MPEP 700 (Examination), 800 (restriction, double patenting), 1200 (Appeal), & 2100 (patentability) Flashcards
Under pre-AIA §102(b), the grace period refers to offers for sale in the U.S., NAFTA, or WTO countries. Does the sale actually have to take place?
No.
What is the relevant date for pre-AIA §102(a)?
Date of invention.
What is the relevant date for pre-AIA §102(b)?
Date filing date.
“A person shall be entitled to a patent unless … (b)the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”
When can an office action be made Final?
Second or any subsequent actions on the merits shall be final. The final rejection can introduce a new ground of rejection that is necessitated by applicant’s amendment of the claims, or based on information submitted in an information disclosure statement
MPEP 706.07(a)
If an office action includes a new ground of rejection, can the examiner make it a Final rejection?
Only when the rejection is necessitated by applicant’s action or information submitted in an IPR.
How should you respond if the examiner improperly makes an action Final?
Final Rejection, Premature. 706.07(c), which refers to a petition per MPEP 1002.02(c), which lists Petitions and Requests Decided by the Technology Center Directors.
Why not just merely respond to a Final office action with arguments that you think will put some claims in condition for allowance?
Examiner might not agree, and has no obligation to enter amendments or respond within six month window set by Final action. So application could go abandoned.
What office actions can be appealed? Which cannot?
“A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of “twice rejected” does not have to be related to a particular application.” That is, could be in a parent and continuation.
MPEP 1204.
What is the two month rule regarding Final office actions?
Filing a response within two months extends the free response period (no extension fee) to be the mailing date of the advisory action, or at end of 3rd month, whichever is later. Extensions computed from this date.
Six month rule still applies.
An application filed on or after this date will be examiner under AIA rules.
March 16, 2013.
Say a CIP is filed on/after March 16 2013, and its parent was filed before March 16, 2013. One of the claims is based on the material filed on/after March 16, 2013. How will the claims be examined?
Under new §102.
Name the four categories of patentable subject matter under §101.
- process/method
- machine (collection of elements)
- manufacture (something made from raw materials by hand or by machinery)
- composition of matter
Petitions to make special: Which reasons are free?
S.E.A. I.C.E. Super conductivity Energy Age Illness Countering Terrorism Environment
In what circumstances can you not petition for a Suspension of Action?
When an action is outstanding. MPEP 709. Rule 1.103.
What is the maximum length of a Suspension of Action?
Six months. MPEP 709. Rule 103(a).
What is a no-cause Suspension of Action and what is maximum duration?
One submitted with a CPA transmittal documents (design) or an RCE.
maximum duration: 3 months.
MPEP 709. Rule 1.103.
Say you want to suspend action, but have an outstanding action from the PTO, such as an office action. What’s a way out?
File a continuation with a petition to suspend for six months.
time period to reply: What is the maximum length of an automatic extension of time period to reply (no cause required)?
Five months. MPEP 710, Rule 1.136(a).
time period to reply: What is the maximum allowable time for reply to Official Actions?
Six months - a statutory time limit. 35 U.S.C. §133.
time period to reply: For which responses is the maximum time period of reply longer than the maximum time allowed for an office action?
Response to a Notice to File Missing Parts (2+5 months)
Filing an appeal brief (2+5 months)
Name five circumstances can an automatic extension not be obtained? Or just name where you can find this.
i. Where the Office Action so states;
ii. A Reply Brief
iii. A request for an oral hearing in an Appeal;
iv. Responding to a decision of the Board;
v. Application is involved in an interference, derivation
Rule 1.136(a)
For what can due dates not be extended, even with cause?
FIIS
Fee refunds - three month deadline for a fee refund (e.g., small entity)
IDS submission
Issue fee
Statutory deadlines (6 month deadline for Office Action reply.)
For prioritized applications, what should you avoid when responding to an Office Action if you want to keep priority status?
- File a petition requesting an extension of time to reply.
- Amending claims such that there are 5 or more independent claims, more than 30 total claims, or a multiple dependent claim.
- File a request RCE or an appeal.
Some reply periods for office action responses are not automatically extendable with a petition and fee. Where are these listed?
Rule §1.136 (a). Otherwise need to show cause.
What is the “two month rule” regarding responding to a Final Office Action?
“if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later.”
A Restriction Requirement is issued December 30 2018. When is the two month deadline?
Feb. 28.
(1 day Dec)+(31 days in Jan) = 32. So 28 days in Feb. gets you to 60.
After an examiner interview, is it sufficient for the Examiner do complete an Applicant-Initiated Interview summary?
No. “For an applicant-initiated interview, it is the responsibility of the applicant to make the substance of the interview of record in the application file.” MPEP 713.03
What may cause a preliminary amendment not to be entered?
Interferes with examination.
Not filed within 3 months of filing.
MPEP 702.01
Amendments after allowance: What should the Remarks state?
(A) why the amendment is needed; (B) why the proposed amended or new claims require no additional search or examination; (C) why the claims are patentable; and (D) why they were not presented earlier. MPEP 714.16, Rule 1.312.
Amendments after allowance: When are they acceptable?
Both (A) needed for proper disclosure or protection of the invention, and
(B) require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner. MPEP 714.16.
(a) The reply to an Office action with a 3-month shortened statutory period dated November 30 is due on __________.
(b) A reply to an Office action dated February 28 is due on ____.
(a) February 28 (or 29 if it is a leap year),
(b) May 28 and not on the last day of May.
MPEP 710.01
An Office Action is dated November 30, with a three month shortened statutory period. When is it due, w/o incurring a fee?
Feb. 28. If a leap year, then Feb. 29. MPEP 710.01(a).
“applicant’s reply is due on the corresponding day of
the month 6 months or any lesser number of months
specified after the Office action.”
An Office Action is dated January 31. When is the three-month deadline? When is the deadline if you take a one-month extension?
April 30. (There is no April 31, so go back to last day of month)
With one-month extension: May 31. MPEP 710.01(a). “A 1-month extension of time extends the time for reply to the date corresponding to the Office action date in the following month. “
For final office actions, what is the relationship between extensions of time and Examiner’s Amendments?
After a Final Rejection, an Examiner’s Amendment (except for correcting informalities) is
treated like an amendment from the applicant as far as necessary extensions (extension fees) are concerned.
MPEP 706.07(f)
What is a pre-AIA §102(e) date for cited art?
Only for published U.S. applications or issued U.S. patents – it’s the reference’s earliest effective filing date.
Can you swear behind a reference that claims the same invention? (declaration under rule 1.131, pre-AIA only)
No. Then there’s an interference issue. The reference can disclose only, not claim.
Pre-AIA §102(a), to be prior art, any knowledge or use must be ______________.
In the United States.
Pre-AIA §102(a): All acts defining prior art must be _________.
by another, before date of invention. “You weren’t first.”
The “on sale” of §102(a) must be an offer to sell ________.
the invention. Not rights to the invention, or a license.
§102(c) refers to _____________.
§102(c): Common ownership, joint research agreements.
What is the effective filing date per §102(d)?
The Effective Filing Date of a published or issued U.S. application, or PCT, is:
102(d)(1) -The effective filing date is the actual filing date of the application, unless
102(d)(2) - there is a valid claim for priority; then the priority date is the effective filing date.
MPEP 2154.01(b)
What types of publications can qualify as §102(d) prior art?
published or issued U.S. application, or PCT
Under §102(a)(2), a U.S. patent or publication is prior art as of __________________.
Under §102(a)(2), a U.S. patent or US/WIPO publication is prior art as of: Its earliest effective filing date anywhere in the world.
Disqualification of Prior Art is done by filing a declaration or affidavit under Rule _____.
1.130.
A showing of obviousness using the TSM rationale requires:
A showing of obviousness using the TSM rationale requires:
a) A suggestion or motivation in the prior art to combine
b) A reasonable expectation of success, and
c) That the references teach all the claimed limitations
Patentable subject matter is defined in 35 USC § ____ as a ___.
35 USC § 101. Method, machine, article of manufacture, composition of matter.
After Final Rejection or before filing an Appeal Brief, what claim amendments are allowable?
After Final Rejection, what can the applicant not do?
After Final Rejection, applicant has a right to:
1) cancel claims;
2) amend claims to comply with examiner’s requirements, or
3) amend claims to be in better form for consideration on appeal.
4) possibly: Amend claims, present new evidence/arguments upon showing good reason that you haven’t made these amendments earlier. May not be admitted.
MPEP 714.12. Rule 1.116.
Applicant cannot: Add new claims
MPEP 714.13.
If the application is abandoned, the date of the abandonment is ______________.
“Applications are not ordinarily reviewed for possible abandonment until the maximum permissible period for which an extension of time under 37 CFR 1.136(a) plus 1 month has expired.” …
If the application is abandoned, the date of the abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. This is normally the end of the 3-month shortened statutory period.” – MPEP 711.04(a)
A response to every official action must by statute be filed within ___ months.
Six.
The longest extension possible under 37 CPR 136(a) is ____________.
Five months.
The longest extension possible for late payment of an issue fee is ____ months.
Zero. But if you can show it was unintentional, it’s possible to pay it late.
can be revived: Rule 1.137, U.S.C. 27
A reply to an Office action with a 3-month shortened statutory period dated November 30 is due when?
on the following February 28 (or 29 if it is a leap year) MPEP 710.01(a)
If there is no such date in the month when due then the due date is the last day of the month.
MPEP 710.01(a), 710.02(e)
A reply to an Office action dated February 28 is due when?
May 28, and not on the last day of May. MPEP 710.01(a)
A one-month deadline can never be less than ____ days and a two-month deadline can never be less than ___ days.
30.
60.
The date an application becomes abandoned for failure to respond to an outstanding action is ____________.
The day after the last day of response. (statutory period of response). 711.04(a).
Revival under the unintentional standard requires a _____ only and a __ fee.
Statement and a large fee.
In what circumstances can an abandoned application be revived?
When the abandonment was unintentional.
If you respond to an outstanding office action or file a continuation to an application that has been abandoned, is it sufficient to file the office action response or continuation? (Assuming no automatic extension applies.)
No. A Petition to Revive is needed.
Rule 1.137 governs both ___________ and __________.
Rule 1.137 governs both _revival of abandoned applications and late payment of issue fee.
Where should I look for how to revive a an abandoned application or a terminated/limited reexamination prosecution?
Rule 1.137.
A __________ amendment is filed before any official action and a ___________ amendment is filed after response to a first official action has been filed.
preliminary amendment
supplemental amendment
Swearing back pre-AIA requires filing an affidavit or declaration under ____________, whereas rebutting a prima facie showing of obviousness requires an affidavit or declaration under ___________
swearing back pre-AIA: Rule 1.131
rebutting obviousness: Rule 1.132
When a claim limitation says a composition includes A, B, C, and “up to X percent of a D,” does a reference that includes A, B, C, and none of D read on the claim?
Yes.
Obviousness: Can the applicant’s own disclosure be used to establish a reasonable expectation of a successful combination of qualified references?
No! That’s impermissible hindsight.
MPEP 2142
Can an examiner use his own personal knowledge in a rejection?
Yes, but an affidavit is required. Rule. 104(d)(2).
After final action and prior to appeal, when can you amend to “touch the merits of the application.”
“An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.” Rule 1.116 (b)
In all cases, a petition to revive an abandoned patent application must be accompanied by:
(1) The reply required to the outstanding
Office action or notice, unless previously filed.
(2) fee.
(3) for designs, a terminal disclaimer
(4) A statement that delay was unintentional
Rule 1.137.
Where should you look for both revival of abandoned applications and late payment of issue fee?
Rule 1.137.
Rule 1.316 - abandonment for failure to pay issue fee.
Search for “revival” in the rules, or “issue fee”
MPEP 711
What happens if you fail to file a complete response to every ground of rejection after the examiner has given applicant further time to file a complete response.
Application is abandoned.
In what circumstances will an examiner grant an interview prior to a first office action?
If the application is a CON or substitute application. MPEP 713.02.
When might an examiner grant an interview to registered practitioner/agent, who is not attorney or agent of record?
If the attorney/agent says he is authorized to represent the applicant. MPEP 713.05.
A domestic patent is used as a reference in a rejection under pre-AIA 102(e). It has a foreign filing date followed by, within a year thereof, an effective U.S. filing date. What is the relevant date for the rejection?
The effective U.S. filing date. (Same as a PCT reference, pre-AIA)
MPEP 715. In re Hilmer
“The effective date of a domestic patent when used as a reference in a rejection under pre-AIA 35 U.S.C. 102(e) is not the foreign filing date to which the application for patent may have been entitled under 35 U.S.C. 119(a) during examination. … Therefore, the date to be overcome under 37 CFR 1.131(a) is the effective U.S. filing date, not the foreign priority date. “
In re Hilmer.
Restriction: A process and apparatus are distinct if:
(a) Process can be performed by a different apparatus (or by hand), or
(b) the apparatus can perform a different process.
MPEP 806.05(sf)
Restriction: An apparatus and product are distinct if:
(a) the apparatus is the obvious apparatus for making the product and can be use dto create a product other than the claimed product, or
(b) the product can be made with a different apparatus.
MPEP 806.05(g)
Restriction rejections and double patenting rejections are:
mutually exclusive - even if restriction requirement was improper, the examiner cannot make a double patenting rejection.
When can an examiner reject claims in a divisional application based on double patenting citing the granted parent application?
When the pending claims in the DIV application had not been withdrawn in the parent in response to a restriction requirement.
What is an example of a constructive election of claims?
An application is filed with only method claims. After the method claims are rejected, you want to add device claims. If those device claims would have been restricted if filed initially, they can’t be added to the application because you made a constructive election in not filing them originally. A continuation or divisional must then be filed to introduce the device claims.
MPEP 821.03
When is an obviousness type double patenting rejection improper?
The 2nd application is a DIV of first and the Patent Office issued a restriction requirement that resulted in the DIV application.
For a double patenting rejection to be valid, what must the granted patent and the pending application have in common?
A common inventor, common applicant, or common assignee.
MPEP 804
What is a provisional double patenting rejection?
A double patenting rejection when the referenced application has not yet issued a patent.
MPEP 822. Rule 1.78.
Say you traverse a restriction requirement, the examiner maintains his position, and you want to continue to argue against the restriction. How do you do that?
Petition the Commissioner. Not appeal!
What must you always do, not matter what, in response to a restriction requirement?
Elect a species., or cancel one of the species
What is a linking claim, and why is it important?
A linking claim “links” two distinct inventions that could be properly restricted such that election of one is required. Allowance of the linking claim obviates the restriction and requires rejoinder of non-elected claims for prosecution of the application.
MPEP 809
Can a double patenting apply to a utility patent based on a design patent?
Yes.
“Although double patenting is rare in the context of utility versus design patents, a double patenting rejection of a pending design or utility application can be made on the basis of a previously issued utility or design patent, respectively. Carman Indus. Inc. v. Wahl.”
MPEP 804.
What is a provisional rejection under 35 USC §102(a)(2) or §103? Rejection cites application A to reject a claim in examined application B.
- applications A and B are copending
- application A is not published,
- A and B have different filing dates, .
- A and B have a common assignee or common inventor.
- MPEP 706.02(f)(2).
Which of the following sections of 102 can be addressed using a declaration filed under 37 CFR 1.130?
(A) 102(a)(1) (B) 102(a)(2) (C) 102(b) (D) 102(c) (E) Both (A) and (B) above.
E. Both §102(a)(1) and §102(a)(2)
What is the relevant §102 date for a foreign patent application?
Its publication date. Its filing date only matters when the application is a priority application of a U.S. or PCT. See 102(d)(2), which refers to claim priority under sections 119 and others.
For §102(a)(1), consider a case where the invention is used (or sold), but no one but the inventor knows about the use (or sale). Does this qualify as use (or sale)?
No. The use is not “available to the public.” The use has to be “informing.”
When does old 102(g) apply to an application to which AIA 102 and 103 apply ?
if an application contains, or contained at any time, any claim with an effective filing date before March 16, 2013, and also contains, or contained at any time, any claim having an effective filing date on or after March 16, 2013, each claim must be patentable under AIA 35 U.S.C. 102 and 103, as well as pre-AIA 35 U.S.C. 102(g)
A has been working with B on an invention X under a joint research agreement that has been in place for ten years upon which an application was file March 30 2018 under the agreement. Examiner cites a patent filed by A in 2001 that never published, and issued July 1, 2018. What is status of this reference under AIA 102?
It’s an exception under 102(b)(2). See 102(c): “1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;”
When you would you file a Rule 1.131 affidavit?
Name the specific part of U.S. Code it applies to, and what part it does not apply to.
To swear behind a reference in a pre-AIA novelty rejection under pre-AIA 102(a), which concerns date of invention.
Not applicable to pre-AIA 102(b), which concerns the filing date.
In what circumstances you would you file a Rule 1.130 affidavit?
To establish entitlement to the AIA 102(b) exception, the applicant would file an affidavit under 37 C.F.R. 1.130.
E.g., the cited art was derived from you, either directly or indirectly. Cited art must have been disclosed less than a year before filing date of application being examined. Otherwise applicant’s disclosure is outside of § 102(b) grace period.
When can a double patenting rejection be made, even if the two applications lack a common inventor?
They have common owner, even under join research agreement. MPEP 717.02(c)
MPEP 804
AIA 102(b)(2)(C): What is the relevant date for eliminating a cited reference for having the same ownership or assignment as the claimed invention?
The effective filing date of the claimed invention.
In what circumstances do you need to tell the the patent office that your non-provisional application claims subject matter not disclosed in a priority application?
When the non-provisional application was filed on/after March 16, 2013 and the priority application was filed before March 16, ‘13.
Reason must be because then 102(g) applies as well as AIA 102.
Rules 1.55 and 1.78 (a)(6)
