the best mode

Front 19

IDS

Back 19

Not permitted in provisional applications or PCT application in international stage

Front 20

When IDS can be filed?

Back 20

1/ First 3 months after filing OA or entry to national stage
2/ After that before final office action/notice of allowance with fees & statement
3/ NOT allowed after issue fee paid
4/ NOT applicable to RCE/CPA

Front 21

Third Party Submission

Back 21

1/ After puplication of application
2/ Within 2 months of publication/NOA

Front 22

When RCE can be filed?

Back 22

BEFORE
1/ Final Office action
2/ Notice of Allowance
3/ Exparte Quayle Action when application is under appeal
4/ Payment of issue fee

Front 23

RCE after Notice of Appeal

Back 23

1/ Prior to decision is considered withdraw the appeal regardless of whether the RCE includes the appropriate fee or a submission.
2/ and reopen the prosecution of the application.

Front 24

Comprising

Back 24

1/ inclusive/openended and does not exclude additional steps
2/ same as including or chracterized by

Front 25

Consisting essentially of

Back 25

1/ limit the scope of a claim
2/ to those that do not materially affect

Front 26

Consisting of

Back 26

exclude additional steps

Front 27

Whan RCE can be filed?

Back 27

BEFORE
1/ Final Office action
2/ Notice of Allowance
3/ Exparte Quayle Action when application is under appeal
4/ Payment of issue fee

Front 28

When RCE cannot be filed?

Back 28

1/ PA
2/ Design
3/ Reexamination
4/ Utility and plant patent application before 6/8/1995
5/ intenrational application before 6/8/1995

Front 29

Filing date in according to missing parts?

Back 29

Filing date for a nonprovisional application is the date of the submission of the drawings to complete the missing parts.

Front 30

1200 - APPEAL

Back 30

When a claim is rejected twice:
1/ patent owner involved reexamination proceeding may appeal final rejection
2/ 3rd party may appeal from final rejection in an inter partes proceeding.

Front 31

Appeal Brief

Back 31

1/ Due 2 months (extend to 4 more months) after Notice of Appeal
2/ Failure to file will dismiss appeal, but allowed claims will stand and be returend to examiner. NOT abandonned.

Front 32

BOA Remand to Examiner

Back 32

1/ For further consideration of a rejection
2/ For selection of prefered or best ground
3/ For further search
4/ For preparation of a supplemental examiner's answer in response to a reply brief.

Front 33

1300 - ALLOWANCE & ISSUE

Back 33

1/ Paid w/i 3 months from NOA
2/ Director cannot extend time
3/ New drawing must be submitted before 3 months period

Front 34

Withdraw from Issue

Back 34

By petition for:
1/ Perceived unpatentability of one or more claims
2/ RCA
3/ Abandonment of the application.

Front 35

1400- CORRECTION OF PATENTS

Back 35

To correct minor/clerical errors.

Front 36

Reissue Application

Back 36

To correct scope and contents of patent, which requires substantive examination.
1/ Can be granted a filing date without an oath or declaration/ filing fee being present.
2/ Correcting inventorship in a patent that does not require to file within two years after the patent issued.

Front 37

Conditions for REISSUE

Back 37

1/ Reissue must be filed within 2 years to broaden claims
2/ NO new matter introduced by reissue
3/ There must be errors in spec./claims without deceptive intent that would invalidate patent
4/ Can file with RCE, continuation/divisional apps. but NOT CIP
5/ Reissued patent may not exceed term of issued patent.
6/ Require consent of all assignees or remaining inventors

Front 38

Recapture Doctrine

Back 38

NO broaden claims to reclaim subject matter that is given up by narrowing amednment, argument/cancelation in OA.

Front 39

Requirements

Back 39

1/Copy of patent spec.
2/Oath & all assignees consent if any.
3/Signed by all assignees
4/Small entity applied.

Front 40

Certificate of Correction

Back 40

1/ Only change is to correct inventorship
2/ All parties agree to the change and no contest.

Front 41

1500 - DESIGN PATENT

Back 41

1/ Protect the way an article looks
2/ NOT included in PCT
3/ Term: 14 years
4/ NO provisional app. benefit claim
5/ NO maintenant fees
6/ NO RCE/Reissue
7/ 6 months to claim foreign priority app.

Front 42

1800- PCT

Back 42

1/ Utility patents only
2/ 102(b) bar is back to PCT filing date
3/ 30 months from international filing date
4/ MAY NOT filed via fax

Front 43

Who can file international app in the US?

Back 43

ONLY US resident/citizen

Front 44

What to file?

Back 44

1/ PCT request
2/ abstract & filing fees (OK late)
3/ certified copy of priority app.

Front 45

Enter US National Stage

Back 45

must file w/i 30 months from first priority date/PCT filing date:
1/ fee
2/ copy of international app. & English translation
3/ English amendments if required
4/ oath/declaration

Front 46

1900- PROTEST

Back 46

3rd party challenge pending app.
1/ any member of public/attorney can file
2/ no need to identify real party of interest

Front 47

35 U.S.C 102(a)

Back 47

1/ Patent or Printed publication by others in ANY country
2/ Known or Used by another in the US
3/ Less than 1 year

Front 48

35 U.S.C 102(b)

Back 48

1/ Patent/Printed publication by another in ANY country
3/ Public use or Sale in the US
3/ More than 1 year prior to US filing date

Front 49

35 U.S.C 102(c)

Back 49

1/ Abandonned inventions is not patentable

Front 50

35 U.S.C 102(d)

Back 50

1/ Foreign patent filed >= 1 year
2/ Foreign patent actually issued ( no need published)
3/ same applicant
4/ same invention

Front 51

35 U.S.C 102(e)

Back 51

1/ Described in US patent
2/ Invented by another
3/ Filed before US filing date

Front 52

35 U.S.C 102(f)

Back 52

1/ Applicant did not invent the invention
2/ Derivation from another's invention

Front 53

35 U.S.C 102(g)

Back 53

1/ Reduction to practice by another before applicant’s invention.
2/ In the US
3/ No abandonment, suppression or concealment.

Front 54

Constructive reduction of pactice

Back 54

Filing date at the PTO

Front 55

Actual reduction to pactice

Back 55

Sufficiently testing date of invention

Front 56

35 U.S.C 103 - Obviousness

Back 56

1/ Determine scope & contents of prior art
2/ Ascertain difference b/w prior art & claim
3/ Resolve level of ordinary skill in pertinent art
4/ Evaluate evidence of secondary considerations

Front 57

Overcome 35 U.S.C 103(b) rejection

Back 57

1/ Persuasively arguing claims are patentably distinguishable from prior art
2/ Amending to patentably distinguish claim and prior art
3/ Filing 37 C.F.R 1.131 affidavit/declaration
4/ Filing affidavit/declaration showing invention is not by the another

Front 58

Overcome102(b) rejection

Back 58

1/ Persuasively arguing claims are patentably distinguishable from the prior art
2/ Amending claims to patentably distinguish from prior art
3/ Perfecting priority under 35 U.S.C.120 by amending the specification to contain a specific reference to a prior application or by filing ADS.

Front 59

Overcome 102(e) rejection

Back 59

1/ Persuasively argue that the claims are patentably distinguishable from the prior art.
2/ Amend claims to patentably distinguish prior art.
3/ File affidavit/declaration under 37 CFR 1.132 showing that the invention is not by “another.”
4/File an affidavit/declaration under 37 CFR 1.131 showing that non US patent/publication reference claims the same invention.

Front 60

Overcome 102(a) rejection

Back 60

Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign priority filing date that antedates the reference.

Front 61

When extending due dates?

Back 61

1/ Total automatic extension no more than 5 months
2/ Response to Official Actions is no more than 6 months.

Front 62

Due date that cannot be extended?

Back 62

1/ IDS
2/ Due date set by statute for 6 months
3/ Response to Notice of Omitted items
4/ 2 months deadline to a refund for fee paid as a large entity

Front 63

Petition for unintentional delay include:

Back 63

1/ Evidence showing delay is unintentional
2/ Required reply
3/ Required fee
4/ Necessary terminal disclaimer

Front 64

Who can sign amendment?

Back 64

1/ Attorney/agent
2/ Attorney/agent acting under 37CFR 1.34(a)
3/ Assignee(s) of record
4/ All applicant

Front 65

35 U.S.C 112 - Enablement Disclosure

Back 65

1/ Enable person skilled in the art to make &use invention w/o undue experimentation
2/ Must be consistent w/ published information
3/ No self enablement

Front 66

Best Mode

Back 66

Prevent applicant to obtain patent w/o full disclosure required by statute

Front 67

35 USC 112, P(4) Requirements

Back 67

Dependent claim cannot be broader

Front 68

35 USC 112, P(6) requirements

Back 68

1/ Must use "means for" or "step for"
2/ "Means for" or "step for" must be modified by functional language
3/ Phrase must not be modified by structure, material/act for achieving specified function.

Front 69

When 37 CFR 1.131 is not appropriate?

Back 69

1/ Reference more than 1 year
2/ US patent/publication claims the same invention
3/ Reference and app/patent under reexamination are the same ownership

Front 70

When is nonanalogous art/teaching appropriate?

Back 70

1/ For 103 rejection ONLY
2/ NO 102 rejection

Front 71

APP. RESTRICTIONS/ DOUBLE PATENT - 800

Back 71

Restriction requires to elect between distinct inventions

Front 72

International app. as prior art

Back 72

US published app. of a national stage of international app. filed on or after 11/29/200 is prior art as its international filing date.

Front 73

Can RCE overcome restriction?

Back 73

NO

Front 74

If applicant agrees w/ restriction?

Back 74

File Divisional App. to non-elected invention. Parent case is not prior art.

Front 75

Improper Restrictions

Back 75

1/Single claim (Markus & design)
2/ unpatentable claims
3/ claims differing in form/scope
4/ means plus function apparatus & method claim language w/o "means for"

Front 76

Provisional double patenting rejections

Back 76

If the first app. has not issued patent at the time.

Front 77

Statutory Double Patenting

Back 77

Only single patent per inventor

Front 78

Overcome statutory double patent rejection

Back 78

1/ Cancel offending claims OR
2/ Amend claims

Front 79

Overcome non-statutory double patent rejection

Back 79

File terminal disclaimer

Front 80

Is abbandoned app. prior art?

Back 80

Only if it's previously published.

Front 81

Canceld matter?

Back 81

From app. file wrapper of US patent is prior art

Front 82

Which facsimile transmissions will be a date of receipt by the USPTO?

Back 82

Request for Reexamination.

Front 83

FOUR INQUIRIES to make an obviousness-type double patenting

Back 83

1/Level of ordinary skill in the pertinent art.
2/Scope and content of a patent claim and the prior art relative to a claim.
3/Evaluate any objective indicia of nonobviousness of the claim.
4/Determine the differences between the scope and content.

Front 84

Without Certificate of Mailing/ Transmission/Express Mail, which requires a petition for an extension of time and the appropriate fee?

Back 84

A complete first reply to a final Office action filed on the first day following the end of a shortened statutory period for reply. The Shortened Statutory Period ended on a Wednesday that was not a federal holiday, and the Office is open.

Front 85

Accessible files to public

Back 85

1/ Issued/published patents
2/ Reissued apps.
3/ Request for reexamination
4/ Files related to reexamination proceedings
5/ Files related to interference

Front 86

What are types of the apps?

Back 86

1/ Nonprovisional
2/ Provisional
3/ Divisional
4/ Continuation app.
5/ Continued prosecution app.
6/ Continuation-In-Part app.
7/ Reissues
8/ Substitute apps
9/ Statutory invention registrations.

Front 87

PROVISIONAL APP.

Back 87

Not require:
1/ Claims
2/ Oaths/declarations
3/ Examination
4/ Amendments
5/ IDS

Front 88

CONTINUATION APP.

Back 88

1/ Must be filed before abandonned / allowed app.
2/ No new subject-matter
3/ New asserttion as to a small entity status required
4/ No new oath/declaration required

Front 89

CONTINUATION-IN-PART (CIP)

Back 89

1/ Improvement of original app.
2/ File during pending app.
3/ New oath required
4/ Repeat part of previous subject matter and add new subject matter

Front 90

CONTINUED PROSECUTION APPLICATION (CPA)

Back 90

1/ No utility/plan apps.
2/ After 7/14/2003 only applied to design app.
3/ After Office action, can be treated as amended app to expedite the process
4/ Filed before paying issue fee, abandonment or termination
5/ Same subject matter / inventor
6/ Parent app is abandonned and small entity must be established
7/ May simultaneously file request for suspension of action for more time

Front 91

REEXAMINATION

Back 91

1/ Corrects errors in issued patents. May be inter-partes or ex parte.
2/ Provides an alternative to litigation to test the validity of an issued patent

Front 92

What's basis for reexamination established by “substantial new question of patentability"?

Back 92

Gatekeeper function to ensure the prior art will change the scope of the patent.

Front 93

EX PARTE REEXAMINATION

Back 93

1/ Determination if “substantially new question of patentability” exists.
2/ Must be filed during the patent’s enforceability, 37 CFR §1.510(a)
3/ Third parties must serve patentee if initiating reexamination, 37 CFR §1.510(b)(5)

Front 94

INTER PARTE REEXAMINATION

Back 94

Third party requestor is estopped based on the results of reexamination

Front 95

What's difference b/w ex and inter parte?

Back 95

1/ May only be filed by third party, 37 CFR §1.913
2/ Must identify real parties in interest, 35 USC §311(b)(1)
3/ No interviews
4/ Only for applications issued after Nov 29. 1999,
5/ 4 times the fee of ex parte
6/ Third party may petition commissioner if denied
7/ May appeal to Board and may participate in any appeal by patent owner

Front 96

DESIGN PATENT

Back 96

1/ Duration of 14 years
2/ Functional designs not patentable
3/ 6 month foreign filing priority deadlines
4/ RCE is not available and .
CPA must be filed after May 29, 2000,
5/ No maintenance fee,
7/ Not subject to pre-issue publication,
8/ CIP not allowed
9/ PCT not applicable

Front 97

Contents of design patent?

Back 97

1/ Title should be descriptive: Not simply “dress design.”
2/ Written description (optional)
3/ Drawing,
4/ Must petition for color drawings
5/ Black and white photographs are acceptable
6/ Copyrighted material acceptable, Limitation on reproduction may be included within application.
8/ Non-descriptive claim,“I claim the drawings herein.”

Front 98

Joint Inventors

Back 98

May file jointly even though
1/ Did not physically work together
2/ Each did not contribute the same.
3/ Each did not contribute to every claim

Front 99

Provisional Rejection (Obviousness) Under 35 U.S.C. 102(e)/103

Back 99

INAPPROPRIATE if the invention was owned by the same person at the time.

Front 100

Overcome rejection 35 U.S.C. 102(e)/ 103

Back 100

1/ Arguing patentability over the earlier filed application;
2/Combining the subject matter of the copending applications into a single application and abandoning the copending applications.
3/ Affidavit / Declaration under 37 CFR 1.132 showing that the invention was not by another.
4/ Affidavit or declaration under 37 CFR 1.131 showing that invention antedates the U.S. filing date of the copending application.
5/ If the applications are claiming the same invention, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 may be used to overcome the rejection if the earlier filed application has been published or matured into a patent.

Front 101

35 USC 112 (P2) Requirements

Back 101

1) Claims must set forth the subject matter the applicants regard as their inventions; and
2) Claims must particularly point out and distinctly define the metes and bounds of the subject matter (definiteness)

Front 102

Which documents do not require signature?

Back 102

Notice of Appeal

Front 103

What can be sent with a copy of signature?

Back 103

1/ Declaration
2/ Authorization to charge credit card
3/ Amendment

Front 104

What must be listed on IDS ?

Back 104

1/ Inventor
2/ Patent Number
3/ Issue Date

Front 105

Lack of possession of the
invention may be evidenced by?

Back 105

Original claims reciting an essential feature which is not described in specification/claims, and is not conventional in the art or known to POSITA.

Front 106

102(e) date for PCT

Back 106

1/ NO 102(e) date for a PCT national stage patent or publication filed after Nov. 29, 2000 that does not publish in English (even if Fee/Oath/Translation submitted)
2/ Pre-Nov. 29, 2000 PCTs get a 102(e) date as of receipt of last of Fee/Oath/Translation

Front 107

Factor that will be considered in disapproving a
preliminary amendment in an application filed November 10, 2000?

Back 107

1/ Nature of any changes to the claims/specification that would result from
entry of the preliminary amendment.
2/ The state of preparation of a first OA as of the date of receipt of the
preliminary amendment by the Office.

Front 108

Which may not be included in Design Application?

Back 108

Photographs and ink drawings may not include in the same application

Front 109

Nonobviousness of a claimed invention may be demonstrated by?

Back 109

producing evidence of the absence of a property the claimed invention would be
expected to possess based on the teachings of the prior art

Front 110

When can IDS be considered appropriate submission with RCE?

Back 110

AFTER ALLOWANCE

Front 111

Which is the most correct to claim domestic priority?

Back 111

1st sentence of Specification or ADS

Front 112

Is patent office ever able to file, sua sponte, an RCE (if applicant states he authorizes payment of any fee to have considered an IDS that was filed after issue fee was paid)?

Back 112

NO

Front 113

Is a requester allowed to file a second request for reexam if based on different SNQP?

Back 113

YES

Front 114

When examining a continuation, does an examiner have to cite all the references from the parent and make them of record in the continuation?

Back 114

YES

Front 115

what are the nonsigning inventor’s rights?

Back 115

Nonsigning inventor was not entitled to an inter partes examination or a hearing, but if he believes he should have been the sole inventor he can hire a practitioner and file his own app and interference

Front 116

What are Rule 131 & 132

Back 116

Both allow for application to provide additional evidence to overcome rejections/objections

Front 117

To antedate with 131, what must be shown?

Back 117

1/ Actul reduction to practice before date of reference OR
2/ Conception before date of reference coupled with due diligence before reference to reduction to practice.

Front 118

What must 131 establish?

Back 118

Possession of either whole invention or something falling within the claim.

Front 119

US application filed what after date are under the First-to-file system?

Back 119

3/16/2003. Priority date is determined based on filing date. Interference and 131 are not needed in the first-to-file date.

Front 120

New matter is added to specification, under what law should the rejection be made?

Back 120

35 USC 132

Front 121

What admission by applicant consitute prior art. 2129

Back 121

1/ Appluicant's statement in the specification or during prosecution identifying work of another as prior art
2/ Specification identifies work of another as prior art
3/ Jepson-type claim preambles

Front 122

How long can an applicant suspend prosecution of an application?

Back 122

1/ RCE & CPA - Up to 3 months w/o good cause
2/ Reexamnination - No suspension
3/ Others - Up to 6 months for good cause. If an action is outstanding, the applicant must first respond to it.

Front 123

When will a supplemental reply be entered?

Back 123

1/ During a suspension of action
2/ Examiner's discretion. May enter for:
-Cancellation of claims.
-Adoption of examiner's suggestions
-Placement in condition for allowance
-Reply to req's made after first reply filed.
-Minor corrections, OR
-Simplification for appeal.

Front 124

When no EXTENSION available?

Back 124

1/ IDS
2/ Dues date set by statute
3/ Issue fee
4/ Responding to Notice of omitted Items
5/ Formal drawing deadline
6/ Refund requests

Front 125

When is automatic extension not available?

Back 125

1/ Office action
2/ Appeal related
3/ Interference / reexamination

Front 126

Ex parte Quayle

Back 126

1/ Action indicating the
application is in condition for allowance
2/ Prosecution is closed.
3/ Amendments are limited to "formal matters" only.

Front 127

How long to respond Ex Parte Quayle?

Back 127

Extendable 2 months up to 6 month statutory limit

Front 128

In dealing with patentability of chemical compounds, when may a prima facie case of obviousness be made by the examiner?

Back 128

1/ When chemical compounds have similar structure and utilities.
2/ Obviousness rejection based on similarity in chemical structure and function entails the motivation of POSITA to make a claimed compound in the expectation that compounds similar in structure will have similar properties. MPEP.2144-09

Front 129

If applicant makes argument that his invention is not obvious because the combination of two prior inventions was economically unfeasible, will the applicant overcome a rejection based on obviousness?

Back 129

NO

Front 130

What is "obvious to try" rationale?

Back 130

A claim is obvious if POSITA is choosing from a finite number of identified, predictable solution with a reasonable expectation of success.

Front 131

When must an applicant respond to an action?

Back 131

1/ Statutory - 6 months
2/ Office - Shortened period of 3 months. Automatic extension

Front 132

When does double patenting apply?

Back 132

1/ Two or more patents/applicaitons
2/ Claims direct to the same invention or an obvios variation
3/ At least one common inventor that is commonly assigned or subject to a joint-research exclusion under 103(c)

Front 133

What are differences between a reissue and reexamination?

Back 133

1/ Reissue: AN applicaiton, filed by owner, broaden claim w/i 2 years, automatic extension, mistake requried
2/ Reexamination: Not an application, filed by anyone, patent & printed publication only, NO broaden claim, NO automatic extension, NO mistake required.

Front 134

What are requirements of a complete provisional application? (Three things)

Back 134

1/ Specification
2/ Necessary drawing
3/ Fee
* NO oath/declaration/claim required

Front 135

What sections of 102 can be used in a reexamination rejection?

Back 135

ONLY patent/printed publication is allowed
1/102(a)
2/102(b)

Front 136

Which applications are eligible for prioritized examination/accelerated examniation?

Back 136

1/ Prioritized
- Utility/plant applicaiton
- CA
- DA
2/ Accelerated:
-Utility/design application
-CA
-DA

Front 137

When PTA final determination be appealed?

Back 137

180 days from the date of patent grant

Front 138

Examination by ISA ?

Back 138

1/ Novelty
2/ Inventive step ~ obviousness
3/ Industrial applicability ~ subject matter

Front 139

What happen if applicant does not respond to Office action?

Back 139

Application becomes ABANDONNED

Front 140

When to reply to Notice of Incomplete Response?

Back 140

1 month extendable to 6 months

Front 141

Requirements for a claim to priority in the US app. to an earlier filed foreign app.?

Back 141

1/ Country
2/ Other application
3/ Number of foreign app.
4/ Date of filing foreign app.
5/ During pendency of foreign app.
6/ 4 months from US filing or 16 months from foreign filing.

Front 142

What can applicant do without paying a fee?

Back 142

1/ Timely respond to action/restriction
2/ Cite prior art
3/ Conduct interview
4/ Timely file IDS
5/ Petition to make special
6/ Filing protest
7/ File petition regarding incorrect abandonment
8/ Supplement answer/amendment
9/ Comments regarding reason for allowance
10/ Correction of PTO's mistake
11/ Access issued, published, and some abandoned files.

Front 143

How scope of claimed invention can be interpreted?

Back 143

Broadest reasonable interpretation consistent with specification

Front 144

Requirements of 112, para1. must be met in a foreign application to which a US app. claims priority? (two requirements)

Back 144

1/ Enablement
2/ Written description

Front 145

Three types of application status?

Back 145

1/ Pending
2/ Abandoned
3/ Issued

Front 146

Verified statement must be submitted with?

Back 146

1/ Oath/declaration
2/Affidavit/declaration
3/Retroactive license

Front 147

CPA is filed under what rule?

Back 147

53(d)

Front 148

Can multiple patents/applications be listed on an assignment?

Back 148

YES

Front 149

How long can a patent term be extended under PTE?

Back 149

Up to 5 years

Front 150

What must be submitted to properly record an assignment?

Back 150

1/ Copy of assignment
2/ Identification of patent by number
3/ Fee
4/ Cover sheet
5/ Translation

Front 151

Improper double patenting rejection

Back 151

Where restriction requirement was made in the parent

Front 152

How many days to offer evidence that a document does not arrive due to an interruption in the Mail Service?

Back 152

10 days

Front 153

Overcome nonstatutory double patenting where application is commonly owed?

Back 153

1/ Canceling claims
2/ Filing terminal disclaimer

Front 154

What prior art can be considered in reexamination?

Back 154

Only patented and printed publication

Front 155

Applications available for inter partes reexamination?

Back 155

Applications filed after 11/29/1999

Front 156

Requirements of earlier filed foreign application for an US application to claim priority date?

Back 156

Foreign app. must satisfy 112, para1.

Front 157

Overcome statutory double patenting rejection?

Back 157

Canceling claims to the same invention.

Front 158

Factors to determine level of ordinary skill in the art? (five factor)

Back 158

1/ Type of problems
2/ Prior art solutions
3/ Rapidity w/ which innovations are made
4/ Sophistication
5/ Educational level

Front 159

Provisional rejection

Back 159

Rejection made based on earlier unpublished application by common inventor or assignee

Front 160

Provisional rights

Back 160

Right to remedies for pre-issuance infringement

Front 161

Effective date of filing w/ certificate of mailing/transmission

Back 161

Receipt date by the Office UNLESS the reply period would not be met. If so, the date of mailing is effective.

Front 162

Requirements to benefit from the filing date of a prior foreign application?

Back 162

1/ Foreign country recognized
2/ Filed by the same applicant
3/ Filed w/i 12 months of foreign filing
4/ Same invention
5/ Claim made during pendency, w/i 4 months from US filing date or 16 months from foreign filing

Front 163

Requirements to file petition to revive abandoned app. due to unavoidable delay? (four)

Back 163

1/ Showing the delay was unavoidable
2/ Outstanding Office action or notice reply
3/ Fee for petition
4/ Terminal disclaimer

Front 164

What must be submitted to perfect a priority claim to a foreign app. in a US app.?

Back 164

1/ Certified copy of the foreign app.
2/ Translation of the foreign app.

Front 165

When an objection to a PTA be made?

Back 165

With or prior to paying issue fee

Front 166

What is foreign filing license?

Back 166

A license that is required to be filed for foreign patent of invention made in the US.
Applicant is barred from receiving US w/o license.

Front 167

Provisional application includes

Back 167

1/ Cover sheet
2/ Name(s) of inventor(s)
3/ Residence
4/ Title of invention
5/ Name & registration of Attorney or Agent
6/ Docket number
7/ Correspondence address
8/ Specification
9/ Any necessary drawings

Front 168

What will Examiner do if missing cover sheet or filing fee in provisional application?

Back 168

1/ Notice of missing parts will be sent.
2/ Two months to submit the missing parts or application abandoned.

Front 169

What are four things required by Graham obviousness?

Back 169

1/ Scope & content of prior art
2/ Differences b/w claimed invention and prior art.
3/ Level of ordinary skill in art.
4/ Secondary consideration of objective evidence such as commercial success, long-felt but unresolved needs, failure of others, and unepxected results.

Front 170

How long to respond an action under accelerated & prioritized examination?

Back 170

1 month (accelerated)
Normal time w/o extension (prioirtized)

Front 171

Is 103(c) effective when?

Back 171

Application filed on or after 11/29/1999

Front 172

103(c) does not apply to?

Back 172

1/ Rejection under 103(a)
2/ Rejection under 102(e), (f) and (g)
3/ Owed by the same inventor/entity

Front 173

When can an IDS be submitted?

Back 173

Within 3 months of filing date or date of national stage or before mailing ofr first office action (even after RCE), before NoA/final action, and before payment of issue fee.

Front 174

When to notify the Office an application which was requested not be published but then files in another country?

Back 174

45 days or abandoned

Front 175

When to file national phase in the US?

Back 175

Prior to 30 months from priority date.

Front 176

When is International search report established?

Back 176

16 months from priority date

Front 177

When is Article 34 be made in PCT application?

Back 177

22 months from priority date or 3 months from ISR mailing.

Front 178

When to demand for a preliminary examination in the PCT process?

Back 178

22 months from priority date or 3 months from ISR mailing

Front 179

When obviousness be made final?

Back 179

When the action does not result in new ground of rejection

Front 180

Two criteria for proper restriction?

Back 180

1/ Inventions must be independent and distinct as claimed.
2/ Serious burden on the exminer if no restriction is required.

Front 181

Appeal in ex parte reexamination where ?

Back 181

Ex parte reexamination filed
1/ Before 11/29/1999, patent owner may appeal to the Board after the second rejection.
2/ After 11/29/1999, appeal after final rejection of one or more claims.

Front 182

Ex parte appeals include

Back 182

1/ Reissue
2/ Design & plant patent

Front 183

Ex parte appeals include

Back 183

1/ Reissue
2/ Design & plant patent

Front 184

Ex parte Reexamination (AIA)

Back 184

Is not limited to patent and printed publications

Front 185

(AIA) Oaths or declarations
“the person making the oath or declaration has reviewed and understands the contents of the specification”

Back 185

NO longer acceptable

Front 186

Filing fee (AIA)

Back 186

Effective 9/26/2011 a surcharge of 15 percent to all fees charged is added.

Front 187

Are color drawings permitted in international application?

Back 187

NO

Front 188

Are color drawings permitted to be transmitted via facsimile?

Back 188

NO

Front 189

Are balck & white drawings permitted to be transmitted via facsimile?

Back 189

YES, under certain circumstances.

Front 190

When double patenting rejection apply?

Back 190

1/ Two or more patens/applications
2/ Claims directed to same invention/obvious variation
3/ At least one common inventor/commonly assigned/subject to joint research exclusion under 103(c)

Front 191

Difference b/w reissue and reexamination

Back 191

1/ Reissue: Application filed by owner only (no third party), broaden w/i 2 years of issue, automatic extension, mistake required.
2/ Reexamination: Not an application, can be filed by anyone, patent & printed publications (no longer applied by AIA), no automatic extension, no mistake requried.

Front 192

When to convert nonprovisional to provisional app.?

Back 192

Within 12 months of the filing

Front 193

Requirements for provisional app.

Back 193

1/ Specfication
2/ Necessary drawing
3/ Fee

Front 194

Which applications are eligible for prioritized and accelerated app.?

Back 194

1/ Prioritized:
Utility&plant app.
CA
DA
2/ Accelerated:
Utility & design app
CA
DA

Front 195

Requirements for proper restriction (Two)

Back 195

1/ Independent and distinct inventions
2/ Serious burden on the examiner if no restriction is requried

Front 196

When to amend claims to an international app.?

Back 196

NO later than
1/ 2 months from trasmittal of ISR
2/ 16 months from priority date

Front 197

Withdraw app. from issue after Notice of Allowance

Back 197

Before issue fee is paid
1/ Good and suffcient reasons (petition req)
2/ File CA while abandoning original app.

Front 198

When to file design patent originally patened in foreign country?

Back 198

6 months

Front 199

Provisional is NOT applicable

Back 199

1/ Claim
2/ Oath/declaration
3/ Examination/amendment
4/ Design
5/ IDS

Front 200

Whare are four types of evidence of nonobviousness?

Back 200

1/ Greater than expected results
2/ Superiority of property shared with prior art
3/ Presence of an expected property.
4/ Absence of expected property

Front 201

When a clean copy must be filed to reflect amendments in published application?

Back 201

After
1/ One month from filing OR
2/ 14 months from priority date

Front 202

When to pay extension fee for examiner's amendments?

Back 202

1/ Within 3 months if response is filed later than 2 months after final rejection
2/ After 6 months if response is filed within 2 months of final rejection.

Front 203

When to submit supplemental oath/declaration?

Back 203

When preliminary amendment accompanying an application contains new matter.

Front 204

Can NOA be granted after the death of applicant?

Back 204

YES

Front 205

What does "obvious to try" rationale attempt to distinguish between...?

Back 205

1/ Anticipated success resulting from common sense and ordinary skill based on the pursuit of known option within a skilled individual
2/ Innovation

Front 206

Exmination difference b/w national and national stage application with respect to filing dates?

Back 206

1/ National: When specification, claim and drawing submitted
2/ National stage: International filing date (except 102(e)) and PTA

Front 207

What is supplemental examination?

Back 207

1/ Post grant review initiated by patent owner applied to all patents.
2/ Substantial new question if patentability would result in ex partes reexaminatoin by PTO.

Front 208

What is inter parte review?

Back 208

1/ Post grasnt review initiated by third party applied to all patents
2/ Reasonable likelihood that the petitioner would prevail on at least one claim.

Front 209

What is derivation proceeding?

Back 209

1/ Post-grant challenge to inventorship
2/ On of after March 6, 2012

Front 210

How many items per request of supp. examination?

Back 210

10 items per request

Front 211

Timing for filing In Partes Review (AIA)?

Back 211

9 months from issue date or later of closing 9 months Post Grant Review window?

Front 212

Timing for Post Grant Review?

Back 212

Within 9 months of issuance or reiisue

Front 213

Grounds for In Partes Review?

Back 213

Patents and Printed Publications

Front 214

Grounds for Post Grant Review

Back 214

Any ground NOT limit to patent or printed publications

Front 215

Can reissue correct inventorship in a patent?

Back 215

YES
Reissue is a proper for
correcting inventorship in a patent and may be filed more than two years after the patent issued.

Front 216

Where can a claim for priority be made?

Back 216

1/ Oath/declaration
2/ADS
3/Tramistall letter
4/Specification

Front 217

What are four types of applications that can be made after an initial application?

Back 217

1/Continuation
2/Continuation-In-Part
3/Substitute
4/Divisional

Front 218

What must accompany a petition to revive an application that was abandoned because of an applicant's or owner's unintentional delay?

Back 218

1/Statement that the entire delay was unintentional
2/Outstanding Office action or notice reply
3/Fê for petition
4/Terminal disclaimer, dedicating to the public time equivalent to length of abandonment (all), or period extending beyond 20 years from prior date (utility or plan)

Front 219

In a reexamination, when must a patent owner file a response to a finding by the Office of a substantial new question of patentability?

Back 219

Within 2 months, extendable only for cause

Front 220

After a first Office action, what may an applicant do as a matter of right?

Back 220

1/Amend the application
2/Conduct an interview with the examiner
3/Submit affidavits

Front 221

In which three 48 rules is no new oath or declaration required?

Back 221

Rules 48(b), 48(d) and 48(e)

Front 222

Where is the World Property Organization located?

Back 222

Geneva Switzerland. MPEP 1853

Front 223

Under the Patent Cooperation Treaty, when must the international search fee for the European Patent Office be paid to the USPTO as a Receiving Office?

Back 223

Within one month from the time of filing the international application MPEP 1840.01

Front 224

What happens if a secrecy order is applied to a PCT application?

Back 224

The application will not be forwarded to the International Bureal as long as the secrecy order remains in effect. MPEP 1832

Front 225

Is a license for foreign filing required to file a PCT application with the United States Receiving Office?

Back 225

No, but it may be required before the applicant or the U.S. Receiving Office can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign authority. MPEP 1832

Front 226

How long do you have to correct a PCT application with no address after you are invited to correct the problem?

Back 226

Between 10 days and one month from the date of the invitation. MPEP 1810

Front 227

Under what conditions can someone obtain access to an abandoned application?

Back 227

1/ If it is referred to in a US Patent
2/ If it is referred to in a US application open to the public
3/ If it claims the benefit of a filing date of a US application open to the public

A petition and fee are not required (copying charge only)

Front 228

Where an inventor is to be added, what does the Office recommend instead of filing a request under rule 48?

Back 228

File a continuation or divisional application with a new oath or declaration. No need a copy of the oath or delclaration from the prior application.

Front 229

When is a foreign filing license not required?

Back 229

If the invention is made outside of the US (even by an American).

Front 230

What is required for access to provisional applications?

Back 230

Written authority from a named inventor, the assignee of record, or the attorney or agent of record.

Front 231

What is a proper dependent claim?

Back 231

The dependent claim must include every limitation of the claim from which it depends.

Front 232

Where is information on dependent claims found?

Back 232

MPEP 608.01(n)

Front 233

When is a foreign filing license not required?

Back 233

If the invention is made outside of the US (even by an American).

Front 234

Under what conditions can someone obtain access to an abandoned application?

Back 234

1/ If it is referred to in a US Patent.
2/ If it is referred to in a US application open to the public.
3/ If it claims the benefit of a filing date of a US application open to the public.
A petition and fee are not required (copying charge only).

Front 235

In a reexamination, when must a patent owner file a response to a finding by the Office of a substantial new question of patentability?

Back 235

Within 2 months, extendable only for cause.

Front 236

After a first Office action, what may an applicant do as a matter of right?

Back 236

1/ Amend the application
2/ Conduct an interview with the examiner
3/ Submit affidavits

Front 237

What happens if a secrecy order is applied to a PCT application?

Back 237

The application will not be forwarded to the International Bureau as long as the secrecy order remains in effect.

Front 238

Is a license for foreign filing required to file a PCT application with the US/RO?

Back 238

NO, but it may be required before the applicant or the US/RO can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign authority.

Front 239

How long to correct a PCT application with no address after invitation to correct the problem?

Back 239

Between 10 days and one month from the date of the invitation.

Front 240

When must the international search fee for the EPO be paid to the USPTO as a Receiving Office?

Back 240

Within one month from the time of filing the international application.

Front 241

What must accompany a petition to revive an application that was abandoned because of an applicant's or owner's unintentional delay?

Back 241

1/ Statement that the entire delay was unintentional.
2/ Outstanding Office action or notice reply.
3/ Fee for petition (relatively large).
4/ Terminal disclaimer, dedicating to the public time equivalent to length of abandonment (all), or period extending beyond 20 years from prior date (utility or plant).

Front 242

Where can a claim for priority be made?

Back 242

1/ Oath/declaration
2/ ADS
3/ Transmittal letter
4/ Specification

Front 243

What are four types of applications that can be made after an initial application?

Back 243

1/ Continuation
2/ Continuation-In-Part
3/ Substitute
4/ Divisional

Front 244

What is required to revoke power of attorney?

Back 244

1/ A petition giving good and sufficient reason.
2/ Required fee.

Not all inventors are required to sign the petition for revocation . MPEP 402.10

Front 245

What restrictions do employees of the Patent Office have in terms of applying for or acquiring any interest in a patent?

Back 245

Employees cannot apply for or acquire an interest in a patent during their employment and for one year thereafter. Employees can receive patents by inhertance or bequest.

Front 246

What happens if the deadline to file an application for a foreign priority application falls on a weekend or holiday?

Back 246

The deadline is automatically extended to the first business day following the weekend or holiday

Front 247

Under PCT how many days to offer evidence that a document did not arrive due to a loss or delay by the Mail Service?

Back 247

5 days

Front 248

If an IDS reference is not in English, what must the applicant do?

Back 248

1/ Include a concise explanation of relevance.
2/ Submit an English translation is exists

Front 249

What is the first step taken by an examiner in an international preliminary examination procedure?

Back 249

Study the description, the drawings (if any), the claims of the international application, the documents describing the prior art as cited in the international search report, and the written opinion established by the International Searching Authority.

Front 250

What is a response called when an applicant makes no amendments (changes) but only offers arguments?

Back 250

Request for Reconsideration

Front 251

Roland applies for and is granted a patent. He has a will drawn up in which he leaves the patent to his granddaughter, Maud. Roland then sells the patent to Christabel but forgets to update his will. Roland dies a week after the sale. Maud immediately records her interest in the patent with the Office. Christabell never records her interest with the Office. Who owns the patent?

Back 251

Christabel. Since, Maud did not take for consideration, her claim to ownership will not stand against Christabel's

Front 252

When will the status of any parent application be disclosed?

Back 252

When a continuation, CIP, or division qualifies to have its status disclosed

Front 253

What are the claim limits for accelerated examination?

Back 253

1/ 3 independent claims.
2/ 20 total claims.

Front 254

What are the rules for marking-up a specification or an existing claim in a non-reissue application?

Back 254

Subsequent amendments should not include prior amendment mark-up. (Note: In Reissue applications, the rule is opposite.)

Words added.

Words deleted (strikethrough).

Removing 5 or [[fewer]] characters.

Front 255

When must a response be filed to a Notice of Missing Parts?

Back 255

An extendable 2 months.

Front 256

How is a claim changed by amendment?

Back 256

1/ The claim to be changed is marked-up
2/ All claims are listed with a status indicator.

Front 257

Which actions must be "by another" to constitute prior art?

Back 257

102(a) and 102(e)

Front 258

What are most 102 rejections based on?

Back 258

Printed publications or patents, which come up under 102(a). (b), & (e).

Front 259

Are you required to record assignments in the PTO?

Back 259

No, recording is voluntary. However, recording serves as proof of ownership in disputed.

Front 260

Where in a subsequent application can the applicant claim the benefit of the first application?

Back 260

In the first sentence of the specification or in an ADS. MPEP 201.11.

Front 261

For an affidavit to be admitted with or after an Appeal Brief, what must applicant do?

Back 261

1/ Make showing of good cause, and
2/ Overcome all outstanding rejections.

Front 262

When can someone see an interference file?

Back 262

After an award of priority has been made
After the interference has been terminated

Front 263

Which can be filed by fax?

Back 263

1/CPA
2/Admendments
3/Declarations
4/Petitions,
5/IDS
6/Terminal Disclaimer
7/NOA & Appeal brief
8/RCE
9/Assignments
10/Issue fee transmittal
11/Authorization to charge deposit accoutn

Front 264

Which cannot be filed by fax?

Back 264

1/Reexamination
2/Color Drawings
3/Docs required original signature

Front 265

Which can be filed via EFS-WEB?

Back 265

1/Provisional
2/Nonprovisional (utility and design)
3/International application designating US
4/National stage app.
5/Ex partes/In partes reexamination
6/Special based on age
7/Petition for unintentional delay to pay maintenant fee
8/Accelerated examination

Front 266

Does ADS need to be filed in an accelerated exam?

Back 266

NO

Front 267

Can IDS be filed after issue fee payment?

Back 267

NO

Front 268

Does Small entity fee get to reduce by 50% for “documents relating to title”?

Back 268

NO

Front 269

Does English translation need to be submitted to claim foreign priority in reissue?

Back 269

NO

Front 270

What is Provisional 102(e) rejection?

Back 270

Provisional 102(e) rejection is when a pending application has been published as redacted, and the subject matter is not supported in the redacted publication.

Front 271

What factors to determine the level of POSITA?

Back 271

1/ Educational level of the inventor
2/ Type of problems encountered
3/ Prior art solutions to those problems
4/ Rapidity with which innovations are made
5/ Sophistication of the technologyand
6/ Educational level of active workers in the field.

Front 272

When is Provisional rejection (obviousness) 102(e)/103 improper?

Back 272

When invention was owed by the same person at the time of the invention.

Front 273

Priority of invention in interference proceeding is determined by what rules? (Two)

Back 273

1/ First to conceive and reduce to practice will win.
2/ First to conceive and last to reduce to practice will win IF he worked on the invention with reasonable diligence.

Front 274

Who can sign Small Entity Status?

Back 274

1/Attorney/Agent
2/At least one inventor (even though executed oath or eclaration has not been submitted), or
3/Assignee of undivided part interest.

Front 275

What does "by another signify under 102(a) or 102(e)?

Back 275

An inventive entity which is different from the inventive entity of the application even by one inventor.

Front 276

To antedate with a Rule 131 affidavit, what must be shown?

Back 276

1/ Must show actual reduction to practice before date of reference, OR
2/ Conception before date of reference coupled with due diligence from just before reference to reduction to practice.

Front 277

What are Rule 131 and 132 affidavits or declarations?

Back 277

Both types of affidavits or declarations allow for applicants to provide additional evidence to overcome rejections or objections.
E.g., an applicant would use a Rule 131 affidavit to swear behind (i.e., assert an earlier invention date than) a prior art reference.

Front 278

Which applications are ineligible for prioritized or accelerated examination?

Back 278

1/ International
2/ Reissue
3/ Provisional
4/ Reexamination

Front 279

Once the issue fee has been paid, for what reasons only can an applicant, by petition, have the Office withdraw an application?

Back 279

1/ unpatentability of one of more claims (petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to claims, and an explanation of how amendment makes claims patentable);
2/ Consideration of a request for continued examination (RCE); or
3/ Express abandonment of the application, which may be in favor of a continuing application.

Front 280

When making an obviousness rejection, what must the Office personnel do?

Back 280

Ensure that the written record includes findings of fect concerning the state of the art and the teachings of the references applied. In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done. MPEP 2141.

Front 281

If Office personnel have established the Graham fectual findings and concluded that the claimed invention would have been obvious, what must the applicant do in his reply to the rejection?

Back 281

1/ Show that the Office erred in the factual findings, or
2/ Provide other evidence to show that the claimed subject matter would have been nonobvious.

Front 282

Does the date that a US patent becomes prior art under 102(e) move back as a result of a foreign priority?

Back 282

No

Front 283

What is a preliminary amendment?

Back 283

An amendment filed with an application, or that is received in the Office on or before the mail date of the first Office action.

Front 284

What are the claim limits for prioritized examination?

Back 284

1/ 4 independent claims.
2/ 30 total claims.
3/ No multiple dependent claims.

Front 285

How can an applicant rebut the "by another" presumption?

Back 285

By filing a Rule 132 affidavit to provide evidence the relevant portions were not by another.

Front 286

Any paper submitted by the applicant in the course of the international procedure provided for in the PCT, other than the application itself, must be accompanied by what?

Back 286

A letter that is signed by the applicant identifying the international application to which it relates.

Front 287

What is the difference between "prosecution" and "examination"?

Back 287

Point of view. An applicant prosecutes a patent application to get a patent. The Office examines the same application to evaluate whether the government should properly grant the patent.

Front 288

If an applicant submits to 10 calims, 1-10, but later cancels claims 4-10, and then adds 2 new claims, what would the newly added claims be numbered in the amendment?

Back 288

11 & 12

Claims are numbered consecutively. Final claim numbers are determined at issuance.

Front 289

How long is prosecution under prioritized and accelerated examination?

Back 289

12 months to final disposition.

Front 290

When can an applicant get free accelerated examination?

Back 290

When the basis for a petition to make special is:
1/ Conserving energy (invention)
2/ Health (of applicant)
3/ Environmental protection (invention)
4/ Age (of applicant)
5/ Terrorism fighting (invention)
6/ Superconductivity (invention)

Front 291

What does CAFC stand for?

Back 291

The Court of Appeals for the Federal Circuit.

Patent prosecution appeals can be heard in the CAFC, however, the process is outside the scope of the exam.

Front 292

When must a protest be filed?

Back 292

Prior to, earlier of:
1/ Date of publication, or
2/ Mailing of a Notice of Allowance.

Front 293

In which chapter of the MPEP is Protest?

Back 293

1900

Front 294

When must a priority claim be added?

Back 294

Before the latter of:
1/ 16 months from the priority date, or
2/ 4 months from the filing date.

Front 295

When are applications published?

Back 295

18 months from the priority date.

Front 296

Which law authorizes provisional applications?

Back 296

35 U.S.C.111(b). 35 U.S.C.119(e) provides for priority from a provisional application filed under 111(b).

Front 297

The law regarding Application for Patent: Before of earlier filing date; right of priority can be found where?

Back 297

35 U.S.C.119 (provisional and foreign priority).

Front 298

What are requirements for sufficient disclosure of inventions involving computer programs?

Back 298

1/ Adequate written description.
2/ Original disclosure should be sufficiently enabling to allow POSITA to make and use the invention.
3/ Best mode

Front 299

What does it mean for a claim to be "dependent" under 35 U.S.C.112, para. 4?

Back 299

A dependent claim is construed to incorporate by reference all the limitations of the claim to which it refers.

For example, assume claims 1 and 2.
1. An apparatus comprising A and B.
2. The apparatus of claim 1, further comprising C.

Dependent claim 2 recites an apparatus with A, B, and C.

Front 300

How can a claim properly invoke the means plus function (MPF) provision of 35 U.S.C.112, para. 6?

Back 300

By stating a function without including modifying structure specifying how the function will be carried out.

Language such as "means for," "step for," or "process for" is often included.

Front 301

What is a "single means" claim?

Back 301

A single means claim is a means-plus-function (MPF) element that does not appear in a claim in combination with other MPF elements.

It can be rejected under 35 U.S.C. 112, para. 1, as having undue breadth (lack of enablement).

Front 302

Carl invents a flying house. He files a patent application with a claim directed to a house comprising a balloon apparatus, a steering apparatus and a living area. Russell, an examiner, finds a reference to an prior art flying house having a balloon apparatus and a living area. Russell finds a second reference to a prior art flying house having a steering apparatus. Is Carl's claim obvious based on the references?

Back 302

Maybe. Russell may find that it would be obvious to someone skilled in the art of flying houses to combine the teachings of the two references.

Front 303

When may an applicant withdraw a priority claim made in a PCT application?

Back 303

Any time prior to 30 months from the priority date. MPEP 1859.

Front 304

Can a PCT application be used as prior art?

Back 304

YES, if the international application:
1/ Filed on or after November 29, 2000;
2/ Designated the United States; and
3/ Published under PCT Article (2) in the English language.

Front 305

When will a PCT application be published?

Back 305

18 months from the priority date of the application. MPEP 1857.

Front 306

When will withdrawal of a priority claim in a PCT application be effective?

Back 306

Upon receipt of a notice by International Bureau, Receiving Office or International Preliminary Examining Authority.

Front 307

How may an applicant prevent international publication?

Back 307

By withdrawing the international application provided that the notice of withdrawal reaches the International Bureau before the completion of technical preparations for publication.

Front 308

What cannot be faxed when filing to enter the national stage in the US?

Back 308

The PCT application, copy of the application and fee.

Front 309

What can be covered with a design patent?

Back 309

Ornamental design of articles of manufacture.

Front 310

What are the differences between a design and utility patent?

Back 310

Design: Term is 14 years from issue; No maintenace fees; one claim; No PCT; 6-month deadlines for 102(d) and foreign priority; no priority from provisional application.

Utility: Term is 20 years from earliest filing; Maintenance fees; One or more claims; PCT; One-year deadlines for 102(d) and foreign priority; Priority possible from provisional application.

Front 311

When can an applicant make Article 19 amendments (for claims) during the PCT process?

Back 311

Up to 2months from transmittal of the international search report.

Front 312

Must a practitioner personally sign every filing?

Back 312

In general, yes. A practitioner must personally sign every filing except those requiring the signature of the applicant (very few).

Front 313

For purposes of 35 U.S.C.102(b), when is use not "public"?

Back 313

1/ Where a reasonable expectation of privacy exists
2/ Use for inventor's enjoyment

Front 314

For purposes of 35 U.S.C.102(b), when is use "public"?

Back 314

1/ Commercial, secret use
2/ Publicly visible machine, hidden invention
3/ Permitted use by another without restriction
4/ Independent use by another which informs public or allows competitor to ascertain

Front 315

What are five ways to overcome a 102(a) rejection based on printed publications or patents?

Back 315

Same five ways as for overcoming 102(e).

Front 316

If prior art can be sworn back under Rule 131, must it be submitted if it has a prior art date before the earliest effective filing date?

Back 316

Yes, it still must be submitted.

Front 317

When must a request for a refund be made?

Back 317

Within 2 years of payment; 3 months for a small entity.

Front 318

What type of patent can a provisional application be files for?

Back 318

A provisional application can be filed only for a utility patent

Front 319

What is the effect of a court decision concerning a patent under reexamination?

Back 319

The court decision is nonbinding.

Front 320

When must a certified copy of a priority document be submitted during the PCT process?

Back 320

Within 16 months of the priority date.

Front 321

When is a PCT application published?

Back 321

18 months from the priority date.

Front 322

When must a PCT be filed after a national application filing to maintain priority?

Back 322

Within 12 months.

Front 323

When must a demand be made in the PCT process for countries who have not adopted Article 22(1)?

Back 323

Within 19 months.

Front 324

What happens when a timely response is filed to a final rejection in a reexamination?

Back 324

The deadline to respond is extended by 1 month.

Front 325

'When is a filing receipt issued?

Back 325

When the application is complete (including the fee and oath).

Front 326

When is revocation of power of attorney effective?

Back 326

The day the PTO receives it.

Front 327

Can a practitioner execute a disclaimer or terminal disclaimer?

Back 327

Yes, a practitioner can execute a disclaimer or terminal disclaimer

Front 328

After a decision by the Board, when must an applicant make an appeal to the CAFC?

Back 328

Within 2 months.

Front 329

When can a priority claim be corrected in PCT applications?

Back 329

Within 16 months of the earliest priority claim, but with a minimum of 4 months from the international filing date.

Front 330

When does an applicant broaden a claim for the purposes of reexamination and reissue?

Back 330

When the broadened claim is greater in scope than each and every other claim. Therefore, a broadened dependent claim is not a "broadened" claim.

Front 331

When must an Appeal Brief be filed?

Back 331

Within 2 months from when the Notice of Appeal was received by the PTO. The time is automatically extendible up to 7 total months.

Front 332

What amendments can be make with or after an Appeal Brief?

Back 332

Only amendments which:
1/ Cancel claims without dependents, or
2/ Rewrite dependent claims in independent form.

Front 333

What is necessary for a nonprovisional application to benefit from the priority date of a provisional application?

Back 333

1/ Either the specification or an ADS must contain a reference to the provisional application, and
2/ The provosional application must satisfy the enablement and written description requirements of 35 U.S.C.112, para.1 nonprovisional application.

Front 334

What unexpected results must be?

Back 334

Unexpected results must be commensurate in scope with the claimed invention.

Front 335

Unexpected properties have a significance equal to or greater than the expected properties sufficient to rebut obviousness?

Back 335

NO

Front 336

What is the difference between 35 U.S.C. 119 and 35 U.S.C. 120?

Back 336

35 U.S.C. 119: Priority from provisional and foreign applications.

35 U.S.C. 120: Priorty from US applications.

Front 337

What is ncessary before the Office will tell someone the status of an application?

Back 337

1/ Access must ba obtained
2/ Application must be identified by serial number and filing date
3/ If a PCT, the application must be in the national phase

Front 338

How long is the power to inspect good for?

Back 338

If assigned by agent, inventor, or attorney, indefinite unless otherwise stated.

If assigned by Patent Office, limited because circumstances may change.

Front 339

What are the requirements for a Third-party submission in a published application?

Back 339

1/ Application number
2/ Fee
3/ List of up to 10 patents/publications, copy of each, and English translation where necessary
4/ Applicant must be served
5/ Submitted earlier of 2 months from date of publication or prior to mailing of a NOA
6/ NO explanation.

Front 340

What are some rights that an assignee has?

Back 340

An assignee can:
1/ Revoke a power of attorney by establishin title or referring to a recorded assignment.
2/ Exclude inventors from access.

37CFR 3.73.

Front 341

WHEN is a determination of priority not required?

Back 341

Determination of priority is not required if two inventions are commonly owned.

Front 342

What is the result of an applicant raising an error that occurred in an action and which affects the applicant's ability to reply?

Back 342

If the error is raised within 1 month, the reply period begins on the date of correction.

If raised later than a month, the reply period is reset to the time that was remaining in the initial reply period on the date of correction.

Front 343

How should an applicant submit trade secret material or proprietary material, and any material subject to a protective order?

Back 343

Each document must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. MPEP 724.02

Front 344

To gain the benefit of an earlier foreign filing date, when must the corresponding US application be filed for a utility patent? For a design patent?

Back 344

Utility: Within 12 months

Design: Within 6 months

Front 345

Why would an applicant make a showing during prosecution that competitors are copying an invention and not the prior art?

Back 345

Copying by competitors can be secondary evidence that an invention is nonobvious.

Front 346

What precisely can be prior art?

Back 346

In some circumstances, something that is:
1/ Known in the US,
2/ Used in the US,
3/ Publicly used anywhere,
4/ Sold or offered to be sold in the US,
5/ Patented anywhere, or
6/ Published anywhere (including in patent application)

Front 347

Salon A develops hair gel A. Salon A files a patent application in June 1999 and it issues as a patent in 2001. A couple of years later, a competitor, Salon B realizes that it is the exact same hair gel had advertised in 1998. What can Salon B do to correct this?

Back 347

Request an ex parte reexamination. A competitor can request a reexamination (either inter partes or ex parte) only if there is a patent or printed publication raising a substantial new question of patentablility. The advertisement qualifies as a printed publication.

Inter partes reexamination would only be available if the application were filed on or after Nov 29, 1999.

Front 348

Joan and Ark work for Massive Corp. and have no obligation to assign their inventions to Massive. Joan and Ark invent a water-free shower. Massive later fires Arks. Massive and Joan ask a practitioner, Orleans, to file an application naming Joan and Ark as joint inventors. Orleans files the application but Ark refuses to sign the oath. Ark thinks that he conceived of the invention alone that Joan did nothing. Ark hires you to help. What is a strategy you can offr Ark?

Back 348

Wait until the patent issues and then file a reexamination, presenting evidence that shows Joan was not an inventor.

Front 349

During a reexamination, an examiner finds that Invention A contains trade secret information that is essential to patentability. What is the result if the applicant petitions the examiner to expunge the trade secret information? The petition to expunge (37 CFR 1.59) was filed prior to the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC).

Back 349

The examiner will likely expunge the Trade Secret information.

Front 350

What is the general rule regarding the confidentiality of applications?

Back 350

Unpublished applications are confidential. Access only by:
1/ Applicant
2/ Attorney / agent of record (or registerd attorney / agent named in papers, if executed oath not filed)
3/ Assignee of record
4/ Anyone with written authorization from 1-3

Published applications are public.

Reissue and reexamination applications are public.

Front 351

Amendments filed on or after filing a brief may be admitted to?

Back 351

1/ Cancel claims if such cancellation does not affect the scope of pending claim OR
2/ Rewrite dependent claims into independent form.

Front 352

Amendments filed after the filing of a notice of appeal, but prior to filing a brief, may be admitted to?

Back 352

1/ Cancel claims;
2/ Comply with requirement set forth in an Office Action;
3/ Present rejected claims in better form for consideration on appeal OR
4/ Amends sepcification or claim upon of showing good and sufficient reasons why the amendment is necessary and was not earlier presented.

Front 353

Affidavits or other evidence submitted after filing a notice of appeal, but prior to filing a brief may be admitted to?

Back 353

1/ Overcome all rejections under appeal; and
2/ Show good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.

Front 354

What must be listed US patent listed in IDS?

Back 354

Each U.S. patent listed in
IDS must be identified by inventor, patent number, and issue date.

Front 355

Must application number of US patent be listed in IDS?

Back 355

NO

Front 356

Prematureness of the final rejection should be raised when?

Back 356

While the application is still pending before the primary examiner

Front 357

Should abstract compare the invention with the prior art?

Back 357

NO

Front 358

When is a supplemental oath or declaration treated as an amendment?

Back 358

When it is filed in a reissue application after the Notice of Allowance has been mailed.

Front 359

Is routine business practices sufficient to establish when a publication became accessible to the public?

Back 359

NO

Front 360

What papers cannot be filed with certificate of mailing?

Back 360

1/ New patent app.
2/ Interference
3/ Agreement to settle interference
4/ PCT papers

Front 361

When are provisional rights granted?

Back 361

After publication of application if
1/ The app. is issued as a a patent.
2/ Infringer received actual notice of published app.
3/ Claims are substantially identical to claims in the published app.

Front 362

When can pending unpublished applications be accessed by third party?

Back 362

When:
1/ An applicant threatens a business based on application, business can access.
2/ Another patent relies on application for priority.
3/ Application incorporated by reference into a patent or published application.

Front 363

When can access be obtained to an abandoned, unpublished application?

Back 363

When:
1/ Referenced in the text of an issued patent, or
2/ A published application claims domestic priority based on the application.

Front 364

What are the major functions of the International Bureau?

Back 364

1/ Publishing of international applications and the International Gazette;
2/ Transmitting copies of international applications to Designated Offices;
3/ Storing and maintaining record copies; and
4/ Transmitting information to authorities pertinent to the processing of specific international applications.
MPEP 1853.

Front 365

When is a claim with specific numericranges likely to be indefinite?

Back 365

Where a broad and narrow range are given in the same claim., "a temperature of between 45 and 78 degrees Celsius, preferably between 50 and 60 degrees Celsius." MPEP 2173.05(c).

Front 366

In which chapter of the MPEP is Representative of Inventor or Owner?

Back 366

400.

Front 367

Who is authorized to practice before the Office?

Back 367

1/ Any inventor can represent herself.
2/ One inventor can represent himself and the other inventors in an application.
3/ A practitioner (i.e., a registered patent attorney or agent in good standing who has power of attorney from an inventor). Only individuals, not firms, can be given power of attorney.

Front 368

What is a CPA?

Back 368

A "Continued Prosecution Application," is a continuation or divisional application filed under Rule 53(d) in relation to a prior design application. MPEP 201.06(d).

Front 369

How is a multiple dependent claim examined?

Back 369

Each claim combination must be examined separately. therefore, fees are calculated based on the number of combinations. Invalid multiple dependent claims only count as 1.

Front 370

A claim recites " an effective amount". Is the claim indefinite?

Back 370

Yes, unless one skilled in the art could determine specific values based on the disclosure. MPEP 2173.05(c).

Front 371

In a claim, how is proper antecedent basis established?

Back 371

In general, an element is initially referred to using "a" or a plural (e.g., "a lever" or "levers"). Subsequently, the element is referred to using "the" or "said" ( e.g., "the lever raising" or "said levers providing").

Front 372

In what case did the Supreme Court rule that the teaching-suggestion-motivation test is just one of several ways to evaluate obviousness?

Back 372

KSR International Co. v. Teleflex Inc.

Front 373

In what case did the Supreme Court rule that the teaching-suggestion-motivation test is just one of several ways to evaluate obviousness?

Back 373

KSR International Co. v. Teleflex Inc.

Front 374

How many claim limitations must the examiner address when rejecting an application for obviousness?

Back 374

The Examiner must address all claim limitations. MPEP 2141 and 2143.

Front 375

How many claim limitations must the examiner address when rejecting an application for obviousness?

Back 375

The Examiner must address all claim limitations. MPEP 2141 and 2143.

Front 376

What is a combination likely to be if the combination is of familiar elements according to known methods, and the combination yields predictable results?

Back 376

Obvious. MPEP 2141(I).

Front 377

What is a combination likely to be if the combination is of familiar elements according to known methods, and the combination yields predictable results?

Back 377

Obvious. MPEP 2141(I).

Front 378

To determine obviousness, what are the basic factual inquiries enunciated by the court in the case Graham v. John Deere?

Back 378

1/ Scope and content of the prior art.
2/ Differences between the prior art and the claims at issue.
3/ the level of oridinary skill in the pertinent art at the time the invention was made.
4/ Existence of objective evidence of non-obviousness in the record or of which the examiner knows.
MPEP 2141.

Front 379

To determine obviousness, what are the basic factual inquiries enunciated by the court in the case Graham v. John Deere?

Back 379

1/ Scope and content of the prior art.
2/ Differences between the prior art and the claims at issue.
3/ the level of oridinary skill in the pertinent art at the time the invention was made.
4/ Existence of objective evidence of non-obviousness in the record or of which the examiner knows.
MPEP 2141.

Front 380

How can a provisional 102(e) rejection be overcome under MPEP 2100?

Back 380

1/ by a Rule 132 showing that earlier disclosed, but not claimed, invention was work of the inventor and therefore not "by another", or
2/ By a 131 showing (entedating).

Front 381

How can a provisional 102(e) rejection be overcome under MPEP 2100?

Back 381

1/ by a Rule 132 showing that earlier disclosed, but not claimed, invention was work of the inventor and therefore not "by another", or
2/ By a 131 showing (entedating).

Front 382

Which prior art categories set a bar for patenting that cannot be overcome by antedating?

Back 382

102(b) and 102(d). MPEP 715.05 and 2136.05.

Front 383

Which prior art categories set a bar for patenting that cannot be overcome by antedating?

Back 383

102(b) and 102(d). MPEP 715.05 and 2136.05.

Front 384

What MPEP section covers ways of overcoming 35 U.S.C. 102 rejections based on printed publications or patent?

Back 384

706.02(b).
(This is a very important ssection.)

Front 385

What MPEP section covers ways of overcoming 35 U.S.C. 102 rejections based on printed publications or patent?

Back 385

706.02(b).
(This is a very important ssection.)

Front 386

Carl invents a flying house. he files a patent application with a claim directed to a house comprising a balloon apparatus, a steering apparatus and a living area. Russell, an examiner, finds a reference to a prior art flying house having a balloon apparatys and a living area. Russell finds a second reference to a prior art flying house having a steering apparatus. Do the references anticipate Carl's claim?

Back 386

No. To anticipate a claim, a single prior art reference must include all the elements of the claim.

Note: Carl's claim may be obvious based o Russell's references.

Front 387

Carl invents a flying house. he files a patent application with a claim directed to a house comprising a balloon apparatus, a steering apparatus and a living area. Russell, an examiner, finds a reference to a prior art flying house having a balloon apparatys and a living area. Russell finds a second reference to a prior art flying house having a steering apparatus. Do the references anticipate Carl's claim?

Back 387

No. To anticipate a claim, a single prior art reference must include all the elements of the claim.

Note: Carl's claim may be obvious based o Russell's references.

Front 388

What are the four "plain meaning," claim construction rules?

Back 388

1/ Claim words are given "plain meaning" unless such meaning is inconsistent with the specification.
2/ Claim limitations cannot be imported from specification.
3/ "Plain meaning" means ordinary and customary meaning given by those of ordinary skill in the art.
4/ Applicant may be a lexicographer (make up new words).
MPEP 2111.01.

Front 389

What are the four "plain meaning," claim construction rules?

Back 389

1/ Claim words are given "plain meaning" unless such meaning is inconsistent with the specification.
2/ Claim limitations cannot be imported from specification.
3/ "Plain meaning" means ordinary and customary meaning given by those of ordinary skill in the art.
4/ Applicant may be a lexicographer (make up new words).
MPEP 2111.01.

Front 390

What is required to get a filing date and for a complete PCT application?

Back 390

To get a filing date:
1/Specification, claim, drawings
2/ Name of applicant (may be inventor)
3Designation of at least one contracting state
4/ Request to treat as a PCT

To complete the application:
5/ Abstract
6/ Fee (by 30 months)

Front 391

What is required to get a filing date and for a complete PCT application?

Back 391

To get a filing date:
1/Specification, claim, drawings
2/ Name of applicant (may be inventor)
3Designation of at least one contracting state
4/ Request to treat as a PCT

To complete the application:
5/ Abstract
6/ Fee (by 30 months)

Front 392

What must be submitted to enter the national phase of a PCT application?

Back 392

1/ copy of the international application
2/ National filing fee

(An oath and any translation need to be submitted but can come later.)

The date on which an application enters the national phase is referred to as the entry date or 371 date and is not the filing date. In general, the filing date of a national phase application is the international filing date (or filing date of the US application to which it claims priority).

Front 393

What must be submitted to enter the national phase of a PCT application?

Back 393

1/ copy of the international application
2/ National filing fee

(An oath and any translation need to be submitted but can come later.)

The date on which an application enters the national phase is referred to as the entry date or 371 date and is not the filing date. In general, the filing date of a national phase application is the international filing date (or filing date of the US application to which it claims priority).

Front 394

What are the two most common examiner errors associated with an improper rejection for obviousness based on the "obvious to try" rationale?

Back 394

Rejecting a claim as obvious where the prior art gave:
1/ Either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful , or
2/ Only general guidance as to the particular form of the claimed invention or how to achieve it, even if it was obvious to try expliring a new technology or general approach that seemed to be a promising field of experimentation.
MPEP 2145(B).

Front 395

What are the two most common examiner errors associated with an improper rejection for obviousness based on the "obvious to try" rationale?

Back 395

Rejecting a claim as obvious where the prior art gave:
1/ Either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful , or
2/ Only general guidance as to the particular form of the claimed invention or how to achieve it, even if it was obvious to try expliring a new technology or general approach that seemed to be a promising field of experimentation.
MPEP 2145(B).

Front 396

What are five ways to overcome a 102(e) rejection based on printed publications or patents?

Back 396

1/ Not by "Another" (Rule 132)
2/ Predate invention (Rule 131)
3/ Argue persuasively claims are distinguishable from prior art
4/ Amend claims to distinguish over prior art
5/ Perfect Priority from a prior foreign (35 U.S.C. 119(a)-(d)), nonprovisional (120), or provisional (119(e))

MPEP 706.02(b).

Front 397

What are five ways to overcome a 102(e) rejection based on printed publications or patents?

Back 397

1/ Not by "Another" (Rule 132)
2/ Predate invention (Rule 131)
3/ Argue persuasively claims are distinguishable from prior art
4/ Amend claims to distinguish over prior art
5/ Perfect Priority from a prior foreign (35 U.S.C. 119(a)-(d)), nonprovisional (120), or provisional (119(e))

MPEP 706.02(b).

Front 398

What is its earliest possible prior art date of a U.S. published application in view of 35 U.S.C. § 102(e)?

Back 398

Published application, based on an earlier international application, has prior art as of its international filing date, which designated the US and was published in English.

Front 399

After a Notice of Allowance,for what reasons can an aplicant withdraw an application from issue?

Back 399

Before the issue fee is paid:
1/ For good and sufficient reasons (submitted by petition)
2/ To file a continuation application while abandoning the original application (expressly or by not paying the issue fee)

Front 400

In order of efficiency, what are the best methods of finding information in the MPEP?

Back 400

1/ Knowning exactly where the material is located and going directly to it.
2/ Having a good idea where the material is and briefly skimming the table of contents for the appropriate chapter.
3/ Using the Subject Matter Index to find sections that correspond to the subject.
4/ Keyword searching through a chapter.

Front 401

In which MPEP appendix can the text of patent laws be found?

Back 401

Appendix L (e.g., 35 U.S.C.102)

Front 402

What are three ways to overcome a 35 U.S.C.102(b) rejection based on printed publications or patents?

Back 402

1/ Argue persuasively claims are distinguishable from prior art
2/ Amend claims to distinguish over prior art
3/ Perfect Priority from a prior nonprovisional (102), or provisional (119(e)) application

MPEP 706.02(b)

Front 403

What are the main procedural steps that a PCT applicatio goes through at the International Searching Authority?

Back 403

1/ Perform an international search,
2/ Prepare an international search report,
3/ Prepare a written opinion of the ISA (for applications having an international filing date on or after January 1, 2004).

MPEP 1840.

Front 404

Under the Patent Cooperation Treaty, what body is authorized to rectify mistakes in the description, claims or drawings?

Back 404

Unless the International Preliminary Examining Authority is competent, the International Searching Authority is authorized to rectify such mistakes.
MPEP 1836.

Front 405

When will a PTE apply?

Back 405

1/ Applications filed earlier than 5/29/00 and later than 6/8/95.
2/ Plant or utility applications.
3/ Certain delays:
a. Interference proceedings.
b. Secrecy order imposition.
c. Successful appeals (only for appeal time more than 3 years from filing, and not including time in which applicant was not ordinarily timely).

Front 406

What are the three factors that establish relevance of a long-felt need?

Back 406

1/ Need must have been a persistent one that was recognized by those of ordinary skill in the art.
2/ Long-felt need must not have been satisfied by another before the invention by applicant.
3/ Invention must in fact satisfy the long-felt need.

MPEP 716.04.

Front 407

Who should the applicant for a patent be?

Back 407

The inventor.

Front 408

What is the definition of an inventor?

Back 408

An inventor is someone who contributes to the conception of the invention.

Front 409

What is a patent?

Back 409

A patent is a set of rights granted by a government relating to an invention. The rights include making, using and selling the invention.

Front 410

Which organizations grant patents?

Back 410

Sovereign governments (e.g., the US, Germany) grant patent protection. For purposes of the exam, there are two types of patents:

1/ US patents
2/ Foreign patents (e.g., an Italian patent)

In these cards, unless specified otherwise, the words "patent" and "patent application" refer to a US patent and a US patent application, respectively.

Front 411

Where are specific rules about claim punctuation, preferred indentation and ordering found?

Back 411

MPEP 608.01(m).

Front 412

Where does an applicant file a PCT application?

Back 412

With a Receiving Office, such as the USPTO.

Front 413

What must accompany a petition to revive an application that was abandoned because of an applicant's or owner's unavoidable delay?

Back 413

1/ Showing the entire delay was unavoidable.
2/ Outstanding Office action or notice reply.
3/ Fee for petition (relatively small).
4/ Terminal disclaimer, delicating to the public time equivalent to length of abandonment (all), or period extending beyond 20 years from prior date (utility or plant).

Front 414

When must a PTA final determination be appealed?

Back 414

180 days from the date of patent grant.

Front 415

What are the basic criteria examined by the ISA?

Back 415

1/ Novelty
2/ Inventive step (like obviousness)
3/ Industrial applicability (like patentable subject matter)

Front 416

When is the international search report established during the PCT process?

Back 416

16 months from the priority date.

Front 417

When will a designated office examine a national phase application from a PCT application?

Back 417

Generally, a designated office will not examine the application before 30 months from priority. (In the US, the fee must be paid within 30 months.)

Front 418

When must Article 34 amendments (description, claims, or drawings) be made in a PCT application?

Back 418

Later of 22 months from the priority date or 3 months from the international search report mailing.

Front 419

When must a demand for preliminary examination in the PCT process be made?

Back 419

Later of 22 months from the priority date or 3 months from the international search report mailing.

Front 420

When may a rejection due to obviousness be made final?

Back 420

When the action does not result in a new issue or constitute a new ground of rejection. Thus, the ground of rejection would have been included in at least one prior action. MPEP 2144.03(D).

Front 421

What is the EPC?

Back 421

European Patent Convention. European patents are granted under this treaty.

Front 422

What does PCT stand for?

Back 422

Patent Cooperation Treaty and applications filed under the Treaty. Such applications are synonymously called "international" applications.

Do not confuse international or PCT applications with "foreign" applications, which are filed directly with a foreign country's patent office (e.g., Japan).

Front 423

What is a PCT patent application?

Back 423

An international patent application. The application allows a convenient way to gather information useful for appliying for a patent in multiple countries. To get a patent, the applicant must pursue the application through the national stage for a specific country.

Front 424

Can the international phase of a PCT application result in a patent?

Back 424

No.

A PCT application does not itself become a patent. However, among other benefits, a PCT application can facilitate filing for patent rights in multiple countries. Securing patent rights requires entering the national phase in each country where these rights are sought.

Front 425

For what delays in the Office can PTA apply?

Back 425

Generally, Office delays provide for adjustment:
1/ Slow Office responses (14, 4, 4, 4 rule).
2/ PTE-type delays (interferences, secrecy orders, appeals).
3/ More than 3 years overall pendency.

Generally, applicant's delays, resulting from failure to expeditiously prosecute the application, reduce the adjustment.

Front 426

What is a foreign filing license?

Back 426

A license required to file for a foreign patent for any invention made in the US.

An applicant may be barred from receiving a US patent if a license is not obtained or if an applicant does not first file in the US and wait 6 months to file the foreign application.

Front 427

What does a complete provisional application include?

Back 427

1/ Cover sheet identifying the application as a provisional applicant.
2/ Name of each inventor.
3/ Residence of each inventor.
4/ Title of invention.
5/ Name and registration number of the attorney or gent, if any.
6/ Docket number of the filer, if any.
7/ Correspondence address.
8/ Specification as prescribed by 35 U.S.C. 112.
9/ Drawing if necessary.
10/ Fee.

MPEP 201.04(b).

Front 428

What happens if the cover sheet is missing or incomplete or the filing fee is not paid in a provisional application?

Back 428

A Notice of Missing Parts is sent. Two months are given to complete filing or else it is abandoned.

Front 429

What is the Graham obviousness analysis?

Back 429

Obviousness is a question of law based on underlying factual inquiries:
1/ Determine scope & content of prior art
2/ Ascertain differences between claimed invention and prior art, and
3/ Resolve level of ordinary skill in art.

Objective evidence, "secondary considerations," is also evaluated and may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.

Front 430

In general, what happens if an applicant does not respond to the Office during prosecution?

Back 430

The application becomes abandoned.

Front 431

When must an applicant reply to a Notice of Incomplete Response?

Back 431

1 month (extendable up to 6 months total).

Front 432

Where can the law regarding Patentability of Inventions: Inventions patentable be found?

Back 432

35 U.S.C. 101

Front 433

Panzer files an application in Germany for a new and improved tank. Six months later he invents radical new improvements to his original tank. He files a second German application and abandons the first application. 364 days after filing the second application, Panzer files a US application claiming priority to the second application under 35 U.S.C. 119. Is his claim proper?

Back 433

Yes, as long as the first application was not laid open to public inspection, left no rights outstanding, and did not serve as a basis for claiming priority. MPEP 201.13.

Front 434

What does "consisting essentially of" mean when found in a claim preamble?

Back 434

The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention. MPEP 2111.03.

Front 435

What are the requirements for a claim to priority in a US application to an earlier filed foreign application?

Back 435

Claim must identify:
- Country or intellectual property authority where filed, and
- Other applications for the same subject matter,
- Number of foreign application, and
- Date foreign application was filed.

Claim must be made:
- During pendency of foreign application, and
- On or before specified timeframe (4 months from US filing, or 16 months from foreign filing, whichever is later).

Front 436

What actions can an applicant take at the PTO without paying a fee?

Back 436

1/ Timely respond to action/restriction.
2/ Cite prior art.
3/ Conduct interview.
4/ Timely file IDS.
5/ File petition to make special (conserving energy, health, environment, age, terrorism, superconductivity).
6/ File a protest.
7/ File petition regarding incorrect abandonment.
8/ File supplemental answer or amendment.
9/ File comments regarding reason for allowance.
10/ Correct PTO mistake in application.
11/ Access issued, published, and some abandoned files.

Front 437

When determining the scope of the claimed invention, what must the office personnel give the claims?

Back 437

The "broadest reasonable interpretation consistent with the specification."
MPEP 2141(II)(A).

Front 438

Specifically, which requirements of 35 U.S.C. 112, para. 1, must be met in a foreign application to which a US application claims priority?

Back 438

1/ Enablement and
2/ Written description.

The satisfaction of these requirements is determined by the examiner.

Front 439

In which chapter of the MPEP are Types, Cross-Noting, and Status of Application?

Back 439

200.

Front 440

What is the 14, 4, 4, 4 rule?

Back 440

Delay times for Office responses can be added to the patent term if any individual response time is longer than:
- 14 months from filing, or entry into national stage, for first Office action,
- 4 months from Office action reply or appeal to Board, for response,
- 4 months from decision by Board or CAFC, if application has allowable claims, for action, or,
- 4 months from payment of issue fee and satisfaction of other requirements to issue patent.

Front 441

What are the three types of application status?

Back 441

1/ Pending
2/ Abandoned
3/ Issued

Front 442

When must an applicant respond to a Notice of Omitted Items?

Back 442

Within 2 months (nonextendable).

However, to preserve the filing date, the Notice can be ignored and prosecution of the application can be pursued without the omitted item. (A rare instance where the applicant does not need to respond in order to avoid abandonment.)

Front 443

What does "consisting of" mean when found in a claim preamble?

Back 443

The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. MPEP 2111.03.

Front 444

With what documents must a verified statement be submitted?

Back 444

1/ Oath / declaration (Rule 68, or for PCT, Rule 495(f))
2/ Affidavit / declaration:
a. to disqualify commonly owned patent or published application as prior art (Rule 130),
b. of prior invention (antedating) (Rule 131), or
c. traversing rejections or objections (Rule 132).
3/ Retroactive license (37 CFR 5.25).

Front 445

What does "comprising" mean when found in a claim preamble?

Back 445

The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive but open-ended and does not exclude additional, unrecited elements or method steps.
MPEP 2111.03.

Front 446

What is the policy behind the double patenting prohibition?

Back 446

Prevents unjustified extension of patent exclusivity beyond the term of a patent.

Front 447

Can multiple patents or applications be listed on an assignment?

Back 447

Yes, multiple patents or applications can be listed.

Front 448

Under which rule is a CPA filed?

Back 448

53(d).

Front 449

When must a US application be filed to claim priority from a provisional application?

Back 449

Within 12 months of filing the provisional application.

Front 450

How long can a patent term be extended under PTE?

Back 450

Up to 5 years.

Front 451

What is the general rule regarding claims having specific numeric ranges?

Back 451

No issue of claim definiteness is raised. MPEP 2173.05(c).

Front 452

Who may sign a reissue oath that does not have broadening claims?

Back 452

1/ The inventors, or
2/ An assignee of the entire interest.

Front 453

In what section of the MPEP is Incorporation by Reference?

Back 453

608.01(p)(I)

Front 454

Where can the law regarding Application for Patent: Benefit of earlier filing date in the United States be found?

Back 454

35 U.S.C. 120.

Front 455

What is an international patent application called?

Back 455

A Patent Cooperation Treaty (or PCT) application.

Front 456

When can an objection to a PTA determination be made?

Back 456

With or prior to paying the issue fee.

Front 457

Is the US law regarding inventors of patent applications generally shared by other countries?

Back 457

No. Foreign applicants should be careful to understand the law regarding inventorship.

Front 458

Is there such a thing as an international patent?

Back 458

No. Do not confuse the term "international" with "foreign".

There is such a thing as an international patent application, but it only provides a convenient way to apply for patents with the US and/or foreign government.

Note: A European Patent Convention patent is technically an international patent but rather a group of independent, nationally enforceable, nationally revocable patents. This point is not important for the exam.

Front 459

From the point of view of an applicant, what is a common process for prosecuting a filed patent application?

Back 459

1/ Receive first Office Action
2/ Respond to Action
3/ Receive Office Action
4/ Respond to Action
5/ Receive final Office Action or Notice of Allowance

Front 460

What must be submitted to the Office to perfect a priority claim to a foreign application in a US application?

Back 460

1/ Certified copy of the foreign application, and
2/ Translation of the foreign application, if not in English.

Front 461

What are two ways of filing for a US patent?

Back 461

1/ File a US patent application directly with the US patent office (national application); or
2/ File a PCT application with an international Receiving Office, and then pursue the national stage of the PCT application with the US patent office.

Front 462

What is prior art?

Back 462

Something that reveals an invention is not new (i.e., novel). For example, if some published an article in a magazine about building a machine, the article may be prior art to a later attempt to patent the machine.

What precisely can be used as prior art is laid out in 35 U.S.C. 102.

Front 463

What does U.S.C. stand for?

Back 463

United States Code.

U.S.C. designates statutes (e.g., 35 U.S.C. 112). Title 35 (35 U.S.C.) of the United States Code contains the patent statutes.

In the prosecution hierarchy, statutes (U.S.C.) trump rules and regulations (CFR), which in turn trump guidelines (MPEP).

Front 464

What law addresses Application for Patent:
Inventors, including clarification of when inventors can apply for a patent jointly?

Back 464

35 U.S.C. 116:

"Inventors may apply for a patent jointly even though
1/ they did not physically work together or at the same time,
2/ each did not make the same type or amount of contribution, or
3/ each did not make a contribution to the subject matter of every claim of the patent."

Front 465

What is the basic text for the patent registration exam?

Back 465

The MPEP.

Front 466

When must an applicant respond to an action?

Back 466

Statutory: (Hard deadline) 6 months

Office: (Soft deadline) Examiner will often set a shortened period of 3 months. Automatic extension fees must be paid for responses received after the deadline up to the statutory deadline.

Front 467

What does "Rule 114" refer to?

Back 467

37 CFR 1.114 (Title 37 of the Code of Federal Regulations, Part 1, Section 114).

(Tip: About 98% of the rules tested on the exam are from Part 1. The other 2% come from Part 10. These are some of the more heavily tested rules:
Fees: 1.27(a)
Action by applicant: 114, 111
Specification: 75(c)
Affidavits: 131. 132
Application: 56(c), 53(d), 53(b)
Interviews: 133(a)
Oath: 63)

Front 468

When is a double patenting rejection improper?

Back 468

Where a restriction requirement was made in the parent.

Front 469

What must be submitted to properly record an assignment?

Back 469

1/ Copy of assignment on one-sided 8x11 or A4 paper,
2/ Indentification of patents by number,
3/ Fee,
4/ Cover sheet,
5/ Translation, if not in English.

Front 470

In the case of Joint Owners, who can carry out acts that would otherwise infringe the patent? (Assume an absence of an internal agreement between the two parties.)

Back 470

Either owner.

Front 471

What does MPEP stand for?

Back 471

Manual of Patent Examining Procedure.

The MPEP includes the text of statutes and rules, which have the force of law, in addition to guidelines for patent examining, which do not. The MPEP is a reference on the practices and procedures relative to the prosecution of patent applications before the USPTO (i.e., the "Office" or "PTO").

Front 472

Which applications are eligible for prioritized examination? Accelerated examination?

Back 472

Prioritized:
1/ Utility or plant applications.
2/ Continuing applications.
3/ Divisional applications.

Accelerated:
1/ Utility or design applications.
2/ Continuing applications.
3/ Divisional applications.

Front 473

What are the two criteria for a proper requirement for restriction between patentably distinct inventions?

Back 473

1/ The inventions must be independent or distinct as claimed.
2/ There would be serious burden on the examiner if restriction is not required.

MPEP 803.

Front 474

What date is accorded to papers filed with a certificate of mailing/transmission?

Back 474

The date of receipt by the Office unless the reply period would not be met. Then, the date of mailing.

Front 475

Do patent applications filed in all countries provide a basis for claiming foreign priority in a subsequent US application?

Back 475

No, only those listed in MPEP 201.13.

Front 476

What are the conditions for an applicant to benefit from the filing date of a prior foreign application?

Back 476

1/ Foreign country recognized.
2/ Filed by the same applicant or by legal representatives or assigns.
3/ Filed within 12 months of foreign filing
4/ Same invention.
5/ Claim made during the pendency, within later of 4 months from US filing or 16 months from foreign filing.

Note: For PCT applications or where foreign priority is based on inventor's certificate, see MPEP 201.13.

Front 477

What is Rule 10.18(b) about?

Back 477

Ethical requirements.

Front 478

Who can see pending or abandoned patents?

Back 478

1/ Any inventor unless assignee has requested otherwise in writing
2/ Any inventor who was named but did not sign
3/ Any assignee (entire or partial)
4/ A licensee of an entire interest (not partial)
5/ An attornery or Agent of Record, or anyone given written authorization from an inventor

Front 479

A patent containing claims 1-10 has issued. The subject matter of claims 1-5 was invented by inventor A, who has assigned his rights to your client, company C. The subject matter of claims 6-10 was invented by inventor B, who refuses to cooperate with company C unless he is the sole named inventor of his own patent. Company C wishes to divide the claims such that one patent contains only claims 1-5 and has inventor A as the sole inventor, and another patent contains claims 6-10 and has inventor B as the sole inventor. How should you advise your client?

Back 479

File a reissue of the original application along with a divisional reissue, cancel claims 1-5 and remove inventor A from the first reissue, move claims 6-10 and inventor B to the divisional reissue. MPEP 1451.

Front 480

What are the requirements to a record a document with the Office?

Back 480

1/ English, or, if not in English, a translation.
2/ Identify application or patent number and filing date.
3/ Include the name of each inventor.
4/ Fee.
5/ One-sided paper.
6/ Cover sheet conveying necessary information.

MPEP 302.07

Front 481

When must a first buyer record a transfer of interest to protect herself from a second buyer?

Back 481

Later of:
1/ 3 months from transfer, or
2/ Before second assignment where the second buyer took for consideration and did not have notice of first buyer.

Front 482

What is required for an IDS to be complete?

Back 482

1/ A listing of cited documents,
2/ Copies of all documents except US patents and published applications, and
3/ A concise explanation of relevance of foreign language documents.

Front 483

When is the deadline for filing a utility patent originally patented in a foreign country?

Back 483

One year

Front 484

When is the deadline for filing a design patent originally patented in a foreign country?

Back 484

Six months

Front 485

Who can see issued patents?

Back 485

Everyone can see issued, re-issued and re-examined patents (copy charge only).

Front 486

When must a national phase application be filed in the US after a PCT is filed?

Back 486

A nonextendable 30 months from the priority date (with fee).

Front 487

What is an EPO application?

Back 487

European Patent Office Application

Front 488

To which applications does a 35 U.S.C. 103(c) prior art exclusion apply?

Back 488

Applications filed on or after November 29, 1999. MPEP 706.02.

Front 489

In which chapter of the MPEP is Allowance and Issue?

Back 489

1300

Front 490

Can nonprovisional applications be converted to provisional applications?

Back 490

Yes, within the first year of filing

Front 491

When can an intentionally abandoned application be revived?

Back 491

Never.

(Only an unintentionally or unavoidably abandoned application can be revived.)

Front 492

Which applications are available for inter partes reexamination?

Back 492

Only those filed after 11/29/1999.

Front 493

What types of prior art can be considered in a reexamination?

Back 493

Only patents and printed publications.

Front 494

What amendments can be made to a provisional?

Back 494

None.

Front 495

What are the claim-amendment status indicators?

Back 495

1/ "cancelled"
2/ "previously presented"
3/ "withdrawn"
4/ "currently amended"
5/ "original"
6/ "not entered"
7/ "new"

Front 496

In which chapter of the MPEP are Secrecy, Access, National Security, and Foreign Filing?

Back 496

100

Front 497

What is the MPEP's main topical index called?

Back 497

Subject Matter Index (SMI)

Front 498

In which MPEP appendix can the text of patent rules be found?

Back 498

Appendix R
(e.g., 37 CFR 114)

Front 499

What happens if the International Searching Authority finds that a PCT application does not comply with the requirement of unity of invention as set forth in the Regulations?

Back 499

The ISA requires additional fees.
MPEP 1843.

Front 500

If an applicant requests that an application not be published but then files in another country, when must the applicant notify the Office?

Back 500

Within 45 days or the applicant goes abandoned.

Front 501

Where in the MPEP are multiple dependent claims?

Back 501

MPEP 608.01(n).

(Tip: n = Nitty gritty of dependent claims; the single most important section of the MPEP for the exam.)

Front 502

How long does an applicant have to respond to an action under accelerated examination? Under prioritized examination?

Back 502

Accelerated: 1 month.

Prioritized: Normal amount of time (but no extensions allowed).

Front 503

What is the single most important section of the MPEP for the exam?

Back 503

MPEP 608.01(n).

(Tip: The section is about 10 pages. You should read it at least 10 times before taking the exam.)

Front 504

What is necessary to complete a provisional applications?

Back 504

1/ A specification satisfying 35 U.S.C. 112, para. 1
2/ Any necessary drawing
3/ Fee

No oath or declaration or claims required.

Front 505

What MPEP section would you look to find how many types and what kinds of digital media must be submitted in an application to patent a Gene Sequence?

Back 505

MPEP 2421.02

Front 506

Under the Patent Cooperation Treaty, how many days does an interested party have to offer evidence that a document did not arrive due to an interruption in the Mail Service?

Back 506

10. MPEP 1834.02.

Front 507

What happens if the 1 year due date to convert p Provisional Application falls on a Saturday, Sunday or a holiday?

Back 507

The due date is the first working day after the holiday or due date.

Front 508

What requirements must be met in an earlier-filed foreign application in order for a US application to claim the benefit of the priority date of the foreign application?

Back 508

The foreign application must satisfy the requirements in 35 U.S.C. 112, para. 1.

Front 509

How can a statutory double patenting rejection (i.e., where the claimed subject matter is the same) be overcome?

Back 509

By cancelling claims directed to the same invention.