1300 - Allowance and Issue Flashcards
How to withdraw an application from issue before paying issue fee
before you pay issue fee via petition showing of good/sufficient reasons + fee. Or file continuation.
How to withdraw an application from issue after paying issue fee
USPTO withdraws: mistake, violation of duty to disclose, unpatentability of a claim, interference
Applicant withdraws: abandonment to get an IDS in a RCE or continuing app, or unpatentability of a claim (must include a statatement of which and why)
Can you get an extension for paying an issue fee?
No
When can the term of a patent be extended?
Patent terms may be extended for delays based on interferences, secrecy orders, etc.
When is the issue fee due? What is due along with the issue fee?
After a Notice of Allowance is sent, the applicant has 3 months to pay the issue fee and provide formal drawings. This cannot be extended, but the applicant can pay late with a petition and fee.
Can the examiner cancel claims at allowance?
At the time of allowance, Examiner can cancel invalid claims.
Issues with the applicant challenging the reasons for allowance
file wrapper estoppel may prevent an applicant from raising challenges to these reasons in the future if not raised immediately.
How and for how long can you defer issuance?
can be deferred after issue fee has been paid. Can’t be more than one month, except for really really exceptional circumstances that you can petition for.
How long is the term of a patent? Utility, Design, PCT
Utility, PCT: 20 years
Design: 14 years
Patent Term Adjustment: What can it apply to? How do you get it? When does is it calculated?
This is an automatic feature to provide relief to applicants applying in backlogged areas of technical fields, etc.
Springs into existence for Certain administrative delays (14/4/4/4)
Overall pendency from initial filing to issue of more than 3 years, not including RCE time consumed, secrecy order, interference, appellate review, applicant-requested delays.
Delays due to interferences, secrecy orders, and successful appeals.
PTA can be reduced by the applicant’s delay
There is no entitlement to a parent app’s PTA
PTA will be calculated after paying issue fee, and can be petitioned within two months of the patent grant.
Only the longest delay cntrols.
Do patent term extensions and adjustments apply to utility patents, design patents?
Only utility, not design
Can a provisional application publication date be used for infringement damage calculation?
Yes, if an app is published, then the applicant has the right to reasonable royalties between the date of publication and the date of patent grant if
- Provided actual notice to the liable entity of publication
- Patent claims are substantially similar to published app’s.
When do publication fees apply and when are they charged?
Only collected if the app is not abandoned
Is charged after notice of allowance is mailed, unless there’s prior publication (voluntary, earlier, republication), since publications aren’t required by law.
