Patent Bar Flashcards
PLTIA
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)
GATT (general agreement on tariffs and treaties)
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
Number of claims in a design patent
One
Design patent claim preamble
“The ornamental design as shown and described”
1 year response period
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
Foreign priority deadlines
1 year for utility and plant applications
6 months for design
What can never be added to an application
New Matter
Basis for reexamination
Only patents and printed publications
6 month rule
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
What is the term of a patent? (non-design)
20 years from first non-provisional filing date (Before June 8, 1995 it was 17 years from date of issue)
What is the term of a design patent?
Before May 13, 2015 14 years from issue; after that 15 years from issue (Hague Agreement)
When can you suspend prosecution
Only when there are no outstanding actions
Recording of an assignment must
be in English or feature a translation
Continuations, divisional’s, and continuation-in-parts must be ______ with their parents
Copending
2 year deadline
Deadline for filing broadened reissue;
Time limit for reviving patent lapsed for failure to pay maintenance fee
5 Years
The maximum time of term extension for delay in appeal under PTE (patent term extension)
How do you calculate the filing deadline for a preissuance submission?
- the LATER of (a) 6 months after the date on which the application is published, or (b) the date of the first rejection;
- the EARLIER of this date or the notice of allowance
AIA Phase 2
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
March 16, 2013
Implementation of AIA 102 and first to file system
Extension of time to pay issue fee
CANNOT EXTEND
Broadening claims in reexamination
CANNOT BROADEN
How to make changes to an inventor’s oath/declaration
Cannot amend, must submit new/amend ADS
Terminal disclaimer appplies when
Obviousness type double patenting
Recapture
In a reissue, cannot broaden to claim subject matter given up during prosecution
Only residents/nationals of a country can _____
File a PCT there
______ are prohibited in supplemental examination
Interviews
No _____ may be filed in a supplemental examination
Amendments
What do you need to obtain a filing date?
Only a specification
Issue fee can be paid late if
Unintentional or unavoidable
If patent is lapses because the issue fee inadvertently wasn’t paid, it can be ____ within _____
Revived within 2 years
Ways to obtain a foreign filing license
1) Filing receipt
2) Petitioning the commissioner to ask for one
3) Automatically 6 months from filing (ALL patents)
Petition to make special (4 things)
1) Applicant’s age or health
2) Renewable energy
3) Environment
4) Terrorism
Inventoris dead/incapacitated/lost
Substitute statement in lieu of
Patent issues and you think your claims are too narrow, so you ______
File a reissue (within 2 years)
Obtain a filing date the day you mail something
Express Mail
Extensions of time in a reexamination must be filed ____
Before the deadline to respond
Ways to correct priority claims in an issued patent
1) Reissue
2) Certificate of correction (if its a continuation and the parent’s priority claim is good)
You’ve received a final rejection and want to enter an amendment that’s been refused and don’t want to appeal
RCE or continuation
You want to bring prior art to the attention of the patent office in an application which you are not a part of
1) Protest
2) Third party pre-issuance submission
Application was filed in a foreign country without a foreign filing license
Obtain a retroactive foreign filing license
Minor mistake in your patent when its issued
Certificate of Correction
Minor mistake in your patent that was the mistake of the patent office
Certificate of Correction (no fee)
When can all issues be considered in reexamination?
If a supplemental examination initiates it
Two things that the six month rule doesn’t apply to
1) Appeal brief
2) notice of missing parts
Only section of 102 that you can use to reject a claim
102(a)
The only people that are barred from getting a patent
PTO employees
1.53(d) continuations/divisionals
Only design patents
Claim limit for prioritized examination
4 independent, 30 total, no multiple dependents
Applications not allowed for prioritized examination
Designs, provisionals, reissues, reexamination, PCT applications that haven’t entered the national stage
Applications allowed for prioritized examination
Utility non-provisional patents, continuations, plant applications, PCT applications that have entered the national stage, RCEs (only can apply once)
Prioritized examination is terminated when
Anything closing prosecution (allowance, final rejection)
Actions that cancel prioritized examination and place it on regular docket
Adding too many claims, extending time.
Prioritized examination must be _____
Ready for examination (fee, claims, everything included)
Who can file a derivation proceeding?
Any 3rd party
When can you file a derivation proceeding?
Within 1 year of first publication of the claims of earlier invention
For a derivation proceeding, claims must be _____
The same or substantially the same
Which patents can undergo derivation?
Only AIA
Inter Partes Reexamination ____
Does not exist anymore
Who can file an IPR?
3rd party
What can you rely on to file IPR
Only patents and printed publications
When can you file an IPR
9 months after issuance or after PGR is completed
Must be a _____ to file IPR
Reasonable likelihood of success
IPR is only available after______
September 16 2012
Who can file post grant review?
Anyone
Which patents are available for post grant review?
Only AIA
Which patents are subject to IPR?
All patents
When can you file a post grant review?
Within 9 months of issuance
What can be used in a post grant review?
All patentability issues
What is the threshold for post grant review?
Preponderance of evidence (high threshold)
Who can file a covered business method?
Bank/financial service company that has been sued
When can you file a covered business method?
After post grant review is completed
Which patents are subject to covered business method?
All patents related to banking, finance, etc.
Which issues can be brought up in covered business methods?
All patentability issues
Who can file reexamination?
Anyone
When can reexamination be filed?
Until 6 years after the expiration of the patent.
Which patents are subject to reexamination?
All patents
What is the standard for initiating a reexamination?
Substantial new question of patentability
What happens at the conclusion of reexamination?
Reexamination certificate
What can you not do in reexamination?
Broaden claims
Certificate of Correction to correct priority claim
Only for continuations when the parent’s priority is perfected
Terminal disclaimer doesn’t apply when
Same invention type double patenting
When can a patent be revived?
When it was unintentionally abandoned (not unavoidably, that was removed with PLTIA)
To patent a plant it must have been
Asexually produced
Extensions of time in reexamination are _______
Not automatic, only for cause
When are you officially withdrawn from representing a client?
When the Commissioner approves your request
Five month response period
Maximum automatic extension of time
Multiple dependent claims cannot _____ on _____
depend on multiple dependent claims
What must you do in a restriction requirement
Elect claims
Access to an unpublished, abandoned application
Mentioned in an issued patent
What must be identified on an inventor’s oath or declaration?
Must identify: inventor’s legal name (every inventor on an application must execute one), application, and inventor’s mailing address
How are dates of USPTO actions calculated?
All dates are calculated from MAILING DATE from the USPTO which is stamped on the action
When are maintenance fees due after issue of a patent?
3.5 years, 7.5 years, 11.5 years
Three months response period
Normal shortened statutory period to respond to Official Action;
Unextendable pay period to pay issue fee and file formal drawing;
When will applicant receive filing date at the patent office?
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
What is the minimum requirement to receive a provisional filing date?
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)
Two month response requirements
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
130 Affidavit
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
Continued prosecution application (CPA)
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
How can you correct inventorship in an application?
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
Application data sheet
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
Rules for joint inventorship
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
131 Affidavit
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
132 Affidavit
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.
Who is considered an applicant?
Inventor OR owner (the AIA introduced the concept of owner being an applicant)
What is the shortened statutory period for responding to a restriction requirement?
One month
Broadening claims in a reissue
Only within 2 years of issue
Interviews before official actions?
Only continuation
Who can file a PCT at the USPTO?
US residents and nationals
If filed at USPTO, must be in English
Requirements for filing PCT
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?)
What date did AIA go into effect?
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)
Derivation proceeding
Only applies to claims that are substantially the same
Has to be supported by substantial evidence
Only AIA
When can an appeal be filed?
After the final rejection or second office action
What is included in an appeal brief?
-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
What is included in an appeal?
Identify the applicant, list appeals and interferences, list claims that are being appealed, argue each rejection
Why might you file an appeal instead of a request for continued examination (RCE)?
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
How long do you have after notice of appeal to file an appeal brief?
Two months to file appeal brief, can buy 5 more months
What is required in an appeal brief?
Claims appendix
When does jurisdiction pass to the board in an appeal?
When the reply brief is filed or when the deadline to file an appeal brief has passed
Rule 1.181
Have rejection designated as a new ground of rejection
Two possible courses of action in response to an Examiner’s Answer
1) File a 1.181 petition to have it designated as a new ground of rejection
2) submit a reply brief
4 possible changes in a rejection that constitute a new ground of rejection
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
Dictionaries are considered ______
Standard references and can always be relied upon
Claims appendix should include _____
Claims involved in the appeal process
Rule 1.111
Reopens prosecution with the examiner
2 possible courses of action when request to have something designated as a new ground of rejection is granted
1) Request reconsideration by the board
2) Reopen prosecution with the examiner
How can a foreign filing license be acquired?
- Passage of six months following the filing of any U.S. application including a provisional
- By being granted specifically on the filing receipt
- 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.
Third Party Pre-issuance requirements
1) list of items
2) concise description of relevance
3) legible copies
4) translations
5) statement that the submission is compliant
6) fee
Documents that can be submitted in Third Party Preissuance submissions
Patents and printed publications only
Which patents do Third Party Pre-issuance submissions not apply to?
Provisionals or any post-issuance proceeding
Mailing for Third party pre-issuance proceedings
Only priority mail (certificate of mailing or fax do not work)
Who can file a third party pre-issuance submission?
A third party that does not have any duty to disclose information with regards to the patent
What cannot be submitted as a third party pre-issuance submission?
Documents with trade secrets or subject to secrecy orders (must be published)
Citation of prior art and written statements do not include ______
Statements made at the ITC
Citation of prior art/written statements during reexamination
Will only be considered in the reexamination if submitted by the patent owner or requester
The duty to disclose for citations of prior art is ______
Not continuing
3 requirements for citation of a patent owner’s statement
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
Substitute statement filed by someone with sufficient proprietary interest (NOT an assignee) needs to submit these 3 things
1) Fee
2) Proof of sufficient proprietary interest
3) Statement that the patent application is appropriate to preserve the rights of the parties
Who may request supplemental examination?
Only the patent owner (no licensees)
Which patents does supplemental examination apply to?
All patents
Which patentability issues does supplemental examination consider?
All patentability issues
Maximum number of items that can be submitted in supplemental examination
12
Reason for requesting supplemental examination
To inoculate the patent owner from any possibility of inequitable conduct in future cases
Which fees must be submitted with a request for supplemental examination?
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
Supplemental examination concludes with the granting of a _____
Supplemental examination certificate that says whether there is a substantial new question of patentability
What happens if a supplemental examination indicates there is a substantial new question of patentability?
Reexamination is ordered
Differences between standard reexamination and reexamination as a result of supplemental examination?
1) All patentability issues (not just patents and printed publications)
2) Patent owner does not have the right to make a statement
An application must include, or be amended to include, the name of the _____ for any invention claimed in the application.
Inventor (inventor must always be named, even if filed by the assignee or someone else)
2 requirements to file a substitute statement in lieu of an inventor
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
What is issued when an oath or declaration is not filed?
Notice of Missing Parts
When must you file an oath or declaration before September 16th, 2012?
Within 2 months (plus 5 months of automatic extension) of the Notice of Missing Parts
When must you file an oath or declaration on or after September 16th, 2012?
Before the application is in condition for allowance
What must an oath/declaration include?
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
Who can file a substitute statement?
1) Assignees
2) People of sufficient proprietary interest (not non-exclusive licensees)
What 3 things does a person of sufficient proprietary interest need to show to file a substitute statement?
1) Fee
2) Proof of the proprietary interest
3) statement that it is appropriate to preserve the rights of the invention
Oath or declaration does not have to identify inventor by name and mailing address if _______
That information is in an ADS
When is a patent examined under Pre-AIA and when is it examined under AIA?
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!
What must you submit when filing a transition application?
Statement notifying the Patent Office that this is a transition application
When must the statement that an application is a transition application be submitted by?
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
Interference
2 Pre-AIA patents claiming the same thing, interference determines who truly invented first
Who is the junior party and who is the senior party in an interference proceeding?
The person who filed 2nd is junior, person who filed 1st is senior
What must the junior party show to win the interference proceeding?
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
Who may not file their own patent application without the help of a patent practitioner?
Corporate or juristic entities
When must the issue fee be paid?
Within 3 months, nonextendable (can be paid late)
How do you correct inventorship in a pending application?
Rule 1.48, or also now just ADS
How do you correct inventorship in an issued patent?
Certificate of correction (reissue can fix inventorship but is unnecessary)
For something to be a prior art exception, joint inventorship must be in place when?
At the time of the effective filing date of the 2nd invention
Commissioner can suspend a patent practitioner from practicing when they are ______
Convicted of a “serious crime”
An application does not need to be in ______ to receive a filing date
English (translation can be filed later in response to a notice of missing parts)
How does someone that is not an agent/attorney/inventor but is still involved in the patent application process satisfy their duty of disclosure?
Must either notify PTO of relevant information OR notify agent/attorney/inventor
When did inter partes reexamination end?
September 16, 2012
What is the standard for granting an inter partes reexamination?
Reasonable likelihood of success
4 most common reasons to file a reissue
1) Claims are too narrow/broad
2) Disclosure contains inaccuracies
3) Correct foreign priority claim
4) Correct references to parent applications
How would you correct a failure to claim foreign priority in an issued patent?
Reissue
How do you submit documents that are secret during prosecution?
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
Small entity status is not obtainable if you license to large entities, with the exception of _____
The federal government. Licensing to the federal government does not prevent small entity status from being claimed
Deleted characters in a claim amendment must be ______
Struck through
When can you delete characters from claims in an amendment with double brackets?
If its less than 5 characters
When can an S-signature be used?
When filing through EFS
Best mode requirement only applies to ______
The invention being claimed, not something that is disclosed but not claimed
Fax can be used to submit _____
Office actions
What is the only type of application that be filed via fax?
CPA (53(d))
USPTO will accept PCT applications if ____?
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
Examiner’s amendment
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
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)?
Those claims will be dismissed
What happens to an IDS submitted after the issue fee has been paid?
Put into the file but not considered by the examiner
Two month rule
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
Transitory signals are ______
Not patentable subject matter
What can the examiner require the applicant to bring to an interview before the first office action?
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
Who can communicate with the examiner?
ONLY the applicant/representative, examiners are forbidden from communication with unregistered individuals
When can Article 34 amendments be made?
By the later of 1) 22 months from priority date and 2) 3 months from the date of transmittal of the international search report
When can article 19 amendments be made?
By the later of 1) 16 months from the priority date and 2) two months from the date the report and opinion are mailed
When can you appeal the decision to institute inter partes review?
Never, it’s unappealable
Where do you appeal inter partes review decisions to?
Federal Circuit
What are the four statutory categories of inventions?
1) Processes
2) Machine
3) Manufacture
4) Composition of matter
What are the three judicial exceptions to patentable subject matter?
1) Abstract ideas
2) Law of nature
3) Natural phenomena
What is the first step of the patentability test?
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
What is the step after deciding an invention is one of the statutory categories?
Is it one of the judicial exceptions? If not, it is patentable. If it is, proceed to next step
If an invention falls into a statutory category but also is a judicial exception, how can it be patentable?
If the claims amount to significantly more than the exception
Factors for what is considered “significantly more” (enough for an invention that is a judicial exception to be considered patentable)
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
Factors NOT considered significantly more when determining when an invention relating to a judicial exception
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
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)
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
Characteristics that, when are markedly different than a nature-based product, will render an invention patent eligible
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
When may the USPTO suspend/exclude an individual from practice?
Only if they have been convicted of a serious crime
Does an application have to be in english to get a filing date?
No! Translation is just needed in response to the subsequent notice of missing parts
What are the required elements of an International Design Application?
1) Drawings
2) Request for treatment as an International Design Application
3) Contact information
4) Applicant’s identity
5) At least one contracting party
The international filing date of an International Industrial design application is _______
Date of receipt in the office of indirect filing
The date of registration of the international design application is ______
Date of receipt in the office of indirect filing
The US filing date of a US design patent that comes from an international design application is ________
Date of indirect filing of a complete application
Examination of international design applications in Geneva looks for ______
Formal completion (not patentability issues)
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?
Nothing, it’s automatic
What happens when an applicant receives a Notification of Refusal in an international design application?
Prosecution begins just like any other application
When can a substitute specification be filed?
At any time up until the issue fee is paid
What is the 102e date before November 29, 2000?
When the fee, oath, and translation have all been submitted
What is the 102e date after November 29, 2000?
Designates the united states and is published in English
What happens if a reexamination and a reissue are happening at the same time?
They can be merged into a single proceeding
Dependent claims can only _____, but cannot _______
Dependent claims can only further limit the independent claim, they cannot broaden
Nonstatutory double patenting is the same as ______ double patenting
Obviousness type double patenting
Statutory double patenting is the same as ______ double patenting
Same invention type double patenting
Title of an invention in a patent must be shorter than ______
500 Characters
Ink drawings and photographs may not be _____ in a design patent
Combined, only one or the other may be used
Photographs submitted in design patents must not disclose _______
Environmental structure (only drawings can)
Certificate of correction can only be used to correct inventorship when ______
All parties are in agreement. If they are not, then file a reissue
The nonanalogous art argument is only possible to refute a ____ rejection
103 (does not work for 102)
How can you overcome a statutory/same invention type double patenting rejection?
Amend the conflicting claims so that they are not coextensive in scope (no terminal disclaimers, only for obviousness/nonstatutory type double patenting)
CPAs (1.53(d)) only apply to _____ patents
Design Patents
Declassified material is considered prior art as of ______
The date of release following declassification
Factors that determine whether necessary experimentation is “undue”?
1) Breadth of the claims
2) Nature of the invention
3) State of the prior art
4) Level of one of ordinary sill
Preliminary amendment filed with an application is ______
Considered part of the original disclosure
The patentability of a product-by-process claim is determined based on _____
The product itself (process steps don’t matter)
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.
Drawing/descriptions, NOT the claims.
A claim that depends from a claim which “consists of” recited steps cannot _____
Add further steps
Which applications can be filed via facsimile?
CPAs
How can you undo a request for nonpublication (for example if you needed to because you filed a foreign patent application)?
Rescind the nonpublication request within 45 days of the foreign filing
What can you do as a response to a requirement for information?
1) Submit the information
2) Statement that the information is unknown and not readily available
Can RCEs be filed via facsimile?
Yes
In order for a rejection to be final, the rejection must have been made _____
Twice
What has to have happened to the claims in order for you to be able to file a notice of appeal?
At least one has to have been finally rejected/twice rejected (not all of them)
Fees requesting action by the USPTO must be paid ____
In advance, that is, at the time of requesting any action
What is the form of a jepson claim?
“where\in the improvement comprises”
What happens if you use a jepson claim?
Everything mentioned before “wherein the improvement comprises” is considered admitted prior art
The location of interviews with the examiner must be _____
PTO premises
Interviews with the examiner about patentability before the first office action are only allowed in _____
Continuations and substitutes
Written assertion of small entity status must be ____
1) clearly identifiable
2) be signed
3) convey the concept of entitlement to small entity status
Something mailed only gets the benefit of a certificate of mailing if _____
It is mailed from within the US
How can you assign your invention to the public?
A disclaimer
For what time periods can you assign your invention to the public?
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)
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?
They are treated as rejected (this is NOT the case if the board reverses the rejection of the dependent claims)
What can you do to overcome a rejection based on 102(a)(2)?
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
A prime facie case of obviousness exists where the claimed numerical ranges and the prior art are ______
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)
Objections to drawings will not be _____
Held in abeyance (temporarily suspended)
Claims in a patent application may not contain ______
Drawings or flow diagrams
Claiming small entity status in a continuation/divisional/CIP/reissue requires _____
Specific establishment of small entity status (does not carry over from original)
Rejections are ______
Appealable
Objections are _______
Petitionable
If the form of a claim is improper, a ______ is made
Objection (not rejection)
If a patent issues to an assignee, the assignee will be listed on the _______
Issue Fee Transmittal Form (if assignee is not listed, the patent has issued to the applicant)
If small entity status is lost or claimed in error, you file a ____ and pay the _______
1.28(c) form and pay the deficiency in fees owed
Who may file a broadening reissue?
Only the applicant/inventor (not the assignee)
A deficiency under USC 101 also creates a deficiency in USC _____
112
When filing an appeal brief, if you state that the claims stand or fall together, what must else be presented?
Arguments for why this is the case, otherwise the appeal brief is defective
Something which is old does not become patentable upon the discovery of a ______
New property
What constitutes an enabling disclosure does not depend on _______
What type of prior art the disclosure is contained in
A non-enabling reference may only qualify as prior art for the purpose of determining _______
Obviousness (not novelty, but must enabling to determine novelty)
A notice of appeal does not need to be ______
Signed
Limitations that do not find support in the original specification must be _______
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)
RCE fees are ______ for small entities
Reduced
Abandoned applications can be incorporated by reference if _____
They are less than 20 years old
Incorporation by reference to a hyperlink is _____
Not permitted
Employees of the USPTO are prohibited from applying for patents during the period of their employment and _____ years after
1
When will information disclosure statements not be considered?
After payment of the issue fee
If an application is claiming the same invention as a patent that issued more than a year before, the claims should be _____
Rejected by 135(b) (not interference or derivation)
Appeal briefs must disclose ______
Real party of interest, including licensees
Amendments filed after the appeal brief is filed can only ______
1) Rewrite dependent claims into independent format
2) Cancel claims, where it doesn’t affect the scope of other claims
If the board remands to the examiner for further consideration of a rejection, what can you do and when?
Within 2 months of the supplement examiner’s answer, you can
1) Reopen prosecution
2) Maintain appeal
In addition to being banned from applying for patents, PTO employees are also banned from _____
Acquiring interest in patents
Inventor is hospitalized, on vacation, or out of town and unable to be reached
Not appropriate situations to file a substitute statement
Drawings submitted after after the filing date may not _____
Be used to overcome a lack of enablement in the disclosure
PCT applications cannot be _____
Designs
Declarations do not need to be ______
Notarized
The detailed description can only contain reference characters that _____
Show up in the drawings
The summary of the invention is different than the ______ and geared toward the _____ not the _____.
Abstract and geared toward the invention not the disclosure as a whole
Deadline to submit a protest
The earlier of
1) Publication
2) Notice of allowance
A _____ cannot be given power of attorney
Law firm
Mailed publications are considered prior art as of ______
The date they are received (NOT the mailing date)
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
Additional reference
Independent claims and its dependent claims must have _____
Agreeing preambles
A specification need not disclose ______
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.
Expert’s opinion on the ultimate legal conclusion must be
Supported by something more than a conclusory statement, needs actual evidence
Notice of Appeals cannot be used to argue ______
The impropriety of the finality of a rejection
How can you argue the propriety of a final rejection (whether the finality of it is appropriate)?
1) Request for consideration
2) Petition under 1.181
If new matter is added to the specification, there will be an _______ which is ______
Objection which is petitionable
If new matter is added to the claims, there will be a ________ which is ______
Rejection which is appealable
If there is new matter added to both the claims and the specification, and there is both a rejection and an objection, it is ______
Appealable, not petitionable
Extensions of time in reexamination are ______
For cause, not automatic
Claim language must be analyzed not in a vacuum, but in light of
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
Only the ______ may intervene/exclude inventors
Assignee of the entire interest of the patent
You cannot claim a nonelected invention in 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)
If a patent has been published, any member of the public can ______
Obtain access to it by payment of a fee, even if it’s been abandoned
Any patent filed prior to _____ is ineligible for Patent Term Adjustment
May 29, 2000
When are supplemental oaths/declarations considered an amendment?
In a reissue after a notice of allowance
Abandoned applications can become prior art if they are _____
Incorporated by reference into a published application or issued patent
International applications cannot be filed via ______
Facsimile
Simulated or predicted results are _____
Allowable as patentable
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 _____
Does not preclude anticipation
An obviousness analysis ascertains whether ______ would be obvious to one of ordinary skill in the art
The invention as a whole, NOT the differences between the prior art and the invention
Each oath/declaration of joint inventors must _____
State that they are joint inventors
If the examiner does not establish a prime facie case of obviousness with evidence, the applicant is under no obligation to _____
Show evidence of nonobviousness
The mere filing of a petition will not _____
Stay/delay the period for reply in any outstanding actions
