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Patent Exam > Things you can/can't do in the Patent Office > Flashcards

Things you can/can't do in the Patent Office Flashcards

1
Q

Lie to, cheat on or steal from your clients or the Patent Office.

A

Cannot do

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2
Q

File a response to an official action more than six months after the date of the action.

A

Cannot do (Rule 1.134)

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3
Q

File a broadening reissue more than two years after the issue date of the patent.

A

Cannot do (35 U.S.C. 251)

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4
Q

Seek an interview prior to issuance of an official action in an application that is not a continuation.

A

Cannot do. (MPEP 713.02)

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5
Q

File a patent application in a foreign country without having obtained or been given a foreign filing license if you are a US citizen.

A

Cannot do. (MPEP 140)

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6
Q

Add additional claims or present new issues as a matter of right after a Final Rejection.

A

Cannot do. (MPEP 714.12)

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7
Q

Alter an application after it has been executed by the inventor or inventors and file the application with that same oath or declaration.

A

Cannot do. (MPEP 605.04(a))

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8
Q

Ask that the prosecution be suspended while an action is outstanding, or for an indefinite time.

A

Cannot do. (MPEP 709)

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9
Q

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

A

Cannot do. (Rule 1.134)

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10
Q

Appeal a first rejection in a continuation application where the first action has been made final.

A

Only can be appealed after first rejection in this scenario. NO OTHER SITUATION CAN YOU APPEAL A FIRST REJECTION (MPEP 1205).

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11
Q

Obtain a filing date earlier than the date of delivery to the Patent Office of a new application using Express Mail provided by the Post Office.

A

Only Express Mail gets you the filing date of the day sent. All other mail receives filing date upon deliver. (Rule 1.53)

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12
Q

Record an assignment which is not in English, and which is not accompanied by a translation, or which does not identify the application or patent by the filing date and serial number or by the patent number.

A

Cannot do. (PEP 302.01 .02 and .03)

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13
Q

Amend an application to include new matter.

A

Cannot do. (MPEP 706.03(o))

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14
Q

File a continuation, division, or a continuation-in-part application which is not copending with its parent. (

A

Cannot do. (35 U.S.C. 120)

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15
Q

File more than a single, formal claim in a design application.

A

Cannot do. The ornamental design for (the article as specified in the title of the Invention) as shown. (MPEP 1503)

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16
Q

File an application without drawings where drawings are necessary to understand the invention.

A

Cannot do. (35 U.S.C. 112)

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17
Q

File a plant patent on a potato or on a plant found in the wild, or one which has not been asexually reproduced.

A

Cannot do. (MPEP 1600)

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18
Q

Obtain access to an unpublished abandoned application that is mentioned in an issued patent.

A

Can do on in this instance or when special circumstances apply. (MPEP 103).

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19
Q

Traverse a restriction requirement without making an election.

A

Cannot do. (MPEP 818)

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20
Q

File an application which doesn’t have enough disclosure for one of ordinary skill in the art to practice the invention or which does not disclose the best mode of carrying out the invention or a written description of the invention.

A

Cannot do. 35 U.S.C. 112

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21
Q

Tell anyone information which has been disclosed to you in confidence by a client without permission of the client.

A

Cannot do. Rule 10.57

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22
Q

Submit a multiple dependent claim which depends from another multiple dependent claim.

A

Cannot do. (MPEP 608.01)

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23
Q

Ask for an automatic sixth month extension of time.

A

Cannot do. Rule 1.136(a).

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24
Q

Withdraw from representing a client in a pending application.

A

Only if permission of the Commissioner of Patents is obtained. Otherwise, cannot do. Rule 1.36.

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25
Q

Argue that a given claim is patentable because of a feature or limitation which is not in that claim.

A

Cannot do.

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26
Q

Obtain a refund as a small entity after the large entity fee was paid.

A

Can only do within 3 months of paying the large entity fee. (MPEP 509.03)

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27
Q

File a Request for Reexamination based upon prior publications or patents.

A

Can do. Cannot file a request of reexamination based on any other prior art. (MPEP 2217).

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28
Q

File one paper in an application and ask that copies be placed in the files of other applications.

A

Cannot do. (Rule 1.5).

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29
Q

Swear back of a pre-AIA 102(b) rejection.

A

Cannot do. Statutory bar. MPEP 706.02(b)

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30
Q

File any paper which is submitted for an improper purpose.

A

Cannot do. Rule 11.18(b).

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31
Q

Find an examiner at the Patent Office after 4 PM on a Friday.

A

Cannot do.

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32
Q

Obtain an automatic extension of time in a reexamination.

A

Cannot do. Rule 1.136(a)

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33
Q

View a DVD in an interview that has a bearing on an outstanding issue and will advance prosecution.

A

Can do. Only time you can view a DVD in the patent Office. (MPEP 713.01)

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34
Q

Submit a multiple dependent claim which combines other claims.

A

i.e. an apparatus as in claim 1 and 2. Cannot do. MPEP 608.01(n)

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35
Q

Obtain an extension of time to pay an issue fee.

A

Cannot do. (Rule 1.316(a))

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36
Q

Submit broader claims in a reexamination prosecution.

A

Cannot do. Rule 1.121(f)

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37
Q

Obtain an extension of time to file an IDS>

A

Cannot do. (MPEP 609)

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38
Q

Transfer drawings from one pending application to another.

A

Can only do by demonstrating hardship. (MPEP 608.02(i))

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39
Q

Amend an inventor’s oath or declaration.

A

Cannot do.

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40
Q

File a petition to revive an application which became abandoned by failure to respond to an outstanding Official Action.

A

Can only do so by submitting a response to that action, or filing a continuation. (Rule 1.137)

41
Q

Revive an application which was deliberately abandoned or correct any mistake or error which was made deliberately.

A

Cannot do. (MPEP 711.03(c))

42
Q

File a reexamination based upon prior invention, prior sale, prior use or public knowledge.

A

Cannot do. (35 U.S.C. 301,302)

43
Q

File a continuation application instead of a response.

A

Can only be done by also filing a request for an extension so that the continuation and its parent are copending (MPEP 201.11)

44
Q

Amend a claim in a reissue or reexamination by directing the Patent Office to add any words.

A

Cannot do. e.g., claim 3, line 4 after “bolt” add - having a protrusion extending outwardly therefrom. (Rule 1.121(c))

45
Q

Amend a claim in a reexamination application by underlining the words to be added to a previously amended claim and bracketing the words to be deleted from a previously ammended claim.

A

Cannot do. Rule 1.121(f)

46
Q

Petition to the Commissioner any Patent Office rejection or appeal any Patent Office objection.

A

Cannot do. (35 U.S.C. 134)

47
Q

Overcome a Double Patenting Rejection of the same invention (anticipation) type by filing a terminal disclaimer.

A

Cannot do. (MPEP 804)

48
Q

Appeal to the Board of Appeals an improper restriction requirement.

A

Cannot do. (MPEP 818.03(c)). Can only petition.

49
Q

Correct failure to claim priority with a Certificate of Correction.

A

Can only do so when priority was already perfected in a parent application (MPEP 201.16)

50
Q

Recapture in a reissue application subject matter cancelled in the parent to obtain a patent.

A

Cannot do. (MPEP 1412.02)

51
Q

File a PCT at the U.S. Patent Office.

A

Can only do so if you are a resident or national of the U.S. (MPEP 1805)

52
Q

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

A

Cannot do (MPEP 706.02(b)

53
Q

File a Rule 1.53(d) continuation.

A

Can only do so by abandoning the parent application (1.53(d))

54
Q

Transfer drawings to a divisional application from an application which is about to issue.

A

Cannot do. (MPEP 201.06(a))

55
Q

Amend claims and/or a specification without submitting remarks explaining how the amendments overcome the rejections and objections of the examiner.

A

Cannot do. (Rule 1.111)

56
Q

File an application to replace a provisional application more than one year after the filing of the provisional application.

A

Can only do so if the one year anniversary falls on a Saturday, Sunday, or holiday. (MPEP 201.04(b))

57
Q

Obtain an extension to the patent term for any part of the appeal time in which prosecution was not being diligently pursued.

A

Cannot do. MPEP 2720

58
Q

Copy claims from another patent.

A

Can only do by advising the Patent Office which patent the claims are copied from. (MPEP 710.04(a))

59
Q

Obtain an extension of time to claim Small Entity Status and obtain a refund.

A

Cannot do. Rule 1.38(a)

60
Q

Request an interview in a supplemental examination.

A

Cannot do (Rule 1.620(e))

61
Q

File an amendment in a supplemental examination proceeding.

A

Cannot do. Rule 1.620(f)

62
Q

A party other than the patent owner filing papers or otherwise participating in any manner in a supplemental examination proceeding.

A

Cannot do. (Rule 1.601(b))

63
Q

Obtain a filing date for a supplemental examination without a compliant request.

A

Cannot do. Rule 1.610(d)

64
Q

Obtain a filing date for a petition to institute a derivation proceeding.

A

Can only do so if the petition is received with the required fee. (Rule 42.404)

65
Q

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

A

Can do. Rule 1.53(b)

66
Q

File a patent-owner statement in a reexamination resulting from a supplemental examination.

A

Cannot do. (35 U.S.C. 257(b))

67
Q

Obtain access to any unpublished pending or unpublished abandon application which is mentioned in an issued patent.

A

Can do. (MPEP 103)

68
Q

Ask for a reexamination of any patent on the basis of prior art in the form of a printed publication or patent.

A

Can do. (MPEP 2209)

69
Q

Protest any pending application.

A

Can do. (MPEP 1901).

70
Q

Obtain up to a five month automatic extension of time retroactively by filing a petition an d paying the required fee at the time the response is filed.

A

Can do. Rule 1.136(a)

71
Q

Obtain a filing date for a new application, including a continuation, CIP or division by using the Express Mail service of the Post Office even on Saturday, Sunday or a Holiday.

A

Can do. (MPEP 513)

72
Q

Obtain extensions of time for cause when automatic extensions are not available.

A

Can do. Rule 1.136(b)

73
Q

Pay an issue fee late provided the delay was unavoidable or unintentional.

A

Can do. Rule 1.137

74
Q

Have an application made special.

A

Can do. MPEP 708.02

75
Q

Interview an Examiner after an official action has issued.

A

Can do. MPEP 713.01

76
Q

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

A

Can do. MPEP 2234

77
Q

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

A

Can do. MPEP 140

78
Q

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

A

Can do. MPEP 140

79
Q

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

A

Can do. MPEP 2590

80
Q

Correct inventorship of an issued patent or a pending application.

A

Can do. MPEP 600

81
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

Can do. MPEP 1308

82
Q

Obtain broader claims in a reissue application.

A

Can only do so if filed within 2 years of issue. MPEP 706.03(x)

83
Q

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

A

Can do. MPEP 2202

84
Q

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

A

Can do. MPEP 1302.14

85
Q

File a continuation and abandon the patent application at any time the parent is still pending.

A

Can do so provided that the parent and continuation are co-pending. (MPEP 201.11)

86
Q

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

A

Can do. Rule 1.137

87
Q

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

A

Can do. MPEP 1490

88
Q

Petition to the Commissioner to overturn an improper Restriction Requirement.

A

Can be done 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. MPEP 818.03(c)

89
Q

File a continuation in a reissue application.

A

Can do. MPEP 1445

90
Q

Withdraw a recorded terminal disclaimer.

A

Can be done until the date the patent issues. MPEP 1490

91
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

Can do. Rule 1.48(a)

92
Q

File a design continuation or divisional by facsimile.

A

Can do so provided the parent is to be abandoned. (rule 1.53(d))

93
Q

File a substitute specification.

A

Can do. (Rule 1.125(b))

94
Q

Submit color photographs in a design application.

A

Can do so provided a petition and fee are submitted. (Rule 1.152)

95
Q

Obtain a five month extension.

A

Can do. Rule 1.136(a)

96
Q

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

A

Can do. Rule 1.35(c)

97
Q

Request a supplemental examination of a patent at any time during the period of enforceability of the patent as a patent owner.

A

Can do. Rule 1.601(c)

98
Q

File a preissuance submission of relevant prior art prior to the issuance of a patent.

A

Can do. Rule 1.290

99
Q

File a petition to institute a derivation proceeding in the Patent Office as an applicant for patent.

A

Can do. Rule 42.402

Patent Exam (2 decks)

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