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Patent Bar Flashcards

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1
Q

PLTIA

A

Patent Law Treaties and Implementation Act; went into effect December 18, 2013; stated you don’t need a claim in an application to secure a filing date; can revive priority application in order to keep priority if accidentally abandoned (2 month window); Changed the rule to UNINTENTIONALLY abandoned (instead of unintentionally or unavoidably)

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2
Q

GATT (general agreement on tariffs and treaties)

A

Went into effect June 8, 1995; Changed patent life from 17 years to 20; began provisional application practice;
Jan 1 1996: Date of invention in any WTO country could be used to swear behind a reference in a US case

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3
Q

Number of claims in a design patent

A

One

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4
Q

Design patent claim preamble

A

“The ornamental design as shown and described”

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5
Q

1 year response period

A

Grace period for filing under pre-AIA 102(b) and exception period under AIA 102
Deadline after issue for copying a claim of an issued patent or published application for interference
Deadline for replacing provisional application

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6
Q

Foreign priority deadlines

A

1 year for utility and plant applications
6 months for design

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7
Q

What can never be added to an application

A

New Matter

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8
Q

Basis for reexamination

A

Only patents and printed publications

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9
Q

6 month rule

A

Cannot file a response more than 6 months after an official action (statutory limit), cannot extend past 6 months
Must respond to ALL parts of the action

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10
Q

What is the term of a patent? (non-design)

A

20 years from first non-provisional filing date (Before June 8, 1995 it was 17 years from date of issue)

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11
Q

What is the term of a design patent?

A

Before May 13, 2015 14 years from issue; after that 15 years from issue (Hague Agreement)

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12
Q

When can you suspend prosecution

A

Only when there are no outstanding actions

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13
Q

Recording of an assignment must

A

be in English or feature a translation

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14
Q

Continuations, divisional’s, and continuation-in-parts must be ______ with their parents

A

Copending

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15
Q

2 year deadline

A

Deadline for filing broadened reissue;
Time limit for reviving patent lapsed for failure to pay maintenance fee

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16
Q

5 Years

A

The maximum time of term extension for delay in appeal under PTE (patent term extension)

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17
Q

How do you calculate the filing deadline for a preissuance submission?

A
  1. the LATER of (a) 6 months after the date on which the application is published, or (b) the date of the first rejection;
  2. the EARLIER of this date or the notice of allowance
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18
Q

AIA Phase 2

A

September 16, 2012; date for new AIA oath/declaration requirements, supplemental examination, preissuance submissions, inter partes review (instead of inter partes reexamination), PGR, and covered business method review

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19
Q

March 16, 2013

A

Implementation of AIA 102 and first to file system

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20
Q

Extension of time to pay issue fee

A

CANNOT EXTEND

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21
Q

Broadening claims in reexamination

A

CANNOT BROADEN

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22
Q

How to make changes to an inventor’s oath/declaration

A

Cannot amend, must submit new/amend ADS

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23
Q

Terminal disclaimer appplies when

A

Obviousness type double patenting

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24
Q

Recapture

A

In a reissue, cannot broaden to claim subject matter given up during prosecution

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25
Q

Only residents/nationals of a country can _____

A

File a PCT there

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26
Q

______ are prohibited in supplemental examination

A

Interviews

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27
Q

No _____ may be filed in a supplemental examination

A

Amendments

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28
Q

What do you need to obtain a filing date?

A

Only a specification

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29
Q

Issue fee can be paid late if

A

Unintentional or unavoidable

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30
Q

If patent is lapses because the issue fee inadvertently wasn’t paid, it can be ____ within _____

A

Revived within 2 years

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31
Q

Ways to obtain a foreign filing license

A

1) Filing receipt

2) Petitioning the commissioner to ask for one

3) Automatically 6 months from filing (ALL patents)

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32
Q

Petition to make special (4 things)

A

1) Applicant’s age or health

2) Renewable energy

3) Environment

4) Terrorism

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33
Q

Inventoris dead/incapacitated/lost

A

Substitute statement in lieu of

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34
Q

Patent issues and you think your claims are too narrow, so you ______

A

File a reissue (within 2 years)

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35
Q

Obtain a filing date the day you mail something

A

Express Mail

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36
Q

Extensions of time in a reexamination must be filed ____

A

Before the deadline to respond

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37
Q

Ways to correct priority claims in an issued patent

A

1) Reissue

2) Certificate of correction (if its a continuation and the parent’s priority claim is good)

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38
Q

You’ve received a final rejection and want to enter an amendment that’s been refused and don’t want to appeal

A

RCE or continuation

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39
Q

You want to bring prior art to the attention of the patent office in an application which you are not a part of

A

1) Protest

2) Third party pre-issuance submission

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40
Q

Application was filed in a foreign country without a foreign filing license

A

Obtain a retroactive foreign filing license

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41
Q

Minor mistake in your patent when its issued

A

Certificate of Correction

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42
Q

Minor mistake in your patent that was the mistake of the patent office

A

Certificate of Correction (no fee)

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43
Q

When can all issues be considered in reexamination?

A

If a supplemental examination initiates it

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44
Q

Two things that the six month rule doesn’t apply to

A

1) Appeal brief

2) notice of missing parts

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45
Q

Only section of 102 that you can use to reject a claim

A

102(a)

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46
Q

The only people that are barred from getting a patent

A

PTO employees

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47
Q

1.53(d) continuations/divisionals

A

Only design patents

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48
Q

Claim limit for prioritized examination

A

4 independent, 30 total, no multiple dependents

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49
Q

Applications not allowed for prioritized examination

A

Designs, provisionals, reissues, reexamination, PCT applications that haven’t entered the national stage

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50
Q

Applications allowed for prioritized examination

A

Utility non-provisional patents, continuations, plant applications, PCT applications that have entered the national stage, RCEs (only can apply once)

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51
Q

Prioritized examination is terminated when

A

Anything closing prosecution (allowance, final rejection)

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52
Q

Actions that cancel prioritized examination and place it on regular docket

A

Adding too many claims, extending time.

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53
Q

Prioritized examination must be _____

A

Ready for examination (fee, claims, everything included)

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54
Q

Who can file a derivation proceeding?

A

Any 3rd party

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55
Q

When can you file a derivation proceeding?

A

Within 1 year of first publication of the claims of earlier invention

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56
Q

For a derivation proceeding, claims must be _____

A

The same or substantially the same

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57
Q

Which patents can undergo derivation?

A

Only AIA

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58
Q

Inter Partes Reexamination ____

A

Does not exist anymore

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59
Q

Who can file an IPR?

A

3rd party

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60
Q

What can you rely on to file IPR

A

Only patents and printed publications

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61
Q

When can you file an IPR

A

9 months after issuance or after PGR is completed

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62
Q

Must be a _____ to file IPR

A

Reasonable likelihood of success

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63
Q

IPR is only available after______

A

September 16 2012

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64
Q

Who can file post grant review?

A

Anyone

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65
Q

Which patents are available for post grant review?

A

Only AIA

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66
Q

Which patents are subject to IPR?

A

All patents

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67
Q

When can you file a post grant review?

A

Within 9 months of issuance

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68
Q

What can be used in a post grant review?

A

All patentability issues

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69
Q

What is the threshold for post grant review?

A

Preponderance of evidence (high threshold)

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70
Q

Who can file a covered business method?

A

Bank/financial service company that has been sued

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71
Q

When can you file a covered business method?

A

After post grant review is completed

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72
Q

Which patents are subject to covered business method?

A

All patents related to banking, finance, etc.

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73
Q

Which issues can be brought up in covered business methods?

A

All patentability issues

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74
Q

Who can file reexamination?

A

Anyone

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75
Q

When can reexamination be filed?

A

Until 6 years after the expiration of the patent.

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76
Q

Which patents are subject to reexamination?

A

All patents

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77
Q

What is the standard for initiating a reexamination?

A

Substantial new question of patentability

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78
Q

What happens at the conclusion of reexamination?

A

Reexamination certificate

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79
Q

What can you not do in reexamination?

A

Broaden claims

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80
Q

Certificate of Correction to correct priority claim

A

Only for continuations when the parent’s priority is perfected

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81
Q

Terminal disclaimer doesn’t apply when

A

Same invention type double patenting

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82
Q

When can a patent be revived?

A

When it was unintentionally abandoned (not unavoidably, that was removed with PLTIA)

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83
Q

To patent a plant it must have been

A

Asexually produced

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84
Q

Extensions of time in reexamination are _______

A

Not automatic, only for cause

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85
Q

When are you officially withdrawn from representing a client?

A

When the Commissioner approves your request

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86
Q

Five month response period

A

Maximum automatic extension of time

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87
Q

Multiple dependent claims cannot _____ on _____

A

depend on multiple dependent claims

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88
Q

What must you do in a restriction requirement

A

Elect claims

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89
Q

Access to an unpublished, abandoned application

A

Mentioned in an issued patent

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90
Q

What must be identified on an inventor’s oath or declaration?

A

Must identify: inventor’s legal name (every inventor on an application must execute one), application, and inventor’s mailing address

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91
Q

How are dates of USPTO actions calculated?

A

All dates are calculated from MAILING DATE from the USPTO which is stamped on the action

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92
Q

When are maintenance fees due after issue of a patent?

A

3.5 years, 7.5 years, 11.5 years

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93
Q

Three months response period

A

Normal shortened statutory period to respond to Official Action;
Unextendable pay period to pay issue fee and file formal drawing;

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94
Q

When will applicant receive filing date at the patent office?

A

Rule 1.53(b)-
Filing date is the date on which the specification (with or without claims) is received at the PTO

No new matter may be introduced after the filing date

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95
Q

What is the minimum requirement to receive a provisional filing date?

A

Specification and any necessary drawings

If cover sheet is missing or fee not paid or no drawings present, applicant will get a Notice of Missing Parts and have TWO MONTHS to complete

Rule 1.53(c)

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96
Q

Two month response requirements

A

Period for responding to ex parte quayle action (what is this??);
Deadline for response to Notice of Missing Parts;
Period for responding in reexam;
All deadlines on appeal are two months;
Deadline for filing petition after decision on reconsideration by the examiner

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97
Q

130 Affidavit

A

Rule 1.130- Grace period affidavit (AIA rule)

Applicant can disqualify prior art disclosure made by inventor if it falls within the ONE YEAR grace period by submitting a 130 affidavit

The only way to assert that a piece of prior art qualified under 102(a)(1) or 102(a)(2) under the AIA actually falls within exceptions under 102(b)(1) or 102(b)(2)

Must be submitted before close of prosecution; use when art has been cited against you

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98
Q

Continued prosecution application (CPA)

A

Rule 1.53(d) -DESIGNS ONLY

CPA is a request to expressly abandon prior application as of the filing date of the CPA–method of continuing prosecution on an application

A continuation or divisional (not CIP) may be filed as a CPA if filed before payment of issue fee on prior application OR before abandonment of prior application OR befor eterminatoin of proceedings on prior application

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99
Q

How can you correct inventorship in an application?

A

Rule 1.48-
Submit an updated ADS;
For any new inventor, need new oath or declaration

With incorrect inventorship, instead of filing petition to correct can instead file a continuation application with the correct inventors as long as one inventor remains in common between the parent and child apps

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100
Q

Application data sheet

A

Has to identify names of inventors, addresses, and priority entitlement the application has

Must be submitted within the later of: 4 months of filing or within 16 months of foreign filing

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101
Q

Rules for joint inventorship

A

Rule 1.45; Joint inventors must apply for patent jointly and each must make an oath or declaration
Inventors may apply for a patent jointly even if (a) they didn’t physically work together at the same time, (b) each inventor did not make the same amount or type of contribution, (c) each inventor did not make a contribution to the subject matter of every claim
Each inventor must contribute to the subject matter of at least one claim

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102
Q

131 Affidavit

A

Rule 1.131- Swearing back affidavit- PRE-AIA ONLY

Applicant can overcome a rejection based on prior art b establishing that the date of invention is before the prior art date- on a claim by claim basis

Must be submitted before final rejection

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103
Q

132 Affidavit

A

Rule 1.132; Applicant can overcome objection or rejection by submitting new evidence in an oath or declaration

May be used to establish that reference cited is applicant’s own work (i.e. if publication authorship is different from patent app inventorship)

Must be submitted before close of prosecution.

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104
Q

Who is considered an applicant?

A

Inventor OR owner (the AIA introduced the concept of owner being an applicant)

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105
Q

What is the shortened statutory period for responding to a restriction requirement?

A

One month

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106
Q

Broadening claims in a reissue

A

Only within 2 years of issue

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107
Q

Interviews before official actions?

A

Only continuation

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108
Q

Who can file a PCT at the USPTO?

A

US residents and nationals
If filed at USPTO, must be in English

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109
Q

Requirements for filing PCT

A

Have to:
-Request to be international
-Designate at least one PCT state
-List names of applicants
-Include spec, claims, drawings
-Include abstract and fee (can be late?)

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110
Q

What date did AIA go into effect?

A

September 16, 2011 (Signed into law; track I examination went into effect); September 16, 2012 (start of PGR, ended inter partes reexam, began ability to file in name of assignee instead of inventors); March 16 2013 (transition date for patents! first to invent–>first to file)

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111
Q

Derivation proceeding

A

Only applies to claims that are substantially the same

Has to be supported by substantial evidence

Only AIA

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112
Q

When can an appeal be filed?

A

After the final rejection or second office action

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113
Q

What is included in an appeal brief?

A

-Identify applicant
-List any related appeals and interferences by the same owner and in the same patent family
-Summary of claimed subject matter
-Arguments for each rejection (only have the record between you and the examiner to use as evidence, CANNOT bring new evidence that the examiner had not seen!!)
-Appendix with a copy of the claims being appealed

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114
Q

What is included in an appeal?

A

Identify the applicant, list appeals and interferences, list claims that are being appealed, argue each rejection

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115
Q

Why might you file an appeal instead of a request for continued examination (RCE)?

A

In an RCE, applicant would have same examiner and same rejections; if you can’t figure out how to overcome those rejections, then appeal can help get around this. BUT appeal is much more expensive

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116
Q

How long do you have after notice of appeal to file an appeal brief?

A

Two months to file appeal brief, can buy 5 more months

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117
Q

What is required in an appeal brief?

A

Claims appendix

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118
Q

When does jurisdiction pass to the board in an appeal?

A

When the reply brief is filed or when the deadline to file an appeal brief has passed

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119
Q

Rule 1.181

A

Have rejection designated as a new ground of rejection

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120
Q

Two possible courses of action in response to an Examiner’s Answer

A

1) File a 1.181 petition to have it designated as a new ground of rejection

2) submit a reply brief

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121
Q

4 possible changes in a rejection that constitute a new ground of rejection

A

1) Change in statutory basis (103 to 102, or vice versa) ((if it is based on the same teaching, it is NOT a new ground of rejection)

2) Examiner cites new calculations

3) Examiner cites new structures

4) Pointing to a different portion of the claim to maintain a “new matter” rejection

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122
Q

Dictionaries are considered ______

A

Standard references and can always be relied upon

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123
Q

Claims appendix should include _____

A

Claims involved in the appeal process

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124
Q

Rule 1.111

A

Reopens prosecution with the examiner

125
Q

2 possible courses of action when request to have something designated as a new ground of rejection is granted

A

1) Request reconsideration by the board

2) Reopen prosecution with the examiner

126
Q

How can a foreign filing license be acquired?

A
  1. Passage of six months following the filing of any U.S. application including a provisional
  2. By being granted specifically on the filing receipt
  3. By the granting of a petition asking for one

-Every U.S. application filed includes an implicit request for a foreign filing license.

-Foreign filing license can be obtained retroactively by a petition as long as the illegal foreign filing occurred through error.

127
Q

Third Party Pre-issuance requirements

A

1) list of items

2) concise description of relevance

3) legible copies

4) translations

5) statement that the submission is compliant

6) fee

128
Q

Documents that can be submitted in Third Party Preissuance submissions

A

Patents and printed publications only

129
Q

Which patents do Third Party Pre-issuance submissions not apply to?

A

Provisionals or any post-issuance proceeding

130
Q

Mailing for Third party pre-issuance proceedings

A

Only priority mail (certificate of mailing or fax do not work)

131
Q

Who can file a third party pre-issuance submission?

A

A third party that does not have any duty to disclose information with regards to the patent

132
Q

What cannot be submitted as a third party pre-issuance submission?

A

Documents with trade secrets or subject to secrecy orders (must be published)

133
Q

Citation of prior art and written statements do not include ______

A

Statements made at the ITC

134
Q

Citation of prior art/written statements during reexamination

A

Will only be considered in the reexamination if submitted by the patent owner or requester

135
Q

The duty to disclose for citations of prior art is ______

A

Not continuing

136
Q

3 requirements for citation of a patent owner’s statement

A

1) identification of the forum and proceeding in which the statement was made

2) The specific papers/portions of papers that contain the statements

3) Explanation of how each statement is a statement in which the patent owner took a position on the scope of a claim

137
Q

Substitute statement filed by someone with sufficient proprietary interest (NOT an assignee) needs to submit these 3 things

A

1) Fee

2) Proof of sufficient proprietary interest

3) Statement that the patent application is appropriate to preserve the rights of the parties

138
Q

Who may request supplemental examination?

A

Only the patent owner (no licensees)

139
Q

Which patents does supplemental examination apply to?

A

All patents

140
Q

Which patentability issues does supplemental examination consider?

A

All patentability issues

141
Q

Maximum number of items that can be submitted in supplemental examination

A

12

142
Q

Reason for requesting supplemental examination

A

To inoculate the patent owner from any possibility of inequitable conduct in future cases

143
Q

Which fees must be submitted with a request for supplemental examination?

A

All 3 fees together!

1) fee for supplemental examination

2) reexamination fee (refunded if reexamination is not granted)

3) fee for any documents over 20 pages

144
Q

Supplemental examination concludes with the granting of a _____

A

Supplemental examination certificate that says whether there is a substantial new question of patentability

145
Q

What happens if a supplemental examination indicates there is a substantial new question of patentability?

A

Reexamination is ordered

146
Q

Differences between standard reexamination and reexamination as a result of supplemental examination?

A

1) All patentability issues (not just patents and printed publications)

2) Patent owner does not have the right to make a statement

147
Q

An application must include, or be amended to include, the name of the _____ for any invention claimed in the application.

A

Inventor (inventor must always be named, even if filed by the assignee or someone else)

148
Q

2 requirements to file a substitute statement in lieu of an inventor

A

1) Demonstrate that the inventor was under an obligation to assign the invention to you

2) Demonstrate that the inventor cannot be found after reasonable efforts to locate them

149
Q

What is issued when an oath or declaration is not filed?

A

Notice of Missing Parts

150
Q

When must you file an oath or declaration before September 16th, 2012?

A

Within 2 months (plus 5 months of automatic extension) of the Notice of Missing Parts

151
Q

When must you file an oath or declaration on or after September 16th, 2012?

A

Before the application is in condition for allowance

152
Q

What must an oath/declaration include?

A

1) Identify the inventor by legal name

2) identify the application (obviously)

3) include a statement that the person executing the oath believes themselves to be the original inventor

4) state that the application was made or authorized by the inventor

153
Q

Who can file a substitute statement?

A

1) Assignees

2) People of sufficient proprietary interest (not non-exclusive licensees)

154
Q

What 3 things does a person of sufficient proprietary interest need to show to file a substitute statement?

A

1) Fee

2) Proof of the proprietary interest

3) statement that it is appropriate to preserve the rights of the invention

155
Q

Oath or declaration does not have to identify inventor by name and mailing address if _______

A

That information is in an ADS

156
Q

When is a patent examined under Pre-AIA and when is it examined under AIA?

A

If at least 1 claim has a priority date after March 16, 2013, the whole patent will be examined under AIA. Even if that claim is cancelled!

157
Q

What must you submit when filing a transition application?

A

Statement notifying the Patent Office that this is a transition application

158
Q

When must the statement that an application is a transition application be submitted by?

A

The later of 16 months from the earlier priority date and the date of the first claim to matter with a filing date after March 16, 2013

159
Q

Interference

A

2 Pre-AIA patents claiming the same thing, interference determines who truly invented first

160
Q

Who is the junior party and who is the senior party in an interference proceeding?

A

The person who filed 2nd is junior, person who filed 1st is senior

161
Q

What must the junior party show to win the interference proceeding?

A

They must show that conception was before the senior party’s conception, and that they did not break diligence until the invention was reduced to practice. Diligence must just be from sometime before the senior party’s conception to reduction to practice, does NOT necessarily have to be from the junior party’s conception to reduction to practice

162
Q

Who may not file their own patent application without the help of a patent practitioner?

A

Corporate or juristic entities

163
Q

When must the issue fee be paid?

A

Within 3 months, nonextendable (can be paid late)

164
Q

How do you correct inventorship in a pending application?

A

Rule 1.48, or also now just ADS

165
Q

How do you correct inventorship in an issued patent?

A

Certificate of correction (reissue can fix inventorship but is unnecessary)

166
Q

For something to be a prior art exception, joint inventorship must be in place when?

A

At the time of the effective filing date of the 2nd invention

167
Q

Commissioner can suspend a patent practitioner from practicing when they are ______

A

Convicted of a “serious crime”

168
Q

An application does not need to be in ______ to receive a filing date

A

English (translation can be filed later in response to a notice of missing parts)

169
Q

How does someone that is not an agent/attorney/inventor but is still involved in the patent application process satisfy their duty of disclosure?

A

Must either notify PTO of relevant information OR notify agent/attorney/inventor

170
Q

When did inter partes reexamination end?

A

September 16, 2012

171
Q

What is the standard for granting an inter partes reexamination?

A

Reasonable likelihood of success

172
Q

4 most common reasons to file a reissue

A

1) Claims are too narrow/broad

2) Disclosure contains inaccuracies

3) Correct foreign priority claim

4) Correct references to parent applications

173
Q

How would you correct a failure to claim foreign priority in an issued patent?

A

Reissue

174
Q

How do you submit documents that are secret during prosecution?

A

Each secret item must be clearly labeled, hand delivered to the PTO or mailed to the commissioner, with a transmittal letter containing the same information

175
Q

Small entity status is not obtainable if you license to large entities, with the exception of _____

A

The federal government. Licensing to the federal government does not prevent small entity status from being claimed

176
Q

Deleted characters in a claim amendment must be ______

A

Struck through

177
Q

When can you delete characters from claims in an amendment with double brackets?

A

If its less than 5 characters

178
Q

When can an S-signature be used?

A

When filing through EFS

179
Q

Best mode requirement only applies to ______

A

The invention being claimed, not something that is disclosed but not claimed

180
Q

Fax can be used to submit _____

A

Office actions

181
Q

What is the only type of application that be filed via fax?

A

CPA (53(d))

182
Q

USPTO will accept PCT applications if ____?

A

Will technically accept all (must be a US national/resident to process), but if not a US national/resident, it will just be forwarded to the International Bureau for processing

183
Q

Examiner’s amendment

A

If a final rejection of a dependent claim is reversed by the board (but the independent claim is still rejected), the examiner will either 1) do an examiners amendment where they can convert the dependent claim into independent form or 2) set a 2 month limit for the applicant to do it

184
Q

What happens if an applicant fails to respond with arguments to a new ground of rejection (even if they respond with arguments for claims without new grounds for rejection)?

A

Those claims will be dismissed

185
Q

What happens to an IDS submitted after the issue fee has been paid?

A

Put into the file but not considered by the examiner

186
Q

Two month rule

A

If a response to a final rejection is within 2 months of that final rejection, the free period is extended to the later of 1) 3 months from final rejection or 2) date of the advisory action

Note this cannot exceed the 6 month statutory period

187
Q

Transitory signals are ______

A

Not patentable subject matter

188
Q

What can the examiner require the applicant to bring to an interview before the first office action?

A

A general statement of the state of the art at the time of the invention, and an identification of no more than three references believed to be the “closest” prior art and an explanation as to how the broadest claim distinguishes over such references

189
Q

Who can communicate with the examiner?

A

ONLY the applicant/representative, examiners are forbidden from communication with unregistered individuals

190
Q

When can Article 34 amendments be made?

A

By the later of 1) 22 months from priority date and 2) 3 months from the date of transmittal of the international search report

191
Q

When can article 19 amendments be made?

A

By the later of 1) 16 months from the priority date and 2) two months from the date the report and opinion are mailed

192
Q

When can you appeal the decision to institute inter partes review?

A

Never, it’s unappealable

193
Q

Where do you appeal inter partes review decisions to?

A

Federal Circuit

194
Q

What are the four statutory categories of inventions?

A

1) Processes

2) Machine

3) Manufacture

4) Composition of matter

195
Q

What are the three judicial exceptions to patentable subject matter?

A

1) Abstract ideas

2) Law of nature

3) Natural phenomena

196
Q

What is the first step of the patentability test?

A

Is the invention one of the four categories of invention? If yes, proceed to next step, if no, then it is not patentable subject matter

197
Q

What is the step after deciding an invention is one of the statutory categories?

A

Is it one of the judicial exceptions? If not, it is patentable. If it is, proceed to next step

198
Q

If an invention falls into a statutory category but also is a judicial exception, how can it be patentable?

A

If the claims amount to significantly more than the exception

199
Q

Factors for what is considered “significantly more” (enough for an invention that is a judicial exception to be considered patentable)

A

1) Improvements to the functioning of a computer

2) Improvements to any other technology or technical field

3) Applying the judicial exception with a particular machine

4) Transformation or reduction of a particular article to a different state or thing

5) Adding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps

6) Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment

200
Q

Factors NOT considered significantly more when determining when an invention relating to a judicial exception

A

1) Adding the words “apply it” or merely adding instructions to implement an abstract idea on a computer

2) Simply appending well-understood, routine, and conventional activities previously known in the industry

3) Adding insignificant extra-solution activity to the judicial exception (such as data gathering)

4) Generally linking the use of the judicial exception to a particular technological environment of field of use

201
Q

6 computer functions that are recognized to be well-understood, routine, or conventional when they are claimed in a generic manner (meaning they don’t add significantly more to a judicial exception to patent eligibility)

A

1) Performing repetitive calculations

2) receiving, processing, and storing data

3) electronically scanning or extracting data from a physical document

4) electronic record-keeping

5) automating mental tasks

6) receiving or transmitting data over a network

202
Q

Characteristics that, when are markedly different than a nature-based product, will render an invention patent eligible

A

1) biological or pharmalogical functions or activities

2) chemical and physical properties

3) phenotype, including functional and structural characteristics

4) structure and form, whether chemical, genetic, or physical

203
Q

When may the USPTO suspend/exclude an individual from practice?

A

Only if they have been convicted of a serious crime

204
Q

Does an application have to be in english to get a filing date?

A

No! Translation is just needed in response to the subsequent notice of missing parts

205
Q

What are the required elements of an International Design Application?

A

1) Drawings

2) Request for treatment as an International Design Application

3) Contact information

4) Applicant’s identity

5) At least one contracting party

206
Q

The international filing date of an International Industrial design application is _______

A

Date of receipt in the office of indirect filing

207
Q

The date of registration of the international design application is ______

A

Date of receipt in the office of indirect filing

208
Q

The US filing date of a US design patent that comes from an international design application is ________

A

Date of indirect filing of a complete application

209
Q

Examination of international design applications in Geneva looks for ______

A

Formal completion (not patentability issues)

210
Q

What does the applicant need to do to obtain US examination of an international design patent after it’s been published by the International Bureau in Geneva?

A

Nothing, it’s automatic

211
Q

What happens when an applicant receives a Notification of Refusal in an international design application?

A

Prosecution begins just like any other application

212
Q

When can a substitute specification be filed?

A

At any time up until the issue fee is paid

213
Q

What is the 102e date before November 29, 2000?

A

When the fee, oath, and translation have all been submitted

214
Q

What is the 102e date after November 29, 2000?

A

Designates the united states and is published in English

215
Q

What happens if a reexamination and a reissue are happening at the same time?

A

They can be merged into a single proceeding

216
Q

Dependent claims can only _____, but cannot _______

A

Dependent claims can only further limit the independent claim, they cannot broaden

217
Q

Nonstatutory double patenting is the same as ______ double patenting

A

Obviousness type double patenting

218
Q

Statutory double patenting is the same as ______ double patenting

A

Same invention type double patenting

219
Q

Title of an invention in a patent must be shorter than ______

A

500 Characters

220
Q

Ink drawings and photographs may not be _____ in a design patent

A

Combined, only one or the other may be used

221
Q

Photographs submitted in design patents must not disclose _______

A

Environmental structure (only drawings can)

222
Q

Certificate of correction can only be used to correct inventorship when ______

A

All parties are in agreement. If they are not, then file a reissue

223
Q

The nonanalogous art argument is only possible to refute a ____ rejection

A

103 (does not work for 102)

224
Q

How can you overcome a statutory/same invention type double patenting rejection?

A

Amend the conflicting claims so that they are not coextensive in scope (no terminal disclaimers, only for obviousness/nonstatutory type double patenting)

225
Q

CPAs (1.53(d)) only apply to _____ patents

A

Design Patents

226
Q

Declassified material is considered prior art as of ______

A

The date of release following declassification

227
Q

Factors that determine whether necessary experimentation is “undue”?

A

1) Breadth of the claims

2) Nature of the invention

3) State of the prior art

4) Level of one of ordinary sill

228
Q

Preliminary amendment filed with an application is ______

A

Considered part of the original disclosure

229
Q

The patentability of a product-by-process claim is determined based on _____

A

The product itself (process steps don’t matter)

230
Q

If the subject matter found in the claim is lacking in the drawing or detailed description (as originally filed), it is the _____ that is defective.

A

Drawing/descriptions, NOT the claims.

231
Q

A claim that depends from a claim which “consists of” recited steps cannot _____

A

Add further steps

232
Q

Which applications can be filed via facsimile?

A

CPAs

233
Q

How can you undo a request for nonpublication (for example if you needed to because you filed a foreign patent application)?

A

Rescind the nonpublication request within 45 days of the foreign filing

234
Q

What can you do as a response to a requirement for information?

A

1) Submit the information

2) Statement that the information is unknown and not readily available

235
Q

Can RCEs be filed via facsimile?

A

Yes

236
Q

In order for a rejection to be final, the rejection must have been made _____

A

Twice

237
Q

What has to have happened to the claims in order for you to be able to file a notice of appeal?

A

At least one has to have been finally rejected/twice rejected (not all of them)

238
Q

Fees requesting action by the USPTO must be paid ____

A

In advance, that is, at the time of requesting any action

239
Q

What is the form of a jepson claim?

A

“where\in the improvement comprises”

240
Q

What happens if you use a jepson claim?

A

Everything mentioned before “wherein the improvement comprises” is considered admitted prior art

241
Q

The location of interviews with the examiner must be _____

A

PTO premises

242
Q

Interviews with the examiner about patentability before the first office action are only allowed in _____

A

Continuations and substitutes

243
Q

Written assertion of small entity status must be ____

A

1) clearly identifiable

2) be signed

3) convey the concept of entitlement to small entity status

244
Q

Something mailed only gets the benefit of a certificate of mailing if _____

A

It is mailed from within the US

245
Q

How can you assign your invention to the public?

A

A disclaimer

246
Q

For what time periods can you assign your invention to the public?

A

Either the entire patent term or a terminal period (meaning the time period of when its assigned to the public ends when the patent term ends)

247
Q

If the examiner is sustained in whole or in part, what happens to dependent claims that were allowable prior to appeal except for their dependency on a rejected claim?

A

They are treated as rejected (this is NOT the case if the board reverses the rejection of the dependent claims)

248
Q

What can you do to overcome a rejection based on 102(a)(2)?

A

1) Argue that the claims are patentably distinct from the prior rat

2) File a 1.130 affidavit showing that the reference is your own work

3) File a 1.130 affidavit showing you had a public disclosure that predates the reference, but is also within 1 year of your filing date

249
Q

A prime facie case of obviousness exists where the claimed numerical ranges and the prior art are ______

A

Close enough that one of ordinary skill in the art would expect them to have the same properties (34.9% and 35% are close enough that one is obvious over the over)

250
Q

Objections to drawings will not be _____

A

Held in abeyance (temporarily suspended)

251
Q

Claims in a patent application may not contain ______

A

Drawings or flow diagrams

252
Q

Claiming small entity status in a continuation/divisional/CIP/reissue requires _____

A

Specific establishment of small entity status (does not carry over from original)

253
Q

Rejections are ______

A

Appealable

254
Q

Objections are _______

A

Petitionable

255
Q

If the form of a claim is improper, a ______ is made

A

Objection (not rejection)

256
Q

If a patent issues to an assignee, the assignee will be listed on the _______

A

Issue Fee Transmittal Form (if assignee is not listed, the patent has issued to the applicant)

257
Q

If small entity status is lost or claimed in error, you file a ____ and pay the _______

A

1.28(c) form and pay the deficiency in fees owed

258
Q

Who may file a broadening reissue?

A

Only the applicant/inventor (not the assignee)

259
Q

A deficiency under USC 101 also creates a deficiency in USC _____

A

112

260
Q

When filing an appeal brief, if you state that the claims stand or fall together, what must else be presented?

A

Arguments for why this is the case, otherwise the appeal brief is defective

261
Q

Something which is old does not become patentable upon the discovery of a ______

A

New property

262
Q

What constitutes an enabling disclosure does not depend on _______

A

What type of prior art the disclosure is contained in

263
Q

A non-enabling reference may only qualify as prior art for the purpose of determining _______

A

Obviousness (not novelty, but must enabling to determine novelty)

264
Q

A notice of appeal does not need to be ______

A

Signed

265
Q

Limitations that do not find support in the original specification must be _______

A

Considered and evaluated (if new matter is added to a claim in an amendment, it will be rejected under 112, but it will also be evaluated in terms of obviousness and others)

266
Q

RCE fees are ______ for small entities

A

Reduced

267
Q

Abandoned applications can be incorporated by reference if _____

A

They are less than 20 years old

268
Q

Incorporation by reference to a hyperlink is _____

A

Not permitted

269
Q

Employees of the USPTO are prohibited from applying for patents during the period of their employment and _____ years after

A

1

270
Q

When will information disclosure statements not be considered?

A

After payment of the issue fee

271
Q

If an application is claiming the same invention as a patent that issued more than a year before, the claims should be _____

A

Rejected by 135(b) (not interference or derivation)

272
Q

Appeal briefs must disclose ______

A

Real party of interest, including licensees

273
Q

Amendments filed after the appeal brief is filed can only ______

A

1) Rewrite dependent claims into independent format

2) Cancel claims, where it doesn’t affect the scope of other claims

274
Q

If the board remands to the examiner for further consideration of a rejection, what can you do and when?

A

Within 2 months of the supplement examiner’s answer, you can

1) Reopen prosecution

2) Maintain appeal

275
Q

In addition to being banned from applying for patents, PTO employees are also banned from _____

A

Acquiring interest in patents

276
Q

Inventor is hospitalized, on vacation, or out of town and unable to be reached

A

Not appropriate situations to file a substitute statement

277
Q

Drawings submitted after after the filing date may not _____

A

Be used to overcome a lack of enablement in the disclosure

278
Q

PCT applications cannot be _____

A

Designs

279
Q

Declarations do not need to be ______

A

Notarized

280
Q

The detailed description can only contain reference characters that _____

A

Show up in the drawings

281
Q

The summary of the invention is different than the ______ and geared toward the _____ not the _____.

A

Abstract and geared toward the invention not the disclosure as a whole

282
Q

Deadline to submit a protest

A

The earlier of

1) Publication

2) Notice of allowance

283
Q

A _____ cannot be given power of attorney

A

Law firm

284
Q

Mailed publications are considered prior art as of ______

A

The date they are received (NOT the mailing date)

285
Q

When a claimed composition or machine is disclosed identically by a reference, an _______ may be relied on to show that the primary reference has an “enabled disclosure

A

Additional reference

286
Q

Independent claims and its dependent claims must have _____

A

Agreeing preambles

287
Q

A specification need not disclose ______

A

What is well-known to those skilled in the art, and may omit that which is well-known to those skilled and already available to the public.

288
Q

Expert’s opinion on the ultimate legal conclusion must be

A

Supported by something more than a conclusory statement, needs actual evidence

289
Q

Notice of Appeals cannot be used to argue ______

A

The impropriety of the finality of a rejection

290
Q

How can you argue the propriety of a final rejection (whether the finality of it is appropriate)?

A

1) Request for consideration

2) Petition under 1.181

291
Q

If new matter is added to the specification, there will be an _______ which is ______

A

Objection which is petitionable

292
Q

If new matter is added to the claims, there will be a ________ which is ______

A

Rejection which is appealable

293
Q

If there is new matter added to both the claims and the specification, and there is both a rejection and an objection, it is ______

A

Appealable, not petitionable

294
Q

Extensions of time in reexamination are ______

A

For cause, not automatic

295
Q

Claim language must be analyzed not in a vacuum, but in light of

A

1) Content of the disclosure

2) teachings of the prior art

3) interpretation that would be given by one of ordinary skill in the art

296
Q

Only the ______ may intervene/exclude inventors

A

Assignee of the entire interest of the patent

297
Q

You cannot claim a nonelected invention in a ______

A

Reissue (if you face a restriction requirement, and elect one of the inventions and never pursue the other invention, you cannot file a reissue, not even a divisional reissue, to claim that invention that was given up)

298
Q

If a patent has been published, any member of the public can ______

A

Obtain access to it by payment of a fee, even if it’s been abandoned

299
Q

Any patent filed prior to _____ is ineligible for Patent Term Adjustment

A

May 29, 2000

300
Q

When are supplemental oaths/declarations considered an amendment?

A

In a reissue after a notice of allowance

301
Q

Abandoned applications can become prior art if they are _____

A

Incorporated by reference into a published application or issued patent

302
Q

International applications cannot be filed via ______

A

Facsimile

303
Q

Simulated or predicted results are _____

A

Allowable as patentable

304
Q

If something is shown to be an inherent property that is known in the ordinary skill of the art, lack of the inherent element in a prior art reference _____

A

Does not preclude anticipation

305
Q

An obviousness analysis ascertains whether ______ would be obvious to one of ordinary skill in the art

A

The invention as a whole, NOT the differences between the prior art and the invention

306
Q

Each oath/declaration of joint inventors must _____

A

State that they are joint inventors

307
Q

If the examiner does not establish a prime facie case of obviousness with evidence, the applicant is under no obligation to _____

A

Show evidence of nonobviousness

308
Q

The mere filing of a petition will not _____

A

Stay/delay the period for reply in any outstanding actions

Patent Bar (1 decks)

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