Patent Bar

Front 1

When is declassified printed material effective prior art under 102?

Back 1

102(a) - it may be prima facie evidence of prior knowledge as of its printing date, even though material was classified at that time

102(b) - as of the date of release following declassification

Front 2

When will protest be entered in file?

Back 2

Unless applicant gives written consent, it must be submitted before earlier of publication and Notice of Allowance.

(exception - protest in reissue should be filed within 2 months of announcement of reissue filing in Official Gazette)

Front 3

Third party submission of Prior Art

Back 3

For a pending published Application, must submit:
1 - Application number that submission is directed to
2 - list of patents/publications, along with dates of publication
3 - copy of each patent/publication, or at least pertinent parts
3 - English translation of pertinent parts
4 - Fee

Front 4

Foreign Language abstracts as prior art

Back 4

Can be used for non-final office action rejection, but generally not okay where both the abstract and document itself are prior art.

Front 5

Product by process claim

Back 5

- if the product is the same/obvious over a prior art product made by a different process - still unpatentable

- once the examiner gives rationale showing that the product is the same or similar to prior art product, the burden shifts to the applicant to show unobvious difference between the products.

Front 6

Analysis under 103

Back 6

- take claimed invention as a whole
- consideration of inherent properties of whole invention is proper
- differences between prior art and claim is not proper; rather, question is whether invention as a whole would be obvious to PHOSITA

Front 7

To rely on equivalence as a rationale to support obviousness rejection...

Back 7

Equivalence must be recognized in the prior art - it cannot be based on applicant's disclosure or the fact that components are functional or mechanical equivalents.

Front 8

Test for a proper dependent claim under 112 paragraph 4

Back 8

Whether dependent claim includes every limitation of claim from which it depends

- NOT whether claims differ in scope

Front 9

Objection for New Matter vs. rejection under 112, paragraph 1

Back 9

Objection for new matter - proper for amendments to abstract, spec, or drawings that are beyond the original subject matter

Rejection under 112 paragraph 1 - proper where claims are not supported by specification

Front 10

Ex parte rejections under 102(g)

Back 10

Need
1 - actual reduction to practice by another before applicant's invention, and
2 - the invention by another was not abandoned, suppressed or concealed

Front 11

Constructive Reduction to Practice

Back 11

Filing application with PTO
- requires compliance with 112 paragraph 1

Front 12

Who must sign papers in prosecuting application?

Back 12

Any of:

1) patent agent/attorney of record
2) patent agent/attorney not of record, but in representative capacity under 37 CFR 1.34
3) Assignee of entire interest
4) all inventors, unless excluded by assignee of entire interest

Front 13

Who can change correspondence address in application filed without an executed oath/declaration?

Back 13

1 - the inventors
2 - if a registered practitioner filed the application, then any registered practitioner listed in the transmittal papers may change the address
3 - if application was filed by a company to whom the invention has been assigned/there is an obligation to assign, than a person with the authority to bind the company may change the address

Front 14

Conditional assignments recorded with the PTO

Back 14

PTO treats conditional assignments as absolute assignments

Front 15

Can PTO employees own patents?

Back 15

No, PTO employees cannot have any interest in any patent or application during their employment and for a period of one year after

Front 16

Establishing date of earlier invention outside the U.S.

Back 16

In NAFTA countries - can be established after 12/8/1993

In WTO countries - can be established after 1/1/1996

Front 17

If foreign priority was not claimed in parent, can it be claimed in CPA?

Back 17

Yes, as long as the parent was filed within two months of the foreign priority application

Front 18

How do you correct inventorship under 1.48(a) where statement of lack of deceptive intent cannot be obtained from the inventor to be added/deleted?

Back 18

A petition under 37 CFR 1.183 (waiver) is available

Front 19

Inventorship in foreign application to which priority is claimed

Back 19

Foreign application and U.S. application must have same inventors

exception - if the foreign application was filed by the assignee/legal representative of the inventor, the oath/declaration filed in the U.S. application can state that the foreign application was filed by the assignee of the inventor or inventor's legal representative

note - a U.S. Application by A & B can claim the benefit of A's foreign application and B's foreign application

Front 20

Operability of reference

Back 20

- when a reference expressly anticipates or renders claims obvious, the reference is presumed to be operable

- non-enabling reference can be prior art under 103

- reference is enabling if the public was in possession of the claimed invention before the invention date

Front 21

Incorporation by reference of parent or priority application

Back 21

If subject matter inadvertently left out of application which claimed benefit of/priority to U.S. (nonprovisional or provisional), foreign, or International application, and the missing subject matter was contained fully in prior application, claim of benefit/priority can be treated as an incorporation by reference.

- must amend specification within time set by Office during prosecution by:
1 - submitting copy of the prior application (unless U.S. provisional or non-provisional)
2 - submitting an english translation if application is not in english
3 - identify where in the prior application the missing subject matter is located

Front 22

Power of Attorney

Back 22

need
1 - a writing
2 - with the name of a registered practitioner or one or more joint inventors
3 - giving the power to act
4 - signed by applicant or assignee of the whole interest in the application.

Front 23

Assignments not in English

Back 23

In order to be accepted and recorded by PTO, the assignment must be accompanied by an English translation that is signed by the translator

Front 24

What papers do not get benefit of certificate of mailing?

Back 24

- new patent application, including CPA
- papers filed in interference directed to be filed by hand
- agreements settling interferences
- any PCT papers
- papers mailed from a foreign country

Front 25

Which papers cannot be faxed?

Back 25

- new patent applications (except CPAs, but they still do not get benefit of certificate of transmission)
- color drawings
- any certified document
- request for reexamination
- international application
- national stage application and fee
- correspondence re registration to practice to OED
- correspondence in interference
- papers related to secret content filed in applications subject to secrecy order

Front 26

Which papers cannot be filed by EFS?

Back 26

- design applications
- plant patent applications
- reissue

Front 27

non-provisional application filing fee

Back 27

- regular filing fee
- extra $ for each independent claim above 3
- extra $ for each claim above 20
- surcharge if there are any multiple dependent claims
- surcharge if the specification and drawings are over 100 pages long (increments of 50)
- surcharge for late oath/declaration

Front 28

Asserting small entity status

Back 28

1 - by writing
2 - by paying exact small entity basic filing fee

Front 29

Small entity fee obligations

Back 29

Once small entity status established in application, a new determination of entitlement is needed
1 - when issue fee due and
2 - when any maintenance fee due

small entity status must be separately asserted for each application, including continuing applications

Front 30

When small entity status lost

Back 30

- Once established, can pay small entity status until issue fee/maintenance fee

- loss in small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after status lost

- notification of loss of entitlement to small entity status must be by specific written assertion

Front 31

Correcting erroneous assertion of small entity status

Back 31

Must notify PTO and provide itemization of:
1 - particular type of each fee erroneously paid as small entity with current fee amount for large entity
2 - actual fee paid and when
3 - deficiency owed for each fee
4 - total owed for application

Front 32

Citizenship

Residency

Back 32

If ADS has correct citizenship and oath/declaration has incorrect citizenship - ADS citizenship is used by PTO but Applicant needs to submit supplemental oath/declaration setting correct citizenship

If residency correct on ADS and incorrect in oath/declaration - PTO will use ADS residency and no new oath/declaration is needed

Front 33

separate oaths/declarations by joint inventors

Back 33

Must refer to each other by name in separate oath/declaration, otherwise it is defective

Front 34

Oath/declaration not in English

Back 34

Can be in foreign language but must
1 - be in language that the inventor understands
2 - have translation
3 - have statement that the translation is accurate

Front 35

Oath/declaration requirements

Back 35

must say inventors -
1 - believe themselves to be original, true, first inventors
2 - have reviewed and understand application
3 - acknowledge their duty to disclose all information known to be material to patentability
4 - must give citizenship, residency, and mailing address for each inventor
5 - must identify foreign application or patent to which priority is claimed.

Front 36

Supplemental oath/declaration

Back 36

- Must identify entire inventive entity
- must be signed by all inventors that correction relates to
- can be filed as of right, even after allowance
- necessary if subject matter originally disclosed and not claimed that is now being claimed

note - correcting residency or mailing address can be done with ADS for no fee

Front 37

Preliminary amendment

Back 37

Can be submitted with application and entered prior to fee calculation if it is limited to cancellation of claims

Considered part of original application papers if filed the same day as the application and referred to in original declaration or supplemental declaration

Front 38

supplemental declaration in reissue

Back 38

If filed after Notice of allowance, it is treated as an amendment

Front 39

IDS is timely if....

Back 39

it is submitted within three months of filing national application other than CPA, within three months of date of entry of national stage, or before mailing of first Office Action on the merits

Front 40

IDS not timely filed but filed before final office action, notice of allowance, or other action closing prosecution

Back 40

Must be accompanied by either
1 - statement that each item was first cited in any communication from foreign patent office within past 3 months, OR
2 - statement that to the filer's knowledge the items were unknown to applicant/inventors/assignees/attorneys more than 3 months earlier, OR
2 - accompanied by fee

Front 41

IDS not timely filed, after final office action/notice of allowance/other action closing prosecution, but filed before payment of issue fee

Back 41

Must include BOTH:

1 - fee AND

2 - Must be accompanied by either statement that each item was first cited in any communication from foreign patent office within past 3 months, or statement that to the filer's knowledge the items were unknown to applicant/inventors/assignees/attorneys more than 3 months earlier

Front 42

What should applicant do if IDS can't be filed?

Back 42

1 - file continuation with IDS before issue fee
2 - file an RCE with IDS before issue fee
2 - after issue fee - petition to withdraw patent from issue to allow express abandonment in favor of continuation
3 - after issue fee - petition to withdraw patent from issue to allow express abandonment in favor of RCE

Front 43

IDS content

Back 43

- list of individual items submitted w/ patents identified by patentee, number, issue date, and publications identified by author, title, pages, date and place published
- copy of every item submitted (including cited US pending applications not in IFW system)
- concise explanation of relevance of anything not in english - translations into english required as well if they are readily available

Front 44

Matter cancelled from application file wrapper

Back 44

Can be used as prior art as of the patent date

Front 45

Effect of filing RCE during an appeal

Back 45

Withdraws appeal, even if the RCE fee is not paid

Front 46

Suspension of Action for cause

Back 46

- by examiner - can be suspended for a maximum of 6 months

- by applicant - must petition, must be for good cause, for definite time, and must pay a fee
(note - applicant cannot petition if there is an outstanding office action, if there is reexamination, or to allow an IDS filing)

Front 47

No cause Suspension of Action

Back 47

- only available in RCE or CPA
- must be filed with the RCE request or CPA transmittal documents
- requirements under statute for RCE or CPA must be independently met
- cannot exceed three months
- processing fee must be submitted

Front 48

No automatic extension available

Back 48

- when office action says so
- reply brief
- a request for oral hearing in an appeal
- responding to decision of BPAI
- anything in an interference
- due dates in reexamination

Front 49

No extensions even for cause

Back 49

- IDS
- statutory deadline (e.g., 6 months)
- 3 month deadline to obtain refund for large entity payment where small entity status was available
- filing formal drawings at time issue fee is paid

Front 50

Restriction between inventions

Back 50

non-elected invention may be pursued in divisional application and cannot be rejected based on double patenting

Front 51

When is restriction between inventions proper?

Back 51

inventions must be independent or distinct
- independent - species not useable together or process and apparatus incapable of being used in practicing process
- distinct - capable of separate manufacture, use, or sale and are patentable over each other

Front 52

Restriction between subcombination and combination

Back 52

subcombination = different combinations with claim common to both

need -
1 - combination does not require the particulars of the subcombinations; and
2 - subcombination can be shown to have utility by itself

Front 53

Election of species

Back 53

Where there is a generic claim and claims to more than one species
- examiner will search generic claim and elected species
- if the generic claim is allowed later, then claims covering a reasonable number of the species will also be allowed
- if only the elected species is allowed, divisional must be filed for other species to have them examined
- must traverse to preserve appeal, by pointing out specific reasons examiner is wrong

Front 54

Linking claims

Back 54

claims that link 2 or more otherwise distinct inventions
- they are examined with elected claims
- if linking claims allowed, then the restriction requirement must be lifted and non-elected claims rejoined

Front 55

Appeal brief grouping of claims

Back 55

to have claims under same rejection be separately considered:
1 - state that the claims don't stand/fall together, and
2 - present arguments as to why they are separately patentable

Front 56

Bases for BPAI to remand case to Examiner

Back 56

1 - for fuller description of the invention
2 - for clearer explanation of pertinence of the references
3 - to select one rejection when multiple rejections are made
4 - to prepare a supplemental examiner's answer to reply brief

Front 57

What happens in application if some claims are withdrawn from appeal?

Back 57

Those claims are cancelled and the others remain on appeal

Front 58

Petitions to Commissioner

Back 58

Must file within two months of Office Action on which relief is requested

Front 59

What ownership is required for double patenting rejection to be proper?

Back 59

- if inventors are not the same but ownership is the same, or
- when there is at least one common inventor

Front 60

Time for filing Appeal brief

Back 60

Within 2 months of actual receipt by office of Notice of Appeal
- automatically extendable up to five months
- if defective, have 1 month to fix

Front 61

Allowed amendments of claims on appeal

Back 61

- cancel claims that don't affect other claims
- rewrite dependent claims into independent form

Front 62

May affidavits be filed in application during appeal?

Back 62

Only if filed before appeal brief, and:
- applicant submits a showing of good cause and
- affidavit overcomes ALL outstanding rejections

Front 63

Request for oral hearing in appeal

Back 63

- Must be filed within two months of the date that the examiner's answer is sent
- must pay a fee
- deadline to file is only extendable for cause

Front 64

Request for reexamination

Back 64

- If request is denied, requestor gets substantial portion of money back
- can be filed up to six years after patent expires
- claims cannot be broadened (including adding method claims to existing apparatus claims)
- no issue fee

Front 65

What happens if patentee fails to respond timely to Office Action in Reexamination?

Back 65

Reexamination proceeding is terminated via issuance of a Notice of Intent to Issue a Reexamination Certificate

Front 66

What are the possible BPAI decisions of an appeal?

Back 66

1 - remand, affirm, or reverse examiner in whole or part
2 - issue a statement which constitutes a new rejection
3 - can state that a claim is allowable in an amended form, which is binding on the examiner

Front 67

Request for rehearing of BPAI decision on appeal

Back 67

- two month deadlien to file request, extendable only for cause
- no fee required

Front 68

Can a continuation or RCE be filed during an appeal?

Back 68

yes

Front 69

What happens if an appeal is withdrawn and no claims are allowed?

Back 69

Application is abandoned

Front 70

If BPAI decision of appeal is not appealed to Federal circut or district court of DC . . .

Back 70

File is returned to the examiner
- if no claims are allowed - the application becomes abandoned as of the deadline for appeal to CAFC or DDC
- if some claims are allowed - the examiner will cancel the rejected claims and send allowed ones for issue
- if no claims allowed but some allowable subject matter - still abandoned

Front 71

When is patent issued to assignee?

Back 71

If assignee is listed on the issue fee transmittal form, regardless of whether assignee participated in prosecution

Front 72

petition to defer issue

Back 72

- can be filed after issue fee paid
- can be deferred for up to one month
- need extraordinary circumstances showing

Front 73

Withdrawal from issue

Back 73

1 - prior to issue fee, applicant needs to file petition showing good and sufficient reason and pay a fee

2 - after issue fee - office can file for mistake on part of office, unpatentability of one or more claims, interference, violation of duty to disclose
OR
applicant can pay fee and file petition for:
- abandonment to consider IDS in continuation or RCE
- for unpatentability of claims, applicant needs statement saying which claims are unpatentable, include amendment, and explanation of how amended claims are patentable

Front 74

patent term extension

Back 74

For applications filed after June 8, 1995 and before may 29, 2000
20 years can be extended for up to five years for
- delay from interference
- secrecy order
- successful appeals
but extension time is reduced by any time within three years of the filing date, and for any time during which applicant didn't act with due diligence

Front 75

patent term adjustment

Back 75

For applications filed after may 29, 2000
applies for
- administrative delays
- overall pendency from application to issue is more than 3 years, not including appeal time

reduced by delays from applicant (e.g., reply to office action outside of shortened statutory period.)

Front 76

Is RCE fee reduced for small entity?

Back 76

Yes

Front 77

Is fee reduced for small entity for petition to revive an unintentionally abandoned application?

Back 77

Yes

Front 78

Is fee reduced for small entity for filing an IDS?

Back 78

No

Front 79

If small entity status properly asserted at filing and but becomes inappropriate shortly thereafter, can applicant still pay small entity fee to add new claims in response to an office action?

Back 79

Yes, change in status need not be evaluated until issue fee is due.

Front 80

How do you calculate deficiency payment for erroneously claimed small entity status if fees have changed?

Back 80

deficiency = (Current fee for large entity) - (fee paid at the time for small entity)

Front 81

What are effects of Certificates of Mailing/Certificates of Transmission in correspondence sent from outside the U.S.?

Back 81

Certificate of Mailing - no effect is given to the certificate of mailing date, and actual receipt by PTO will be the date of receipt

Certificate of Transmission - date of certificate of transmission is effective to be the date of receipt

Front 82

How is Express Mail properly done for USPTO correspondence?

Back 82

- correspondence deposited with USPS as “Express Mail Post Office to Addressee” and
- date-in is properly entered by the USPS.
Date entered by USPS will be the date submitted to PTO, even if it is a weekend or holiday

(note - it is not required to place Express Mail mailing label number on correspondence before mailing)

Front 83

if a new patent application was submitted by express mail but never received by the office, what is necessary to get the filing date of hte deposit with the USPS?

Back 83

1 - petition showing that the number of the Express Mail mailing label was placed on the application before it was sent
2- true copy of the of the Express Mail label showing the date in/official notation entered by USPS
3 - true copy of the new application showing Express mailing label number on it
4 - true copy of any returned postcard receipt

Front 84

Can request for reexamination be filed by fax?

Back 84

No

Front 85

What must be in a certificate of mailing/transmission?

Back 85

must state the date of deposit or transmission, and signature by person having reasonable basis to expect that it would be mailed/transmitted on on or before date indicated.

Front 86

Can an application be given a filing date if the inventors are not actually identified?

Back 86

Yes

Front 87

Should examiner inquire as to joint inventors?

Back 87

Examiner should not inquire concerning the inventors and the invention dates for the subject matter of the various claims until it necessary in order to properly examine application.

Front 88

How to correct ADS Info?

Back 88

supplemental ADS may be submitted before issue fee payment to correct/update info in previous ADS

Front 89

Where is bibliographic information taken from by PTO?

Back 89

From ADS, regardless of whether oath/declaration governs the information. Errors can be corrected with a request and a supplemental ADS

Front 90

Inconsistencies between ADS and other documents . . .

Back 90

- latest submitted information will govern, regardless of whether supplied by ADS or other document
- if documents submitted at the same time, ADS controls

Exception to above rules - Oath/declaration governs names and citizenship of inventors

Front 91

Objections to informal drawings, what response is a bona fide attempt to advance application ?

Back 91

unless applicant told otherwise, objections to drawings will not be held in abeyance, and request to hold objections in abeyance is not bona fide attempt to advance the prosecution

Front 92

What can claims not contain?

Back 92

Drawings or flow diagrams

Front 93

Can an IDS be a submission for an RCE?

Back 93

Yes

Front 94

If claim 5 language says "in any of claims 1-4", can it be proper multiple dependent?

Back 94

Yes

Front 95

What can be incorporated by reference for essential material?

Back 95

1 - U.S. Patent
2 - U.S. Published Application

As long as patent or published application does not itself incorporate the essential material by reference

Front 96

What can be incorporated by reference for non-essential material?

Back 96

- U.S. Patents
- U.S. Published Applications
- Foreign Patents
- Foreign Published Applications
- commonly owned U.S. applications
- non-patent publications
- commonly owned abandoned application less than 20 years old

Front 97

Requirements for application title

Back 97

- must be technically accurate
- must be fewer than 500 characters

Front 98

Do all inventors filing a International application with USPTO receiving office have to be U.S. citizens?

Back 98

No

Front 99

When does defensive publication become prior art?

Back 99

As of filing date

Front 100

When does Provisional application get filing date?

Back 100

When specification and drawings are submitted

(BUT application is not complete without coversheet)

Front 101

What is the 102(e) date of an International Application filed prior to 11/29/2000?

Back 101

Date when national stage fee, oath/declaration, and translation have all been submitted

Front 102

Can 102(e) rejection rely on matter that was cancelled from application and thus not in the issued application?

Back 102

No

Front 103

What is the Summary?

Back 103

- separate and distinct from the abstract
- directed to the invention rather than the disclosure as a whole

Front 104

If application is otherwise in condition for allowance but abstract does not comply with guidelines?

Back 104

Examiner should make necessary revisions by Examiner's amendment

Front 105

What should be submitted to PTO on CD?
What can be submitted to PTO on CD?

Back 105

Must be on CD - computer program listing that is more than 300 lines

Can be on CD - computer program listing that is 300 lines or less, and tables that are over 50 pages long

note - if anything is submitted on a CD, a duplicate CD must also be submitted

Front 106

If IDS is submitted which is a bona fide attempt to comply with requirements but some information was inadvertently left off...

Back 106

Additional time can be given to enable full compliance

Front 107

Does IDS represent that diligent search has been done or that information is material to patentability?

Back 107

No to both

Front 108

When does IDS have to be submitted after filing RCE?

Back 108

Before the first Office Action

Front 109

When does third party prior art submission have to be filed?

Back 109

Within the earlier of 2 months after publication of the application and the mailing of the notice of allowance

(if submitted later, only entered if the prior art could not have been submitted earlier, and processing fee included with regular submission fee)

Front 110

Does applicant need to be served with prior art submitted by third party?

Back 110

Yes

Front 111

When is interview prior to first office action proper?

Back 111

In substitute or continuing application

Front 112

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

Back 112

1 - arguing that the claims are distinguishable over prior art.
2 - filing a 1.132 affidavit or declaration showing that reference is not by another
3 - filing a 1.131 affidavit or declaration showing prior invention (as long as reference is not US patent claiming same invention or obvious variation of same invention, or foreign patent claiming same invention that was issued before US app filed, or foreign application for same invention that was filed more than 12 months before US app)

4 - for provisional 102(e) rejection, can file CIP with subject matter of both applications

Front 113

What is necessary for Office to grant a request for a no cause request for suspension of action?

Back 113

- must be filed with an RCE or CPA
- if with an RCE, the RCE fee must be paid and a submission for RCE must be filed (the request for suspension cannot be the submission)
- if with CPA, the CPA must be entitled to get a filing date (fee for CPA can be filed late and request will still be processed - applicant will get notice of missing parts for CPA)

Front 114

What are the requirements for a reference to be prior art under 102(d)?

Back 114

1 - a foreign application was filed more than 12 months before effective U.S. filing date

2 - the foreign application was filed by the same applicant as in U.S. application / legal heirs / assigns
3 - foreign patent or inventor's certificate was granted before the U.S. filing date
4 - U.S. application and foreign patent are for same invention

Front 115

When should claims be rejected under 135(b)?

Back 115

when:
1- an issued patent claims the same invention as the application and
2- the patent was issued 1 year or more before the claims were presented in the application

(note - if claims that were for substantially the same matter were presented in the application within 1 year of the patent issuance, an interference should be declared)

Front 116

When should an interference be declared under 135(b)?

Back 116

When:
1 - claims are presented in application less than one year from issuance of patent claiming same invention OR
2 - claims are presented in application that are directed to substantially the same matter as claims presented less than 1 year from issuance of patent claiming same invention

Front 117

When can applicant consolidate previous versions of pending claims?

Back 117

can consolidate all previous versions of pending claims into a single clean version in a single amendment paper at any time during prosecution

(note - entire clean claim set is subject to 1.116(b) and 1.312)

Front 118

The AIPA amended 102(e) such that U.S. patents, U.S. published applications, and certain international applications can be used as prior art under 102(e) based on their earliest effective filing date against . . .

Back 118

1 - applications filed on/after 11/29/2000 and
2 - applications filed before 11/29/2000 that have been voluntarily published

Front 119

When is a magazine effective as prior art under 102(b)?

Back 119

As of the date it reached the addressee (not the date it was placed in the mail)

Front 120

Is terminated interference proceeding involving an issued patent and a pending patent application open to public for inspection and copying?

Back 120

yes

Front 121

When should change of inventorship be by petition for certificate of correction instead of reissue?

Back 121

when:
1 - changing inventorship is the only issue and
2 - all parties are in agreement and inventorship is not contested

Front 122

Is an assignment of an abandoned non-reissue application open to public inspection if the application is referred to in an assignment covering a multiple applications, one of which is issued?

Back 122

Yes

Front 123

Does an assignment of an application carry over to a continuation in part of the application?

Back 123

No - a new assignment is needed in order to have patent issued to the assignee

Front 124

When will the Commissioner usually grant a request to withdraw from representation?

Back 124

When there is at least 30 days remaining before the last possible date for response to an outstanding action in the client's application.

Front 125

If notice of allowance is issued and the inventor subsequently dies, what will happen to the application if the fees are paid but the executor/administrator does not intervene?

Back 125

it will still issue as a patent

Front 126

Can patent agents accept cases on contingency?

Back 126

Yes, as long as the contingency fee is reasonable

Front 127

For a preliminary amendment filed with an application and adding new subject matter, what is needed to have the matter considered part of the original application?

Back 127

An oath/declaration (or supplementary oath/declaration) referring to the preliminary amendment

Front 128

If a nonprovisional application is filed in a foreign language, will it be given a filing date?

Back 128

Yes

Front 129

If examiner objects to incorporation by reference into a specification as being improper, how should applicant respond?

Back 129

1 - amend the specification to include the incorporated material and
2 - state in amendment / file affidavit that the material added to the specification is all within the material originally incorporated by reference

Front 130

Can design application and utility application be subject to double patenting rejection?

Back 130

Yes

Front 131

When is a provisional 102(e)/103 rejection permitted?

Back 131

- 2 applications are copending
- they have different inventive entities
- they have different filing dates
- applications have a common assignee or inventor

Front 132

If BPAI remands rejection to the examiner, how can applicant extend time to reply set by BPAI?

Back 132

Extension under 1.136(b) - request must be by petition establishing sufficient cause

Front 133

Extension under 1.136(b)...

Back 133

- must be by petition showing sufficient cause
- no fee needed
- extension can't extend time period beyond statutory six months

Front 134

What is a petition to defer issuance?

Back 134

- petition can be filed after the issue fee is paid
- issuance can be deferred for up to one month
- need extraordinary circumstances shown

Front 135

What is petition for withdrawal from issue after issue fee paid?

Back 135

1 - by PTO - mistake by office, violation of duty to disclose, unpatentability of one or more claims, or interference
2 - by applicant - need fee and petition for
- abandonment to consider an IDS in a continuation or RCE, or
- unpatentability of claim - need a statement saying which are unpatentable, including an amendment, and explaining how the amended claims are now patentable

Front 136

What is petition for withdrawal from issue before issue fee is paid?

Back 136

Prior to payment of issue fee:
- need petition showing good and sufficient reason

Front 137

Are maintenance fees owed on plant patents?

Back 137

No

Front 138

What is the patent term for design patents?

Back 138

14 years from patent grant

Front 139

What are the requirements for patentability of plants?

Back 139

1 - must be discovered or invented in a cultivated state
2 - must be asexually reproduced initially (i.e., not from seeds)
3 - cannot be a bacteria or tuber plant

Front 140

What drawings must be filed in plant applications?

Back 140

two copies of color drawings/photos and one black and white copy of the color drawings/photos

Front 141

What must be submitted to get status of a patent application based on a patent document (published or open for public inspection)?

Back 141

1 - written request
2 - copy of the patent document
(but no fee required)

Front 142

What documents in an international application where the US is the IPEA are available to the public?

Back 142

Upon paying a fee, copies of any document in the file

Front 143

How long does a secrecy order remain in effect for?

Back 143

one year

Front 144

If an international application is subject to secrecy order, does the IB get a copy of the application?

Back 144

No, for as long as the secrecy order is in effect

Front 145

If material subject to secrecy order is revealed to person in foreign country, what must be done?

Back 145

Do not tell person of secrecy order but notify the Assistant commissioner

Front 146

Can a petition to revive an unintentionally/unavoidably abandoned application be filed where there was an outstanding office action?

Back 146

Yes, but the petition must be accompanied by a response to the outstanding action or by a continuation application

Front 147

If the BPAI makes a new rejection, what options does the applicant have?

Back 147

1 - submit amendment or showing of facts and have examiner reconsider the matter within the period set by the BPAI in its decision (if examiner rejects, applicant can appeal again) or
2 - ask for reconsideration by BPAI of BPAI decision

Front 148

If the BPAI remands the application to the examiner in whole or part, what options does the applicant have?

What can the examiner do?

Back 148

Examiner can file a supplemental examiner's answer

applicant can -
1 - reopen prosecution or
2 - file a Reply Brief

Front 149

How long after the BPAI decision can applicant request rehearing by the BPAI?

Back 149

2 months (extensions must be for cause)

Front 150

Do design patents require maintenance fees?

Back 150

No

Front 151

When is a foreign filing license required?

Back 151

If invention was made in the US

Front 152

How can a retroactive foreign filing license be obtained?

Back 152

File petition with
1 - listing of each foreign country where application was filed
2 - dates of filing in each country
3 - fee
4- oath/declaration with
- averment that the SJM was not under a secrecy order when filed in foreign countries,
- that SJM is not currently under secrecy order
- showing of diligence after discovery of foreign filing and seeking license
- explanation of why the material was filed in foreign countries through error and w/o deceptive intent even though no license was obtained

Front 153

When will protest be considered by the examiner?

Back 153

if given:
1 - copies of references and list of references
2 - translations of non-english portions
3 - concise explanations of relevance

Front 154

Are automatic extensions available in reissues? in reexamination?

Back 154

Reissues - Yes

Reexaminations - No

Front 155

If an application by X and Y is rejected under 102(e) based on an application to X, what must be shown to have reference removed as applicant's own work?

Back 155

prove that the invention by X and Y was made first, then was described in X's application or patent, and then X and Y's application was filed.

Front 156

Can a divisional have a different inventive entity than parent?

Back 156

Yes, (i.e., different inventive entities but a common inventor)

Front 157

Can access to a pending unpublished application that is incorporated by reference into an issued patent be obtained without notice to patent owner?

Back 157

No, only a copy of the application as filed can be obtained
(petition, service, and fee needed to access file of pending unpublished application)

Front 158

How can assignee or party to which there is obligation to assign file an application if the inventor refuses to do it?

Back 158

party can make application on behalf of inventor with proof of the pertinent facts and showing that it is necessary to preserve the party's rights

note - only applies if all inventors unavailable or refuse to sign

Front 159

What is the deadline for converting a nonprovisional application into a provisional?

Back 159

must be done before the earliest of:
1 - abandonment of the nonprovisional
2 - payment of the issue fee
3 - 2 months after filing date of the nonprovisional and
4 - filing request for statutory invention registration

Front 160

Can an International application claim priority to an application that was filed within the past 12 months and has issued as a patent already?

Back 160

Yes

Front 161

When is an extension available to respond to a first office action in reexamination?

Back 161

Will be granted for sufficient cause and for a reasonable time specified

Front 162

Is an oral hearing in appeal for a patent under reexamination open to the public?

Back 162

Yes, unless the patent owner was granted a request for a hearing closed to the public

Front 163

How can a denial of a request for reexamination be reviewed?

Back 163

By petition to the Commissioner within 1 month of the mailing date of denial

Front 164

How can prior art be made of record in an issued patent?

Back 164

Provide a citation to the art in writing with a statement of pertinency of the art to patentability of claim(s) in the patent
(note - do not need to file a request for reexamination)

Front 165

If an application filed in a foreign country has a less extensive disclosure than a subsequent U.S. application...

Back 165

Applicant can submit a redacted copy with the disclosure limited to what is in the foreign application within 16 months after the foreign priority date

Front 166

Can a resident alien prosecute an application?

Back 166

Can be given limited recognition to prosecute a specific application upon showing of circumstances that it is necessary/justifiable

Front 167

Can a certificate of merger be recorded with the PTO?

Back 167

Yes

Front 168

Does a certified copy of the foreign priority application need to be filed in a continuation/divisional/CIP application?

Back 168

If the certified copy of the foreign application was filed in the parent, the claim in the child application can simply reference the parent instead of resubmitting a certified copy

Front 169

When can an interview after final rejection be held without paying for an extension of the 3 month shortened period for response?

Back 169

It can be after the 3 month period is over, but must be before the 6 month statutory period is over.

Front 170

What is the date by which a provisional can be converted into a nonprovisional application?

Back 170

12 months from filing (even if it was originally a provisional application which was converted into a nonprovisional application)

Front 171

Does a long period of delay constitute abandonment of an invention under 102(c)?

Back 171

No - must show an intent to abandon

Front 172

if an application is on appeal and applicant would like to amend claims with new limitations / add new claims that are supported in the specification, what is the best way to do so?

what about to amend claims with limitations that make them variations of claims on appeal?

Back 172

new claims/limitations - File a continuation application with the amended claims

variations of claims on appeal - can file RCE

(note - a petition to return the application to the examiner to consider new claims will likely not be effective because the amendments will raise new issues and will not be entered)

Front 173

What is the term of a patent filed under PCT?

Back 173

20 years from International filing date

Front 174

If applicant unintentionally failed to file a divisional application during pendency, after issuance can a reissue be filed to claim divisional material?

Back 174

Yes, unclaimed other inventions / species can be claimed on reissue

Front 175

Can trademarks / trade names be used in patent claims?

Back 175

Yes, TMs are not improper per se but they cannot be used to identify / describe a particular material or product in a limitation

Front 176

If a notice of appeal is filed using proper Express mailing procedure, when is the appeal brief due?

Back 176

2 months from the USPS mail in date

Front 177

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

Back 177

either by
1 - in same manner that a 102(e) rejection can be overcome or
2 - abandoning the applications and filing a new application containing the subject matter of both (continuation or CIP)

Front 178

Does Citation of Prior Art for an issued patent require payment of a fee?

Back 178

No, it just requires service on the patent owner

Front 179

If an Examiners amendment is to be made after the shortened statutory period expires, does the applicant need to pay for extension?

Back 179

Yes

Front 180

Can new inventors be added in a CPA application?
in a continuing application under 1.53(b)?

Back 180

CPA - No

1.53(b) - Yes

Front 181

If a PCT Application designates the US, can a continuing US application be filed prior to entering the national stage?

Back 181

Yes

Front 182

Can designs which simulate well known or naturally occurring objects or persons be patented?

Back 182

No

Front 183

if a certificate of mailing is properly used, when will the certificate of mailing date be used by the PTO?

Back 183

Only if the paper is not actually received in the period for reply

Front 184

Can a person who has been suspended from practice before the PTO still work with practitioners?

Back 184

Yes, but only as a paralegal, and he cannot work directly with clients or meet with any of them (even in the presence of another practitioner)

Front 185

If prior art discloses a claimed composition, does the prior art have to disclose the use for the compound to be enabling?

Back 185

No

Front 186

To correct the erroneous claiming of small entity status, is it necessary to submit statement that error was in good faith?

Back 186

No

Front 187

is a sculpture proper subject matter for a design patent?

Back 187

No, because it's not an article of manufacture

Front 188

Can the examiner reopen prosecution after the applicant has filed an appeal brief?

Back 188

Yes - with approval from supervisory examiner the examiner can reopen prosecution to enter new ground of rejection after appellant's brief or reply brief has been filed

Front 189

If the examiner reopens prosecution after appeal brief or reply brief, what does applicant have to do?

Back 189

Either -
1 - respond to the office action or
2 - request reinstatement of the appeal, along with a supplemental appeal brief (or supplemental reply brief)

Front 190

If an International Application designates the US, who must be named as applicant?

Back 190

At least one inventor

Front 191

Does an oath have to be filed when an International application is filed?

Back 191

No

Front 192

Is the examiner's decision granting a request for reexamination appealable or petitionable?

Back 192

No

Front 193

Who will decide a petition to the Commissioner when the examiner has refused to enter an amendment?

Back 193

the Group Director

Front 194

If a nonprovisional application is filed in a foreign language and the translation is later submitted in response to a notice for missing parts, what is required in the response with the translation?

Back 194

- statement that the translation is accurate
- complete identifying data in order to associate the submission with the application
- a signed request by the applicant/attorney/agent that the translation be used as the copy for examination purposes,
- fee

Front 195

When is a means plus function claim subject to an undue breadth rejection under 112 paragraph 1?

Back 195

If it is a "single means" claim (a means that is not connected with other recited means element)

Front 196

How can an applicant ensure that a redacted copy of an application will be the one published?

Back 196

Submit a redacted copy for publication via EFS within 16 months

Front 197

What is the date of eligibility for PTA?
What is the date of eligibility for PTE?

Back 197

PTA - applications filed on or after May 29, 2000

PTE - applications filed between June 8, 1995 and May 28, 2000

Front 198

Does PTA include PTO delays in responding to amendments?

Does PTE include PTO delays in responding to amendments

Back 198

PTA - yes

PTO - no

Front 199

When can PTA calculation be contested?

Back 199

At time of issue fee, and then within 180 days of patent issuance

Front 200

When can a nonpublication request be rescinded?

Back 200

At any time

Front 201

Can an applicant stop publication in the months prior to 18 months?

Back 201

Yes, by expressly abandoning application, filing Petition to Stop publication, and paying fee

Front 202

If a restriction was made in an application that issued as a patent, can a reissue be filed to claim the unelected invention/claims?

Back 202

No (only allowed to use reissue to fix the fact that a divisional wasn't filed if there was no restriction requirement)

Front 203

if international application is filed in U.S. Receiving Office on sept. 9, 2002, which of the following will result in the application not being accorded an international filing date of sept. 9, 2002?

A.description and claims are in German.
B. Request is signed by registered attorney rather than the applicant.
C. The sole applicant is a Canadian resident and national.
D. The application does not contain a claim.
E. The application is not accompanied by any fees.

Back 203

D

Front 204

If International application is filed in U.S. receiving office in foreign language or by an applicant who is not a U.S. citizen or resident, what is the result?

Back 204

Application is forwarded to IB, but it still gets the same filing date

Front 205

Papers that cannot be filed by fax

Back 205

- applications (except CPAs)
- any certified document
- international application
- correspondence relating to OED registration to practice
- correspondence in interference directed to be filed by hand
- papers in application under secrecy order that are related to secrecy content of application

Front 206

things you can do without paying a fee

Back 206

- file a protest
- file petition to make special for illness, environment, energy, age, superconductivity, or counter-terrorism
- timely file OA response or IDS
- citation of prior art under 35 USC 301
- supplemental declaration or amendment
- conduct an interview
- comments in response to examiner's reasons for allowance

Front 207

What can certificate of mailing not be used in?

Back 207

- new applications (both 1.53(b) and (d))
- papers in interference directed to be filed by hand
- agreements settling interference
- any PCT papers