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Patent Bar Prep > Things you can and cannot do in the patent office > Flashcards

Things you can and cannot do in the patent office Flashcards

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1
Q

What can’t you do ethically?

A

lie to, cheat on or steal from your clients or the Patent Office. Ignore potential conflicts between current and former clients.

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2
Q

When can you not file a response to an action at the USPTO?

A

After six months (six month rule) (Rule 1.134)

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3
Q

When can you no longer broaden claims on a reissue application?

A

you cannot file a broadening reissue more than two years after the issue date of the patent. (35 USC Section 251)

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4
Q

When can you not get an interview with an examiner?

A

You cannot seek an interview prior to the issuance of an office action unless the application is a continuation (MPEP 713.02)

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5
Q

When can you not file outside of the US?

A

File a patent application in a foreign country without having obtained or been given a foreign filing license, unless the invention was made in another country (MEPE 140)

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6
Q

What can you not do as a matter of right after final Rejection?

A

Cannot add additional claims or present new issues MPEP 714.12

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7
Q

Can you alter an application after oath or declaration executed? What is the exception?

A

No, you cannot alter an application after it has been executed by the inventor(s) and file the application with that same oath or declaration (unless that oath still applies to the altered application) MPEP 605.04(a)

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8
Q

When can you not suspend prosecution

A

You cannot ask that prosecution be suspended while an action is outstanding, or for an indefinite time MPEP 709

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9
Q

What can you not do when responding to an office action including rejections and/or objections

A

you cannot respond to some rejections and objections on the merits in an official action, and ask that the rest be deferred. You must respond to all rejections and objections. MPEP 714.02, Rule 1.134

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10
Q

When can you not file an appela?

A

you cannot appeal a first rejection, except in a continuation application where the first action has been made final. MPEP 1205, 706.07(b)

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11
Q

Can you obtain an earlier filing date earlier than the delivery of an application to the Office using Federal Express or other courier service?

A

No you can only receive a filing date on the date of execution and courier service by Priority Mail Express. All other courier services will receive a filing date when received by the Office. MPEP 513, Rule 1.53

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12
Q

Cna you add new matter?

A

No

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13
Q

Can you record an assignment that is not in English?

A

No you cannot record an assignment that is not in English unless it is accompanied by a translation, and it must identify the application or patent by the filing date and serial number or by the patent number. MPEP 302.01, .02, .03

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14
Q

Can you file continuations if an application is not copending with its parent?

A

No, you must file a continuation, divisional, or CIP application which is not copending with its parent. MPEP 201.11, 35 USC Section 120

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15
Q

Can you file more than one claim in a designapplication?

A

You can only file one single formal claim in a design application. MPEP 1503

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16
Q

Can you file an application without drawings?

A

You can file an application without drawings if it is not needed to understand the invention. You must file drawings where they are necessary to understand the invention. MPEP 506, Section 112

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17
Q

Can you file a plant patent on a plant found in the wild or a tuber, or which has not been asexually reproduced?

A

No you cannot file a plant patent on a tuber, plant found in the wild, or one which has not been asexually reproduced. MPEP 1600

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18
Q

What access can you get to an unpublished abandoned application?

A

You cannot obtain access to an unpublished abandoned application unless it is mentioned in an issued patent or other special circumstances apply. MPEP 103

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19
Q

Do you have to make an election in a restriction requirement?

A

Yes you must make an election in a restriction requirement even if you are traversing it. MPEP 818

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20
Q

File an application that does not disclose enough for a POSITA to practice invention, no best mode, no written description?

A

you must file an application that discloses enough for one of ordinary skill in the art to practice the invention and discloses the best mode of carrying out the invention and contains a written description of the invention. MPEP 608.01(h), Section 112

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21
Q

Can you share information disclosed in confidence?

A

You cannot tell anyone information which has been disclosed to you in confidence by a client without permission of that client. 37 Part 11

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22
Q

Multiple dependent claims that depend from multiple dependent claims?

A

No, you cannot submit a multiple dependent claim which depends from another multiple dependent claim either directly or indirectly. MPEP 608.01(n)

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23
Q

Can you get an automatic six month extension?

A

No, you cannot ask for an automatic six month extension of time. MPEP 710.02(e), Rule 1.136(a)

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24
Q

Can you withdraw from a client at any time?

A

You cannot withdraw from representing a client in a pending application without the permission of the Commissioner of Patents. MPEP 402.05, 402.06, Rule 1.36

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25
Q

Can you argue things that are not in the claims?

A

You cannot argue that a claim is patentable because of a feature or limitation which is not in the claim.

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26
Q

Is there a time limit to obtain a refund as a small entity?

A

You cannot obtain a refund as a small entity after three months have passed since the date a large entity fee was paid. MPEP 509.03

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27
Q

What can you file a request for reexamination on?

A

You cannot file a request for reexamination based upon anything other than prior art and prior patents or publications. MPEP 2217

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28
Q

Can you file one paper and ask that copies of it are placed in other applications?

A

No you cannot file one paper in an application and ask that copies be placed in the files of other applications. MPEP 502, Rule 1.5

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29
Q

What can you not swear back of?

A

You cannot swear back of (antedate) a pre-AIA Section 102(b) rejection

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30
Q

Can you submit a paper that is being filed for the sole purpose of delay or is not authorized by the client?

A

You cannot file any paper which is submitted for an improper purpose. Rule 11.18(b)

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31
Q

Can you find an examiner at the patent Office after 4pm on a Friday?

A

No

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32
Q

Can you obtain an automatic extension of time in a reexamination?

A

No. MPEP 2265, Rule 1.136(a)

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33
Q

Can you locate a DVD player at the Office?

A

No, u you can show a DVD in an interview if it has a bearing on an outstanding issue and will advance prosecution. MPEP 713.01

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34
Q

Can you submit a multiple dependent claim that combines other claims inclusivvely?

A

No you cannot submit multiple dependent claims which combines other claims such as an apparatus as in claim 1 and 2. MPEP 607, 608.01(n)

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35
Q

Can you extend the payment of an issue fee?

A

you cannot obtain an extension of time to pay an issue fee. MPEP 711.03(c), Rule 1.316(a)

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36
Q

Can you submit broader claims in a reexamination prosecution?

A

you cannot submit broader claims in a reexamination prosecution. MPEP 2250, Rule 1.121(f)

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37
Q

Can you extend the time you file an IDS?

A

You cannot obtain an extension of time to file an IDS. MPEP 609

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38
Q

Can you transfer drawings from one pending application to another application?

A

you cannot transfer drawings from one pending application to another without demonstrating hardship. MPEP 608.02(i)

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39
Q

Can you amend an inventor’s oath or declaration

A

No.

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40
Q

Can you file a petition to revive an application that is abandoned by failure to respond to an OA?

A

You cannot petition to revive such an application without submitting a response to that action, or filing a continuation. MPEP 711.03, Rule 1.137

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41
Q

Can you deliberately abandon and revive an application?

A

you cannot revive an application which was deliberately abandoned or correct any mistake or error which was made deliberately. MPEP 711.03(c)

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42
Q

Can you file a continuation instead of a response?

A

You cannot file a continuation application instead of a response unless you also file a request for extension so that the continuation and parent are copending. MPEP 201.11

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43
Q

Can you amend a claim by directing the Office to add any words e.g. “claim 3, line 4 after “bolt” add - having a protrusion extending outwardly therefrom.”

A

You cannot amend a claim in a reissue or reexamination by directing the Office to add any words. MPEP 714.22, Rule 121(c)

44
Q

Can you amend a claim in a reexamination application by underlying words to add to previously amended claim and bracketing the words to be deleted from previously amended claim?

A

No. MPEP 2250, Rule 1.121(f)

45
Q

Can you petition to the Commissioner any patent office rejection or appeal any patent office objection?

A

You cannot petition the Commissioner any Patent Office rejection. You cannot appeal any Patent Office Objection. only rejections may be appealed. 35 USC Section 134

46
Q

Does filing a terminal disclaimer overcome a double patenting rejection?

A

A terminal disclaimer will not overcome a double patenting rejection of the same invention because this is anticipation. MPEP 804

47
Q

What can you do with an improper restrictuion requirement.

A

You cannot appeal it to the Board. MPEP 818.03(c)

48
Q

Can you correct failure to claim priority with a Certificate of Correction?

A

You cannot unless the priority was already perfected in a parent application. MPEP 201.16

49
Q

What is the rule of recapture?

A

you cannot recapture in a reissue application subject matter cancelled in the parent to obtain a patent. MPEP 1412.02

50
Q

Can a nonresident file a PCT at the USPTO?

A

You must be a resident or national of the US to file a PCT, international application, at the USPTO. MPEP 1805

51
Q

Swear back of a pre-AIA Section 102(e) anticipation which claims the same invention.

A

You cannot swear back of a pre-AIA 102(e) anticipation which claims the same invention. (you can’t swear back behind US patents or patent publications)

52
Q

When can you file a Rule 1.53(d) application?

A

you have to intend and indeed abandon the parent applicatto get a 1.53(d) continuationion

53
Q

Can you transfer drawings to a divisional application?

A

You cannot transfer drawings to a divisional application from an application which is about to issue. MPEP 201.06(a)

54
Q

When can you amend claims or specification?

A

You cannot amend claims or a specification without submitting remarks explaining how the amendments overcome the rejections and objections of the examiner. MPEP 714.02, Rule 1.111

55
Q

Can you replace a provisional application more than one year after filing provisional?

A

you cannot file an application to replace a provisional more than one year after filing the provisional unless the anniversary falls on a Saturday, Sunday, or holiday. You can then file on the next business day. MPEP 201.04(b)

56
Q

When can you not obtain an extension to a patent term during appeal?

A

you cannot obtain an extension to patent term for any part of the appeal time in which prosecution was not being diligently pursued. MPEP 2720

57
Q

Can you copy claims from another patent?

A

You cannot copy claims from another patent without advising the Office which patent the claims are copied from. MPEP 710.04(a)

58
Q

Is an extension of time available for refunds to Small Entity status?

A

you cannot obtain an extension of time to claim small entity status and obtain a refund. MPEP 509.03, Rule 1.38(a)

59
Q

Can you get an interview in a supplemental examination procededing?

A

No, Rule 1.620(e)

60
Q

Can you file an amendment in a supplemental examination proceeding?

A

No. Rule 1.620(f)

61
Q

Can a third party participate in a supplemental examination proceeding?

A

No, a party other than the patent owner is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding. Rule 1.601(b)

62
Q

Can a patent owner file a statement in a reexamination proceeding resulting from a supplemental examination?

A

A patent owner does not have a right to file a patent-owner statement in a reexamination resulting from a supplemental examination. 35 USC 257(b)

63
Q

when can you obtain a filing date for a supplemental examination?

A

You can’t obtain a filing date for a supplemental examination if the request is not in compliance. Rule 1.610(d)

64
Q

What constitutes a filing date for derivation proceeding?

A

You cannot obtain a filing date for a petition to institute a derivation proceeding unless the petition is received with the required Can you get a filing fee. Rule 42.404

65
Q

date for an application without submitting the names of the inventors, the required filing fee, signed declaration or a translation into English?

A

Yes, Rule 1.53(b)

66
Q

Can you obtain access to an unpublished pending or unpublished abandoned application which is mentioned in an issued patent?

A

Yes, MPEP 103

67
Q

can you ask for a reexamination of any patent on the basis of prior art in the form of a printed publication or patent?

A

Yes. MPEP 2209

68
Q

Can you protest any pending application?

A

Yes, MPEP 1901.

69
Q

Can you obtain up to a five month automatic extension of time retroactively by filing a petition and paying the required fee at the time the response is filed.

A

Yes. MPEP 710.02(e) and Rule 1.36(a)

70
Q

Can you obtain extensions of time for cause when automatic extensions are not available.

A

Yes (extensions for cause) MPEP 710.02(e), Rule 1.36(b)

71
Q

Can you obtain a filing date for a new application, including a continuation, CIP or division by using the Priority Mail Express wservice of the Post Office even on Saturday, Sunday, or a HOliday.

A

Yes. MPEP 513.

72
Q

Pay an issue fee late, provided the delay was unintentional.

A

Yes. MPEP 712, Rule 1.137

73
Q

Have an application made special.

A

Yes. MPEP 708.02

74
Q

interview an examiner after an official action has issued.

A

Yes. MPEP 713.01

75
Q

Amend claims in a reexamination in response to an Official Action.

A

Yes, MPEP 2234

76
Q

Get a foreign filing license authoirizing you to file a patent application in another country.

A

Yes, MPEP 140

77
Q

Get a foreign filing license retroactively when n application has through error and inadvertence been filed in another country.

A

Yes, MPEP 140.

78
Q

Revive a patent after the patent has inadvertently been abandoned by failure to pay a maintenance fee.

A

Yes. MPEP 2590

79
Q

Correct inventorship of an issued patent or a pending application.

A

Yes. MPEP 600, 1481

80
Q

Petition to withdraw an application from issue in order to have an interference or to permit consideration of an IDS in a continuation application.

A

Yes. MPEP 1308

81
Q

Obtain broader claims in a reissue application filed within two years after issue.

A

Yes. MPEP 1412.03

82
Q

File a citation of art limited to printed patents and publications in any issued patent.

A

Yes. MPEP 2202

83
Q

File comments in response to an Examiner’s Reasons for Allowance.

A

Yes, and you should. MPEP 1302.14

84
Q

File a continuation and abandon the parent application at any time the parent is still pending, provided that the parent and continuation are co-pending, i.e. both pending at the Patent Office during at least one day.

A

Yes, MPEP 201.11

85
Q

Revive an application by showing that the abandonment was unintentional, and filing the required terminal disclaimer for a design application or a pre-June 8, 1995 application.

A

Yes. Rule 1.137

86
Q

Overcome a Double Patenting rejection of obviousness by filing a terminal disclaimer which also provides that the patents will lapse if they ever cease being owned by the same entity.

A

Yes. MPEP 1490

87
Q

Petition to the Commissioner to overturn an improper Restriction Requirement after first asking the Examiner for reconsideration, electing as required and petitioning within two months from the decision of the examiner on the Request for Reconsideration.

A

Yes. MPEP 818.03(c)File a

88
Q

continuation in a reissue application

A

Yes. MPEP 1445

89
Q

Withdraw a recorded terminal disclaimer until the date the patent issues.

A

Yes. MPEP 1490

90
Q

File a continuation application with the correct inventors rather than file a petition to correct inventorship if at least one inventor remains in common between the parent and child applications.

A

Yes. MPEP 201.03, Rule 1.48(a)

91
Q

File a design continuation or divisional by facsimile, provided the parent is to be abaodoned.

A

Yes. Rule 1.53(d)

92
Q

File a substitute specification.

A

Yes. Rule 1.125(b)

93
Q

Submit color photographs in a design application.

A

Yes, must send in three copies. Rule 1.152

94
Q

Obtain a fifth month extension

A

Yes. Rule 1.136(a)

95
Q

Extend a time period for completing an incomplete, but bona fide response to a non-final action.

A

Yes. Rule 1.35(c)

96
Q

A patent owner may request a supplemental examination of a patent at any time during the period of enforceability of the patnet.

A

Yes. Rule 1.601(c)

97
Q

Is it possible to file a third-party preissuance submission of relevant prior art prior to the issuance of a patent.

A

Yes. Rule 1.290

98
Q

An applicant for patent may file a petition to institute a derivation proceeding in the Office.

A

Yes. Rule 42.402

99
Q

Seek an interview prior to issuance of an official action?

A

No, unless the application is a continuation. MPEP 713.02

100
Q

File a patent application in a foreign country without having obtained or been given a foreign filing license?

A

No, unless the invention was made in another country. MPEP 714.12

101
Q

Respond to some rejections and objections on the merits of an official action, and ask that the rest be deferred?

A

No, you have to answer all. MPEP 714.02, RUle 1.134

102
Q

Traverse a restriction requirement without making an election?

A

No. MPEP 818

103
Q

Obtain a refund as a small entity after three months have passed since the date a large entity fee was paid?

A

No. MPEP 509.03

104
Q

Obtain an automatic extension of time in a reexamination?

A

No. MPEP 2265, Rule 1.136(a)

105
Q

obtain an extension of time to pay an issue fee?

A

No. MPEP 2265, Rule 1.136(a)

Patent Bar Prep (2 decks)

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