Chapter 700 Flashcards
For proper examination of application, who can the examiner or other Office employees require information from?
any inventor named in the application
any assignee
any attorney or agent who prepares or prosecutes the application
every other person who is substantively involved in preparation or prosecution of the application
who is associated with the inventor
involved in the preparation or prosecution of the application
who is associated with the inventor, the assignee, or with anyone to whom there is an obligation to assign the application
What type of information can be requested for proper examination of the application?
scope of information is broad and includes anything reasonably necessary and the applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested
What are the requirements of patentability?
novelty - 35 USC 102
usefulness - 35 USC 101
non-obviousness - 35 USC 103
requirements of disclosure: written description, enablement, best mode
What is the difference between rejection and objection of claims?
rejection is a refusal to grant claims because the subject matter as claimed is considered unpatentable. Is subject to review by the Board
objection is when the form of the claim is improper (i.e. dependency on rejected independent claim). Is reviewed by petition only
What is 35 USC 102 and when does it take effect?
Novelty standard. If the claim is anticipated by reference, then it is rejected under 102
Only applies to applications with the EFD on or after March 16, 2013
What is 35 USC 103?
Non-obviousness standard. If the prior art’s teachings must somehow be modified (obvious to POSITA) in order to cover the claims, then it is rejected under 103
What is prior art?
information available to the public before the EFD of a patent application
What prior art is used reject claims?
If the prior art teaches, suggests, or implies the invention as defined by the claims of a pending patent application
Also, a statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” whether or not it would otherwise qualify as prior art
How to obtain an effective filing date?
If not priority claiming, then the EFD is the filing date of the application
For continuation, divisional to an earlier application (including international), then the EFD is the same as the earliest filing date in line of continuation or divisional applications
For continuation-in-part of an earlier application, any new claims in the application would have the EFD equal to the filing date of the CIP application. Any claims fully supported in the parent application will have an EFD of earlier parent application
To claim priority to an earlier foreign or provisional application, the claim must be made within 12 months of the first application’s filing date
What is 35 USC 102(b)?
If the publication date of the reference is more than 1 year prior to the EFD of the application and the reference contains each and every element of the claims, it is rejected under 35 USC 102(b)
It sets forth the “public use” and “on-sale” statutory bars which discourage the removal of inventions from the public domain which the public justifiably comes to believe are freely available
“bar” to patentability if satisfied, and there is nothing applicant can do to overcome the rejection.
Therefore, the applicant must cancel or amend the rejected claim to cover different subject matter
What is 35 USC 102(e)?
If the publication date of the reference is within 1 year of EFD, (falls within grace period) and the inventive entity of the application is different than that of a patent reference. And, the claims are rejected baed on subject matter disclosed in US patents, US patent applications, WIPO publications of international applications as of their EFD
What is 35 USC 102(a)?
Rejection solely due to printed publications and the reference occurs within 1 year of application’s EFD and must not be applicants work or derived from the applicant’s own work
What is 35 USC 102(c)?
Rejection of patent for abandonment
The Patent Office must show actual abandonment which requires deliberate surrender of patent rights that amounts to the inventor dedicating his invention to the public
What is 35 USC 102(d)?
If all of these conditions are met, then patent will be rejected:
- a foreign application must be filed more than 12 months before the EFD of the US application
- the foreign and US applications must be filed by the same applicant, his legal representative, or assignee
- the foreign application must have actually issued as a patent or inventor’s certificate before the filing in the US
- same invention must be involved
What is 35 USC 102(f)?
Rejected if the applicant did not invent the subject matter sought to be patented
If the applicant derived the invention from the true inventor, a complete conception by another and communication of conception is requried
What is 35 USC 102(g)?
Rejection due to another made the invention in the US before the applicant and had not abandoned, suppressed, or concealed it
What is 35 USC 102(g)(1)?
Interference - a Patent Office proceeding between 2 or more applicants to determine which of the applicants is entitled to priority
During interference, the Board has jurisdiction until it’s terminated
How are interferences terminated?
after a final Board judgment in the interference and the period seeking judicial review has expired (generally 2 months after decision)
after completion of judicial review
What is 35 USC 102(g)(2)?
Rejection f there is evidence indicating that the subject matter at issue has been actually reduced to practice by another before the applicant’s invention and there has been no abandonment, suppression, or concealment by the other party
What are the types of reduction to practice?
constructive reduction to practice - occurs when an applicant filed patent application covering the invention
actual reduction to practice - the party constructed a physical embodiment of the invention or performed the inventive process, and the embodiment or process operated of its intended purpose
What is 35 USC 103?
Non-obviousness requirement for patent protection
Authorizes a rejection when the claimed invention is obvious in light of 1 or more prior art references (to POSITA)
What is Teaching Suggestion Motivation (TSM) Test?
It is a guideline that remain the foundation of any determination of obviousness
- there must be some suggestion or teaching in the prior art to combine elements in the prior art in order to find a patent claim obvious
- simply locating the elements in the prior references is not enough to issue an obviousness rejection
- the examiner must also identify some motivation to combine the 2 prior art references
- only after the examiner identifies some teaching, suggestion, or motivation to combine the 2 prior art reference may the examiner issue an obviousness rejection