Random Flashcards
Terminal Disclaimer
Terminal Disclaimer is NOT effective in overcoming a statutory double patenting to rejection.
Plant Act
Tuber propagated plants are exempted from panting under the Plant Act.
CPA
Continued Prosecution Application: Does not allow Continuation-In-Part CPA application. Request for CPA can be filed by fax and processed entirely by the examining group. CPA will have the same file jacket as the prior application. Application number remains the same. For the priority to be granted, CPA does not need to mention prior application in the first paragraph of the specification.
Design Patent claiming priority
U.S. Designed application claiming priority to a foreign application must be filed within six months to properly claim priority.
Double patenting rejection
Is improper when the inventions are independent and patentably distinct. Therefore, patentably obvious type rejection is improper.
Notice of Appeal
From the date the notice of appeal received in the PTO, you have two months to file the appeal brief. This can be extended additional 5 months.
In case of “Notice of Appeal” only, receipt at the PTO will be used for calculating further due dates. For NOA filed on the last day due, using a Certificate of Mailing [June 1], and RECEIVED at PTO on June 4th, the Appeal Brief is due TWO months from June 4, not June 1.
Amendments to Re-issue app
Hand written amendments are not allowed.
Name change
For a pending application, if you need to change the name, you must file a petition with the fee directed to Office of the Assistant Commissioner requesting the change.
Perfect Foreign Priority
A claim for benefit of foreign priority must be filed, with a certify copy of the foreign application, along with English translation of the application.
CPA
Cannot add an inventor when you are filing a CPA.
Also cannot be filed until the application is complete. Thus trying to file an CPA when there is missing parts, will result in abandonment of the application.
Notice of Appeal
Need not be signed. However, authorization to charged the deposit account must be signed.
Product by process claim
Patentability of a product-by-process claim is based on the product itself and does not depend on its method of production. In other words, if the product in the product-by-process claim is the same as or obvious from a prior art product, the claim is unpatentable even though the prior art product was made by a different process. As with inherency, once the examiner issues a rejection based on a product appearing to be substantially identical, the burden shifts to the applicant to show a non-obvious difference.
Prior Art
An applicant’s statement in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art. Thus, prosecutors should be careful when labeling subject material as “prior art” because such as admission may be used against the applicant either by the examiner during prosecution or in litigation. It is important to note that merely listing a reference in an information disclosure statement (“IDS”) is not an admission that the reference is prior art against the claims. Remember, the filing of an IDS only means that the applicant believes that the information submitted in the IDS is material to patentability – no inference is drawn as to its applicability as prior art.
102(b)
Section 102(b) is a statutory bar to the patentability of an invention. In other words, if Section 102(b) properly applies, the applicant cannot overcome the rejection and generally must amend or cancel the rejected claims. In addition to rejections based on printed publication, Section 102(b) sets forth both the “public use” and “on-sale” statutory bars. Both of these bars relate to activity occurring more than one year prior to the effective date of the patent application, and both bars require that the activity occur in the United States (i.e., “in this country”).
Public use bar
A public use will act as a bar if the use was (1) accessible to the public or (2) commercially exploited. Remember that mere knowledge of the invention by the public does not warrant a rejection under Section 102(b).
As long as the invention is used in its natural and intended way and is accessible to the public, a public use has occurred. On the other hand, an inventor’s private use of his invention, for example for his or her own enjoyment, is not a public use because the invention was not accessible to the public.
112 Specification Requirements
Written Description = possession
Enablement = w/o undue experimentation
Best Mode
PCT- International Filing date MPEP 1810
- Designation of least one contracting state
- Part of the application which appears to be a claim
- Application in a language prescribed by the receiving office
Review of New Matter
Objections/ Rejections
MPEP 2163.06
A rejection of claims is reviewable by the Board of Patent Appeals and Interferences, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.
Request for Interview
[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications[,] [a] request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a).”
Re-examination proceeding
MPEP 2258
an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office . . . An ex parte reexamination proceeding terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent . . . was unavoidable in accordance with 37 CFR 1.137(a), or unintentional in accordance with 37 CFR 1.137(b).”
In a reexamination proceeding, requests for extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to 37 CFR § 1.550(c). See MPEP § 2265.
Patent Term Adjustment
MPEP 2730
Applications filed prior to May 29, 2000 are ineligible for PTA.
Only UTILITY patents can get a PTA b/c Design patents are 14 years from the date of issue while, Utility are 20 years from the earliest effective filing date.
PCT
Cannot file the contracting state using FAX. It is improper.
Amendments
All must be in writing, signed by the inventor or his representative, and must address all objections and rejections.
Amendments after a final rejection are usually improper, except: 1. Canceling or complying with instructions from the previous office action; 2. Amendment present rejected claims in a better form for appeal; 3. necessary in a case of re-examination or showing good cause.