MPEP 700 Flashcards
If reply due date falls on Saturday/Sunday/Holiday, the due date:
is next working day
Automatic extensions of time CAN be obtained:
before, on, and after reply due date (retroactive) but NOT past 6 month deadline
After final rejection, you can _______ claims but
you cannot __________ claims
cancel
substantively amend
The issue fee is due within _ months and
______ be extended
3
extended
To obtain a filing date, the minimum required is:
spec
claim
Drawing
Preliminary amendments MAY add ______ but
may NOT add _________
new claims
new matter
Preliminary amendments MAY be filed ______ but
may NOT be filed _________
with the application
after First Office Action
In order to perfect ownership of a patent, it is necessary to record within:
three months
In order to perfect ownership of a patent, there must be:
valuable consideration; e.g. something of value must have been exchanged, NOT a gift
Applications “deemed published” under CFR 122(b) are _____ and ______:
and are not:
US applications at 18 months from filing date; or
US-designated WIPO published applications
Foreign published applications
Regardless of whether a demand is made for examination prior to the ____ month, the PCT deadline to enter the national phase remains ____ months.
19th
30
RCE is NOT available for:
(A) provisional applications;
(B) before June 8, 1995;
(C) design applications;
(F) reexamination.
RCE is available during which part of examination?
RCE is available after what date?
After final rejection in utility and plant applications filed after June 8, 1995, but before payment of issue fee, abandonment, or appeal
The design equivalent of an RCE is a:
CPA
After final rejection, you have ____ months to determine fate of the app
6 - 3 free, 3 fee (automatically extendable)
Petition to Make Special is available _________
and is free for ________
but requires a fee for ________
before August 25, 2006
Illness, environment, Energy, Age, Counterterrorism
a. infringement, safer DNA, for the asking
b. HIV/AIDS research
c. Superconductivity
d. Biotech by small entity
After _______ PMS becomes _______
August 25, 2006
Accelerated Examination
To be granted Accelerated Exam status, applications must:
be filed with petition, fee (free for environment, conservation of energy, or counterterrorism), and all oath/decs
be a utility or design app
be filed with EFS
contain 3 or fewer indp claims, AND 20 or fewer total claims, AND no multiple dependent claims
have a preexam search statement by applicant
Accelerated Exam is NOT available for:
plant patents Reissue apps National stage IA reexam RCEs PMS
After _____ AE becomes _______
September 16, 2011
Prioritized Examination
To be eligible for Prioritized Exam, app must be:
nonprovisional utility or plant app or RCE
filed with all search and exam fees
filed after September 16, 2011
no more than 4 ind, 30 total, and no mult dep claims
The special “Two Month Rule” after Final Rejection is:
If a response to a FR is filed w/in 2 months from mailing date AND Office does not mail an advisory action until AFTER the end of three month period for response, abandonment date will be extended until the AA is mailed OR 6 month period expires, whichever is FIRST
After _______, the time limit to revive an unintentional abandonment is _______ but before that date, the time limit was _______:
December 18, 2013
no time limit
1 year
An interview after first action is ________ while
an interview after final rejection is _________
a matter of right
at examiners discretion
The responsibility to make sure the interview is recorded belongs to:
The attorney
Proper amendment markup in an application is that additions are __________ and deletions are ________ unless it is small, then ________ are used
Underlined
Struckthrough
[[Double-brackets]]
An application may enter PPH when:
(1) The participating application must have the same priority or filing date as that of a corresponding application filed another office (OEE)
(2) The application has at least one allowable claim
(3) All claims in the participating application must sufficiently correspond to the allowable claims in the corresponding OEE application.
(4) Substantive examination of the U.S. application for which participation in the PPH is requested has not begun.
In order to participate in the PPH the applicant must submit the following to the USPTO:
(1) A request for participation into the PPH program
(2) A claims correspondence table in English.
(3) A copy of the most recent office action from the OEE, or the latest work product in the OEE PCT application, along with an English translation of either. [2]
(4) An information disclosure statement (IDS) listing the documents cited in the office action, along with copies of all non-US documents.
A claim is considered to sufficiently correspond when:
the claim is of the same or similar scope as an allowable claim in the OEE application.
A claim that is narrower in scope than one deemed allowable in the OEE application will sufficiently correspond if:
it is a dependent claim that is of the same or similar scope as an allowable claim in the OEE application.
A claim that introduces a new category of claims than those indicated as allowable by the OEE is:
not considered to sufficiently correspond.
The three ways to accelerate an application at the USPTO are:
(1) Accelerated Examination; (post 8/2006)
(2) Prioritized Examination (i.e., Track One, post 9/2011); and
(3) Petitions to Make Special (prior to 8/2006)
You can suspend action on an application if 3 conditions are met:
(1) There is no outstanding office action
(2) You submit a for cause petition and fee
(3) you can’t suspend for longer than 6 months
(709)
Prioritized examinations that are not complete on the day they are submitted will be:
dismissed
The major differences between
(1) Petitions to Make Special
(2) Accelerated Examination
(3) Prioritized Examination
are:
(1) Simple, straightforward, pre-8/2006
(2) higher hurdles, post-8/2006, some free, mostly with fee, must be in order
(3) Major fee, jump to head of line, must be in order
The following due dates cannot be extended EVEN FOR CAUSE:
(1) IDSs
(2) statue (e.g. 6 month reply deadlines)
(3) Issue fee (but can be paid late)
The following due dates cannot be automatically extended:
(1) Where OA states
(2) Reply Brief
(3) Request for oral hearing in appeal
(4) Responding to board decision
(5) Interference
(6) reexam
requests for interview prior to the first Office action are
ordinarily granted in____________
whereas requests for interview before the first action in all other applications are _________
continuing and substitute applications
untimely and will not be acknowledged
RCE
vs
Continuation
An RCE is a request to continue the same examination after final action. Same application, same search, same SN, same priority, same filing date.
Continuation is in effect a new application. You get a new Ser. No., a new filing date (but same priority as before), and a new search is done. You are free to fully rewrite your claims even for completely different subject matter.
A patent examiner ______ conduct an interview with any registered practitioner who shows up with a file.
WILL
The interview will be conducted with the file brought by the registered practitioner.
A petition is ______ if a RCE is filed prior to payment of the issue fee.
not required
An AIA 102a2 rejection may be made if there is ________ to inventive entity;
ANY change;
meaning if a coinventer is added, it is now a 102a2 rejections
What must a PCT application do to be considered “deemed published” within the meaning of 102(a)(2)?
designate the U.S. ONLY
