MPEP Must Know

Question 1

6 things that don’t have automatic extensions:

Answer 1

If an office action states;
Reply brief(responsive to examiner’s answer in an appeal to board of patent appeals and interference);
A request for an oral hearing in an appeal*;
Responding to a decision of the board *;
Anything in an interference *;
Due dates in a reexamination, extension for cause must be requested before date due

anything above with a * must ask for extension for cause on the day needed

Question 2

5 things due dates cannot be extended for(even with cause)

Answer 2

IDS
Any due date set by statute
The issue fee can now be paid late upon a proper showing but it cannot be extended
3 month deadline to get a refund for a fee paid as a large entity
Filing formal drawings at the time the issue fee is paid

Question 3

a petition to revive an unintentionally abandoned application must be accompanied by

Answer 3

a response to any action which was outstanding at the time of abandonment or continuation

Question 4

intentionally abandoned applications cannot be revived

Answer 4

KNOW THAT SHIT NOTHING TO TEST LOL

Question 5

Who must record interview?

Answer 5

even if the examiner records the substance of interview the applicant still has an obligation to do so

Question 6

Amendment after Final:

Answer 6

Same as other amendments but must include a showing that there is no change in need of further examination

Question 7

2 ways to Change Claim Wording:

Answer 7

Cancel and replace with new claims, new claims are consecutively numbered from previous claim submitted, even unentered claims

You may also amend claims by submitting a marked up copy of the claims you want to amend.

Question 8

How to amend claims:

Answer 8

Put “(currently amended)” after numeral of first amended claim
Words added should be underlined
Words deleted should be struck through
Double brackets [[]] may be used to indicate removal of up to 5 characters

Question 9

Status indicators:

Answer 9

when claims are amended all the claims must be shown on a claims listing with status indicators in front of the text of each claim
Statuses are:
“Cancelled”
“Previously presented”
“Withdrawn”
“Currently amended”
“Original”
“Not entered”
“New”
No other statuses are allowed

Question 10

Amendments after notice of allowance:

Answer 10

You may enter amendments before the issue fee is paid if they are needed for proper disclosure and require no substantial work for the examiner
To be entered they must give remarks with amendment answering the 4 whys:
Why the amendment is needed?
Why no new search or consideration is required?
Why any amended or new claims ate patentable?
Why the amendments were not earlier presented?
If the amendments are refused or do not meet requirements then must file a continuation and amend that in a preliminary amendment
No amendments are allowed after issue fee is paid except with withdrawal from issue CFR 1.313

Question 11

Overcoming rejection where inventions are the same:

Answer 11

cancelling claims from one application

Question 12

Overcome rejection when inventions are an obvious variant and they are commonly owned

Answer 12

filing a terminal disclaimer so the two patents expire at the same time and if expire if they ever cease to be commonly owned

Question 13

When can you file appeal brief?

Answer 13

Must file appeal brief within 2 extendable months from date Notice of Appeal is received at the office, automatically extendable for 5 additional months

Question 14

Contents of Appeal Brief

Answer 14

Identification of real party in interest(the person who owns rights)

• If changes during the appeal, appellant has 20 days to advise board
• If identification not included the PTO will presume the real party in interest is/are the listed inventors

List related appeals and interferences
- If not included PTO will presume there are none

Summary of claimed subject matter of each independent and dependent claim separately argued

Arguments directed to each and every rejection with separate headings for each

An appendix containing a copy of the claims appealed

Question 15

What are the 3 criteria for appeals and interferences to be considered related?

Answer 15

Same owner
Known to the appellant
Relate to or be affected by the board decision in this case

Question 16

What can be appealed?

Answer 16

Second actions or final rejections can be appealed to the Patent Trial and Appeal Board

Question 17

How to appeal?

Answer 17

File notice of appeal, pay fee, before or after final response

Question 18

if new grounds for rejection is present but examiner does not designate it as such then applicant can…

Answer 18

file a petition under 37 CFR 1.181 and pay a fee to have it formally designated as “new ground” which enables the applicant to chose to reopen prosecution
or
If applicant only wants to submit arguments against the new ground it is not necessary to file a petition, you may simply submit a reply brief with new arguments

Question 19

What to do when examiner’s answer contains new ground for rejection in an appeal?

Answer 19

you may reopen prosecution and respond like a normal action or;

Ask that appeal be maintained and respond by filing a reply brief the Reply brief cannot submit amendments or Rule 1.132 affidavits or declarations

No second fee is required for response

Question 20

What amendments can you make after filing an appeal?

Answer 20

cancel claims that dont effect other claims;
Rewrite dependent claims in independent format;
Affidavits will not be admitted without Showing of good cause and they must Overcome all outstanding rejections and Be submitted before the filing of the brief

Question 21

applicant can file a 53(d) or RCE continuation at any time during an appeal and abandon parent or continue the appeal with a 53(b) continuation

Answer 21

JUST KNOW THAT FACT BITCH

Question 22

2 ways to respond to board decision on appeal?

Answer 22

Submit appropriate amendments to the claims rejected or show facts or both and have the matter reconsidered by the examiner - If re-rejected then applicant can appeal to board; or

Ask that the board reconsider(Cannot appeal new rejection by the board because you cannot appeal something rejected only once, so you may ask the board to reconsider then after making rejection again appeal it)

Question 23

After remand from the board on appeal?

Answer 23

the examiner may submit a supplemental examiner’s answer and then applicant respond like normal examiner answer

Question 24

Board Descision may?

Answer 24

reverse or affirm examiner in whole or in part

may issue new grounds for rejection

Question 25

Reply Briefs:

Answer 25

Optional appeal can go on without it
Filed as matter of right
2 months from examiners answer to file
Extension under 136(b)
The Board takes jurisdiction following the reply brief or after 2 months

Question 26

REMEMBER THE FOLLOWING RULES JUST DO IT YA DUMB WHORE

Answer 26

Rejection cannot be appealed unless it is final or has been made twice
Oral argument is held only if requested in writing and fee is paid
Whenever board makes new grounds for rejection applicant may
Ask for new grounds to be reviewed
Aske for new grounds to be designated as such
Reopen prosecution for new grounds to be reviewed by examiner

Question 27

What happens post appeal?

Answer 27

File is returned to examiner

If no claims are allowed it will be abandoned after deadline to appeal to CAFC or Virginia

If claims are allowed and appeal is unsuccessful examiner will cancel rejected claims and sent application to issue

If no claims are allowed but one or more claims are allowable, except for dependency on a rejected claim the application stands abandoned

Question 28

What to do if dissatisfied by the board’s decision?

Answer 28

you may appeal to the Court of Appeals for the Federal Circuit(C.A.F.C., will not accept new evidence) or the US District Court for the Eastern District of Virginia(will accept new evidence)

Question 29

When can applicant withdraw appeal and what happens?

Answer 29

at any time, which results in abandonment of the app unless there are claims already allowed

Question 30

After Notice of Allowance how long do you have to pay issue fee and submit formal drawings?

Answer 30

3 month non extendable

The issue fee can be accepted late for erroneous failure to pay

Formal drawings are due at same time as issue fee and these cannot be extended

Question 31

When and how can you Withdrawal from Issue:

Answer 31

Prior to payment of issue fee submit petition showing good and sufficient reason and pay a fee to withdraw from issue

Alternatively a continuing app can be filed before issue fee is paid and then abandon parent

Applicant may withdraw from issue with a fee and petition

Question 32

The Patent Office may withdraw from issue after the issue fee is paid if:

Answer 32

There was a mistake of the office
There was a violation of the duty to disclose
Claims are unpatentable
An interference

Question 33

Patent Term Extensions

Answer 33

Applications filed from 06/08/95 - 05/29/00 may extend their 20 year terms up to 5 years for delays in issuance of the patent due to interferences, secrecy orders, and successful appeals(unless terminal disclaimer used)

Question 34

A PCT application filed in the USPTO must have?

Answer 34

> 0 applicants who are US nationals or legal residents;
English description(spec, claim, drawings);
Request for treatment as international app;
Designation of >0 countries(automatic)which can be the US;
Priority claim(if appropriate);
Abstract and money may come later ;

Question 35

Tricky points about original PCT Filing:

Answer 35

Fee and abstract may be late;
Applicant means inventor or owner;
Priority claim cannot be added late;
All-encompassing designation is automatic;
Standard for restriction is based on unity of invention and US restriction rules do not apply;

Question 36

What must a PCT have to enter US national phase?

Answer 36

Copy of international app
The national filling fee
Due before 30 month period, no late
Oath and Trans can be prodded late with a charge

Question 37

PCT Time Table:

Answer 37

Filing international application(IA) - !> 12 months from priority date(fpd);
International Search Report and Written ISA opinion, amendments by applicant, publication - ~16 months fpd, article 19 amendments (claims only), later or 22 months fpd or 3 months from mailing date of report and written opinion, ~18 months fpd
Demand for preliminary exam - !> 22 months fpd
Entry into national phase - 30 months fpd

Question 38

Some must know subject matters that are unpatentable:

Answer 38

Transitory forms of signal transmission
A human
A legal contractual agreement between parties
A computer program(software is patentable but changing the language is not)
A company
An arrangement of printed matter
data(databases are)

Question 39

nter Pertes Reexam:

Answer 39

Apply to application filed after 11/29/99 but procedure was discontinued on 9/16/12
* any choice mentioning inter parties reexam is almost certainly wrong

Question 40

inter Pertes Reexam:

Answer 40

Apply to application filed after 11/29/99 but procedure was discontinued on 9/16/12
* any choice mentioning inter parties reexam is almost certainly wrong

Question 41

Must know supplemental exam info:

Answer 41

Fee for sup exam, fee for reexam ordered as result of sup exam and fee for non-patent documents above 20 pages must be paid when the sup exam is filed
If does not result in reexam the reexam fee will be refunded
No small entity or micro entity discount

Question 42

TEstable Points from new document added:

Answer 42

Patent owner allowed to submit new testimonial evidence with its preliminary response if genuine issue of material fact is created by this evidence. Issue will be assumed in favor of petitioner
If instituted the petitioner will have the opportunity to cross exaM THE DECLARANT DURING TRIAL