STUDY GUIDE SET 1 Flashcards
Suspended/excluded practitioner
Suspended/excluded practitioner: The Patent Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Applicant may, of course, file a new power of attorney to have a registered attorney or agent appointed to represent him before the Office. When the practitioner of record is suspended, an Office Action is mailed to the address of the inventor first named in the application. Incorrect answer indicated that a new practitioner is appointed ad litem by the Office. See MPEP § 407 for more information.
Correcting Foreign Priority Claim in a Reissue App
Correcting foreign priority claim in a reissue application: Reissue is also available to correct the “error” in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. § 119(a)-(d) before the original patent was granted. In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application and the patent to be reissued resulted from a utility or plant application filed on or after November 29, 2000, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 C.F.R. § 1.55(c) in addition to filing a reissue application. See MPEP § 201.14(a). Correct answer mentioned the required petition for an unintentionally delayed priority claim. See MPEP § 1417 for more information.
Correcting Foreign Priority Claim with a CoC
Correcting foreign priority claim with a CoC: A certificate of correction (CoC) under 35 U.S.C. § 255 and 37 C.F.R. § 1.323 may be requested and issued in order to perfect a claim for foreign priority in a patented continuing application if the requirements of 35 U.S.C. § 119(a)-(d) or (f) have been satisfied in the parent application prior to issuance of the patent and the requirements of 37 C.F.R. § 1.55(a) are met. Furthermore, if the continuing application which issued as a patent was filed on or after November 29, 2000, in addition to the filing of a certificate of correction request, patentee must also file a petition for an unintentionally delayed foreign priority claim under 37 C.F.R. § 1.55(c). Correct answer included petition for unintentionally delayed priority claim. See MPEP § 201.16 for more information.
Section 103 Rejections, when proper:
Section 103 rejections, when proper: Question stated that a Section 103(a) rejection was made based on a publication having the same inventive entity as the application. Correct answer noted that this rejection is improper because the publication is not prior art under any part of Section 102 statute, which defines the applicable world of prior art for a Section 103 rejection. Subject matter that is prior art under 102 can be used to support a rejection under 103. See MPEP § 2141.01 for more information.
Non-obviousness
Non-obviousness: Correct answer indicated that the absence of a property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of non-obviousness. See MPEP § 716.02(a) for more information. The incorrect answers were (1) producing evidence that all the beneficial results are expected based on the teachings of the prior art references; (2) producing evidence showing that unexpected results occur over less than the entire claimed range; and (3) producing evidence showing that the unexpected properties of a claimed invention have a significance less than or equal to the expected properties.
PTO officials:
PTO Officials: If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, application file, and an explanatory memorandum should be forwarded to the TC Director for consideration. See MPEP § 1003. If approved by the TC Director, the examiner’s answer should be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for final approval. See MPEP § 1208 for more information.
PCT application filed in USPTO receiving office not in prescribed language:
PCT application filed in USPTO receiving office not in prescribed language: PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as the Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 C.F.R. § 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date received by the United States Receiving Office. This practice avoids the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. See MPEP § 1805 for more information. Correct answer noted that the filing date of the application will be the date the application was received by the United States Receiving Office.
Delayed Priority Claim:
Delayed Priority Claim: Question dealt with a PCT application that was misclassified as a domestic application during entry to U.S. national stage. Question asked about the effect on a foreign priority claim which was made outside time frames to perfect a priority claim on account of the application being misclassified. Correct answer indicated that the delayed priority claim may be accepted if accompanied by a grantable petition to accept an unintentionally delayed claim for priority. A grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim for priority to the prior foreign application, unless previously submitted; (2) the surcharge; and (3) a statement that the entire delay between the date the claim was due and the date the claim was filed was unintentional. See MPEP § 201.14(a) for more information.
Minor Inventor
Minor inventor: A minor (under age 18) inventor may execute an oath or declaration under 37 C.F.R. § 1.63 as long as the person is competent to sign (i.e., understands the document). Incorrect answers stated that a person under 18 can never sign an oath even if he/she understands the document. See MPEP § 409 for more information.
Death of inventor with practitioner as part-assignee:
Death of inventor with practitioner as part-assignee: Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. Question asked about a practitioner that is part-assignee upon death of sole inventor. Correct answer noted that the power of attorney is accompanied with an interest and therefore the power of attorney remains in effect and is not terminated. See MPEP § 409.01 for more information.
Examiner considers amendment:
Examiner considers amendment: Jurisdiction passes to the Board: (A) After 2 months from the examiner’s answer, plus mail room time, if no reply brief has been timely filed; (B) After a supplemental examiner’s answer, pursuant to a remand from the Board, has been mailed; (C) After the examiner has notified the appellant by written communication that the reply brief has been entered and considered and that the application will be forwarded to the Board. Question asked
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when an amendment may be considered by the Examiner (e.g., jurisdiction has not passed to Board). Fact patterns A-C were provided as potential answers, making them incorrect. See MPEP § 1210 for more information.
Maintenance Fee Petition:
Maintenance Fee Petition under 37 C.F.R. § 1.377: Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest. Correct answer noted that the petition must be signed.
PCT/National Stage Inventor:
PCT/National Stage Inventor: If the inventor is not also the applicant, the designation of the United States is invalid. See MPEP 1817.01. Question asked if an agent with a proper power of attorney signed by one inventor can sign box IX. See MPEP § 1820 for more information. More specifically, the fact pattern in the question provided that one of three inventors signed the power of attorney, as well as assignee, which is proper. See PCT Rule 4.15(b).
National Stage Requirements:
National Stage Requirements (Multiple Questions): To begin entry into the national stage, applicant is required to comply with 37 C.F.R. § 1.495(b) within 30 months from the priority date. Thus, applicant must pay the basic national fee on or before 30 months from the priority date and be sure that a copy of the international application has been received by the U.S. Designated or Elected Office prior to expiration of 30 months from the priority date. Where the international application was filed with the United States Receiving Office as the competent receiving Office, the copy of the international application referred to in 37 C.F.R. § 1.495(b) is not required upon enter into national stage examination in the U.S. See MPEP § 1893.01(a).
Fax Transmission Not Acceptable:
Facsimile Transmission Not Acceptable: Question stated that applicant submitted basic national fee and the copy of the international application via facsimile transmission. Facsimile transmission is not acceptable for submission of the basic national fee and/or the copy of the international application. See MPEP § 1893.01(a)(1).
Revival of PCT Application:
Revival of PCT Application: Question dealt with revival under 37 C.F.R.§ 1.137 of a PCT application abandoned as to the United States national stage because the fees and documents required by 35 U.S.C. § 371(c) were not filed prior to the expiration of the time set in 37 C.F.R. § 1.494(b) or (c) or 1.495(b) or (c) (as applicable). A grantable petition requires the following items: (1) the petition fee; (2) a proper reply required to the outstanding Office Action or notice; and (3) a statement that the entire delay was unintentional. The correct answer noted both the petition and fee are required while the incorrect answers did not require the fee.
Nucleotide Sequence Listings:
Nucleotide Sequence Listings: A copy of the Sequence Listing must also be submitted in computer readable form (CRF) in accordance with the requirements of § 1.824. The computer readable form must be a copy of the Sequence Listing” and may not be retained as a part of the patent application
file. See 37 C.F.R. § 1.821 for more information. The correct answer stated that the CRF was required, not optional.
Certificate of Correction in a Reissue App:
CoC in a Reissue Application: The applicant should include any changes, additions, or deletions that were made by a Certificate of Correction to the original patent grant in the reissue application without underlining or bracketing. The examiner should make certain that all Certificate of Correction changes in the patent have been properly incorporated into the reissue application. See MPEP § 1411.01 for more information. Correct answer indicated that underlying and bracketing of changes should not be used.
Invalid Disclaimer:
Invalid Disclaimer: Question stated that while performing due diligence it was observed that a disclaimer in an allowed application whose issue fee has been paid is wholly invalid. An RCE and
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appeal brief were filed to inform the PTO of the invalid disclaimer. Question asked for the outcome of such a situation. An appeal brief is not a proper submission with an RCE, and thus the application will be patented because the RCE will be ignored. See MPEP § 706.07(h) for more information.
New Ground of Rejection Added by Board:
New Ground of Rejection Added by Board: If an appellant files an appropriate amendment or showing of facts as to less than all of the claims rejected by the Board under 37 C.F.R. § 1.196(b), and a request for rehearing as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated. Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or showing of facts as to those claims will be treated as a request for rehearing as to those claims. See MPEP § 1214.01 for more information. Correct answer stated that when the Board makes a new rejection, the appellant has the option of either (1) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence or (2) requesting rehearing before the Board.