sections Flashcards
Pre-AIA
35 USC 102
2100 law 700 examination (apply)
patentable SM
2100 patentability
Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1
2100
“Written Description” Requirement
The Enablement Requirement
The Best Mode Requirement
Claim interpretation
2100
broadest reasonable consistent with the spec
plain meaning
Proper multi-dependent claim
Product-by-Process Claims
Apparatus and Article Claims —
Functional Language
2100
prior art under different sections of law vs. all types of stuff that can be prior art abandoned app canceled matter admissions (jepson claim) Genus-species situations
2100
900 all types of stuff that can be prior art
35 USC 103
2100
obviousness
2100 law 700 examination (apply)
AIA 102
2100 law 700 examination (apply)
Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections under AIA 102
2100
Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, para. 2
2100
Subject Matter Which the Inventor or
a Joint Inventor Regards as The
Invention
Claims Must Particularly Point Out and Distinctly Claim the Invention (interpretation, )
Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation
2100
means plus function language
Will be invoked if 3-prong test:
o Claim limitations must use the phrase “means for” or “step for”
o The “means for” or “step for” must be modified by functional language; and
o “means for” or “step for” must not be modified by structure, material or acts for achieving the function
the broadest reasonable interpretation of a claim limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act.
design patent
1500
plant patent
1600
biotech
2400
rejection of claims
700 examination
Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a); 1.132
700
parts, form and content of applications
600
Pre/post-AIA Oaths and declarations
600
Alteration of a patent app before filing
600
• Inventorship
600
• Notice of omitted items
600
Multiple dependent claims requirements
608.01n
• Incorporation by reference
600
• App Data Sheet (ADS)
600
• Information disclosure statement (IDS)
2000
duty of disclosure
2000
related to IDS
Types of Applications
200
Status of Applications
200
protest
1900
statutory invention registration (SIR) (pre-AIA) and the pre-grant publication process and document
o Prior art under 102(e) of the filing date but doesn’t confer right to exclude
1100
appeal
1200
allowance and issue
1300
Patent term and term extension/ adjustment
2700
Secrecy, Access (Information on the Status of an Application), National Security & Foreign Filing (license)
100
Ownership and Assignment (assignability)
300
Representative of Inventor or Owner
400
Receipt and Handling of Mail and Papers
500
Restriction and Double Patenting
800
Classification and Search
900
Matters Decided by PTO Officials – Petitions
1000
PCT
1800
interferences
2300
Maintenance Fees
2500
Reexam (Inter Parte)
2600
Citation of Prior Art and Ex Parte Reexam
2200
Prior Art? Classification, and Search
900
canceled matter in patent files, abandoned apps, peding apps, foreign patent non patent publication
Amendment, applicant’s action
714
“The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.”
1215
correcting inventor’s name/ inventorship
602
Accessibility of Assignment Records
301
Application Filed Without All Pages of Specification
600
disclosure
608 including claims drawings and specification
continuation-in-part application vs. continued prosecution
application (CPA)
200 types of application
Indefinite Limitations Must Be Considered
2143
Period for Reply
710
A submission of patents by a member of the public
37 C.F.R. § 1.99(e)
whether former employee can acquire ownership interest in patent
309 ownership and assignment
IMPROPER CPA TREATED AS RCE
706
election made through phone
800 restriction
Right of Priority of Foreign Application
213
Examiner’s Amendments and Changes
1300 Allowance and Issue
Compact Disc Submissions
600
PCT flow chart for timeline
1842
PPH
708 petition to make special
petition to make special
708
period for reply
710
patent prosecution highway program
708.02c
abandonment
711 3 kinds
PETITIONSTOREVIVEANABANDONED APPLICATION
711
in ex parte reexam, The examiner may also reject the claims based upon other prior art such as public use so long as the request was granted based upon a prior patent or publication.
false; 2200
Information that may be submitted under 35 U.S.C. 301 is limited to prior art consisting of patents or printed publications or written statements of the patent owner filed in a proceeding before a federal court or the Office by the patent owner in which the patent owner took a position on the scope of any claim of the patent.
If the Request for Reexamination had been denied because the Patent Office did not agree that a substantial new question of patentability was raised, then Megacorp would have been refunded a major portion of the fee.
2200; true
If the Request for Reexamination had been denied because the Patent Office did not agree that a substantial new question of patentability was raised, then Megacorp would have been refunded a major portion of the fee.
2200; true
Ex parte reexaminations of patents in litigation are automatically suspended until the litigation is concluded.
false, 2200
When is the last day that a third-party preissuance submission could have been filed?
1100
1134.01 Third Party Submissions
the day BEFORE the critical date, e.g. Notice of Allowance
Any third-party submission under this section must be filed PRIOR TO the earlier of:(1) The date a notice of allowance under § 1.311 is given or mailed in the application; or(2) The later of:(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or(ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.
After a patent is issued to Wilbur’s niece Shirley she discovers that the Patent Office omitted two lines of claim 1 in printing the patent. You should:
1400
File a request for a Certificate of Correction.
all the required showing to rebut obviousness using 1.132
unexpected results, commercial success…
716-Affidavits or Declarations Traversing Rejections, 37 CFR 1.132
transitional phrases, preamble
2111
Inherency; Burden of Proof
2112-
rejection against different kinds of claims
2100
Drawings as Prior Art
2125
Domestic and Foreign Patent Applications as Prior Art
2127-
Admissions as Prior Art
2129
Reasonable Expectation of Suc- cess Is Required for pima facie case of obvious
2143.02
103 rejection: Consideration of Applicant’s Rebuttal Arguments
2145
ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY
Relative Terminology
about, essentially…
2173.05(b)
WHEN A TERM OF DEGREE IS PRESENT, DE- TERMINE WHETHER A STANDARD IS DIS- CLOSED OR WHETHER ONE OF ORDINARY SKILL IN THE ART WOULD BE APPRISED OF THE SCOPE OF THE CLAIM
2171-Two Separate Requirements for Claims Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
2173-Claims Must Particularly Point Out and Distinctly Claim the Invention
Relationship Between the Require- ments of the First and Second Para- graphs of 35 U.S.C. 112
2174
Making a Prima Facie Case of Equivalence of means plus function 112 6th para
2183-
JURISDICTION OF BOARD in appeal, when does it start when does it end
1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision
I. JURISDICTION OF BOARD
Jurisdiction over the proceeding
passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier.
End of jurisdiction. The jurisdiction of the Board ends when:
(1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with § 1.138 of this title is recognized,
(4) A request for continued examination is filed which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see § 41.50(b)(1)).
appellant’s option after the board remand
1207.05 Substitute Examiner’s Answer
I. SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION OF REJECTION
A. Appellant’s Reply
reopen or maintain
if appellant choose to maintain appeal by filing a reply brief is accompanied by any amendment, affidavit or other evidence after the board remand, what happens
Maintain appeal .Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner
a proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form, what happens
1211.02 Remand To Consider Amendment
There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal. However, a proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form may be remanded for consideration by the examiner. See MPEP § 1206.
If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.
Review of undesignated new ground of rejection by board decision
1213 Decision by Board
1213.02 New Grounds of Rejection by Board
Any request to seek review of a panel’s failure to designate a new ground of rejection in its decision must be raised by filing a request for rehearing as set forth in § 41.52. Failure of appellant to timely file such a request for rehearing will constitute a waiver of any arguments that a decision contains an undesignated new ground of rejection.
If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board
1214.01 Procedure Following New Ground of Rejection by Board
I. SUBMISSION OF AMENDMENT OR NEW EVIDENCE
If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing
REQUEST FOR REHEARING
1214.01 Procedure Following New Ground of Rejection by Board
II. REQUEST FOR REHEARING
1214.03 Rehearing
treatment of claims after board’s decision
1214-Procedure Following Decision by Board
1214.06 Examiner Sustained in Whole or in Part
after appeal
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated
If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed
1214.06 Examiner Sustained in Whole or in Part
I. NO CLAIMS STAND ALLOWED
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A) If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
(B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
(1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
(2) Set a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the application is abandoned since no claims stand allowed.
third party submission
1134
preissuance submisson
1134 third party submission
Processing of prior art citations during an ex parte reexamination proceeding
2202
1.502
Trade Secret, Proprietary, and Protective Order Materials
724
Which of the following patent applications can be filed by facsimile
512 Certificate of Mailing or Transmission
amendment in PCT app
Article 34 of the PCT relates to procedures before the International Preliminary Examining Authority, and grants the applicant the right to amend the claims, the description, and the drawings before the international preliminary examination report is established. The amendment made pursuant to Article 34 must not go beyond the disclosure in the international application as filed.
Examination by the International Preliminary Examining Authority will start either by the expiration of the 22nd month from the priority date, or three months from the date of transmittal of the international search report, whichever is later. In this case, three months from the transmittal of the international search report is November 7, 2012, and 22 months from the priority date is February 7, 2013. Therefore, the later is February 7, 2013. Thus, amendments made pursuant to Article 34 of the PCT must be made by February 7, 2013.
Amendments may, however, also be made under Article 19 of the PCT. Article 19 deals with amending the claims before the International Bureau. The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the date the report and opinion are mailed, whichever expires later.
