True/False Flashcards
A division of a design application filed June 12, 2018, which is a continuation of an application filed May 23, 2017 and now abandoned, cannot be filed under 37 CFR 1.53(d).
False
A division of a design application filed June 12, 2018, which is a continuation of an application filed May 23, 2017 and now abandoned, can be filed under 37 CFR 1.53(d).
True
A division of a utility application filed June 12, 2018, which is a continuation of an application filed May 23, 2017 and now abandoned, cannot be filed under 37 CFR 1.53(d).
False
The time period to reply to a notice that a response is bona fide but incomplete cannot be extended.
False
When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply to supply the omission.
True
The time period to reply to a notice that a response is bona fide but incomplete can be extended.
True
A Petition for Access is no longer required to obtain access to the file of a pending application which has been incorporated by reference into a US patent.
False
If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access or a power to inspect is necessary to obtain the application.
True
A Substitute Specification may be filed only when required by the Examiner.
False
The file of an application that has issued as a patent or published as a statutory invention registration is available to the public.
True
The file of an application that has issued as a patent or published as a statutory invention registration is not available to the public.
False
A Substitute Specification may be filed at any point prior to payment of the issue fee.
True
A provisional application is not complete until the cover sheet is filed.
True
In order to be complete, a provisional application requires a cover sheet, specification, and any drawings that are necessary to understand the invention.
True
An Examiner’s Answer may include a new ground of rejection.
True
A provisional application will be given a filing date if it includes a specification and any drawings that are necessary to understand the invention.
True
A provisional application will be granted a filing date, but will not be considered complete, if it includes only a specification and drawings.
True
A Reissue oath or declaration need specify only a single error as a basis for the reissue.
True
An oath or declaration must state the PO address of the inventors as well as their residences, unless this is listed on the ADS.
True
A residential address of an inventor is not required in the ADS or oath/declaration as long as a mailing address is provided.
False
A patent issuing from a CPA will only indicate the application number and filing date of the prior application.
True
A CPA can only be filed if the filing of the parent application is complete.
True
*except for oath/declaration if filed after 9-16-12
An application originally filed on or before 9-16-12 need not contain an executed oath or declaration in order to support a CPA.
True
A sale need not be consummated to be an offer for sale under 102.
True
A sale of the rights of the invention will bar any US application filed more than a year after the sale.
False
A rejection based upon pre-AIA 102(f) can be based upon a derivation of the invention from an earlier inventor.
True
A defensive publication is prior art as of its filing date.
False
A defensive publication is prior art as of its publication date.
True
The pre-AIA 102(e) date for a US patent issuing from a PCT application entering the National Stage in the US is always the date that the oath or declaration, the fee, and the copy of the international application and translation into English are received.
False
The 102(e) date of a National Stage PCT filed on or after 11-29-00 that designates the US and is in English is the date when the fee, oath, and translation are received.
False
The 102(e) date of a National Stage PCT filed on or after 11-29-00 is the date when the fee, oath, and translation are received.
False
The 102(e) date of a National Stage PCT filed before 11-29-00 that designates the US and is in English is the date when the fee, oath, and translation are received.
True
The 102(e) date of a National Stage PCT filed on or after 11-29-00 that designates the US, is in English, and includes the IA copy, fee, and oath, is the international filing date or priority date properly claimed at the time of international filing.
True
A National Stage PCT filed on or after 11-29-00 that does not designate the US and/or is not in English does not have a 102(e) date, but is considered prior art upon publication.
True
An abandoned application establishes that the invention disclosed in that application has been abandoned and is not prior art under 102(g).
False
When an application becomes abandoned, the invention disclosed therein also becomes abandoned.
False
The critical date for a foreign patent under pre-AIA 102(d) is the date it becomes enforceable.
True
A foreign patent application may become prior art under pre-AIA 102(d) if filed more than 12 months before the effective US filing date.
True
A foreign patent application becomes prior art under pre-AIA 102(d) if filed before the effective US filing date.
False
Pre-AIA filing of a CIP of a US application claiming foreign priority is not entitled to the foreign priority date, but is considered effectively filed on the CIP filing date.
True
A CIP of a US application claiming foreign priority is entitled to the priority date.
False
A published foreign application is not considered prior art under pre-AIA 102(d).
True
The fact that a foreign application is published may be grounds for a pre-AIA 102(d) rejection.
False
A “patent” for purposes of pre-AIA 102(d) rejection, an exclusionary right must have been awarded to the applicant, but a formal patent need not have been issued in all cases.
True
An allowed application can be a “patent” for purposes of pre-AIA 102(d) as of the date published for opposition, even though it has not yet issued as a patent.
True
Disclosure cancelled from a patent application is prior art under 102 as of the issue date of the patent.
True
Canceled matter in the application file of a US patent or US application publication is not a proper reference as of the filing date under 102(a)(2) or pre-AIA 102(e).
True
Matter canceled from the application file wrapper of a US patent or US application publication may be used as prior art as of the issue or publication date, respectively.
True
An admission can be prior art and the basis of a rejection.
True
Abandonment under pre-AIA 102(c) must be intentional and is personal to the inventor.
True
Abandonment under pre-AIA 102(c) may be accidental.
False
An abstract of the disclosure is required in a PCT application but need not be included with the papers initially filed.
True
Failure to claim priority at the time of filing a PCT application results in the loss of priority rights.
False
Failure to claim priority at the time of filing a PCT application must be corrected within 16 months of the priority date or 4 months of the international filing date, whichever comes earlier, to prevent loss of priority rights.
True
All inventors if a PCT application filed with the PTO as a receiving office must be American citizens.
False
At least one designation must be made in the International Application at the time of filing.
True
Any PCT application becomes pre-AIA 102(e) prior art as of the date that the fee and translation and oath are filed in the national stage of the PCT.
False.
Any PCT application filed before 11-29-00 becomes pre-AIA 102(e) prior art as of the date that the fee and translation and oath are filed in the national stage of the PCT.
True
A PCT can claim priority from an earlier US application if it is filed within one year of the filing date of that earlier application.
True
A filing date cannot be obtained for an International Application until the fee and oath are submitted.
False
A demand for Preliminary Examination must be made before the expiration of the 19th month from the priority date.
False
A demand for Preliminary Examination must be made by 22 months from the priority date or 3 months from the mailing of the Search Report, whichever is later.
True
An International Application can be amended only once.
False
The first opportunity to amend a PCT under Article 19 allows changes to claims only.
True
The first opportunity to amend a PCT under Article 19 allows changes to spec, claims, and drawings.
False
The second opportunity to amend a PCT under Article 34 allows changes to spec, claims, and drawings.
True
The second opportunity to amend a PCT under Article 34 allows changes to claims only.
False
A claim for priority in a PCT application must occur before the expiration of the 16th month.
True
Oral hearings in an Appeal of a reissue or a reexamination rejection are available to the public.
True
Oral hearings in an Appeal of a reissue or a reexamination rejection are not open to the public.
False
A reissue oath can be executed by the assignee if the scope of the claims is not being broadened.
True
A reissue oath cannot be executed by an assignee.
False
Broadened claims in a reexamination must be filed within two years from the date of issue of the patent.
False
Claims cannot be broadened in a reexamination
Broadened claims in a reissue must be filed within two years from the date of the issue of the patent.
True
Separate patents can issue from a reissue application where the original patent contains independent and distinctive inventions.
True
The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
True
Ex parte reexaminations are automatically stayed where the same issues are before a US District Court.
False
If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination.
True
If a patent in the process of ex parte reexamination is or becomes involved in litigation, the office proceedings will automatically be stayed.
False
A claim for foreign priority must be made in a reissue application.
True
A claim for foreign priority need not be made in a reissue application.
False
When both a reissue and a reexamination are pending, they may be merged.
True
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such via a Notification of Concurrent Proceedings.
True
A reissue may be used to correct an application which issued without disclosure of a Best Mode.
False
The term of a reissue is twenty years from its filing date.
False
The issuance of a reissue does not alter the expiration date granted by the original patent.
True
A reexamination can be filed based upon any prior art set forth in 35 USC 102 (a) or (b).
False
Reexaminations can be filed only on the basis of printed patents or publications.
True
An Extension Request based upon 37 CFR 1.136(b) cannot be made until the five-month’s extension permitted under 37 CFR 1.136(a) has been exhausted.
True
Extensions of time under 37 CFR 1.136(a) do not apply to reply briefs, requests for oral hearings, replies to decisions of the Board, contested cases, or cases involved in derivation proceedings.
True
When automatic extensions of time are not available or have been exhausted, the
period for reply may be extended only for sufficient cause and for a reasonable time specified if such an extension request is timely filed on or before the day on which the reply is due, but in no situation can any extension carry the date of which the reply is due beyond the maximum time period set by statute.
True
In no situation can any extension carry the date of which the reply is due beyond the maximum time period set by statute.
True
In a limited number of specific situations, an extension of time may carry the date of which the reply is due beyond the statutory period.
False
All extensions of time can be obtained retroactively.
False
Extensions of time obtained under 37 CFR 1.136(b) must be obtained prospectively.
True
Extensions of time obtained under 37 CFR 1.136(b) may be obtained retroactively.
False
Extensions of time obtained under 37 CFR 1.136(a) must be obtained prospectively.
False
Extensions of time obtained under 37 CFR 1.136(a) may be obtained retroactively.
True
An issue fee may be paid late upon a proper showing and payment but the due date cannot be extended.
True
The issue fee due date may be extended for cause.
False
When a response to a Final Rejection is filed within two months from the mailing date, the deadline for response is automatically extended to the date an Advisory Action is mailed or the six-month deadline, whichever occurs first.
True
The minimum period for response to any action is thirty days.
True
The amount of the extension fee is reduced fifty percent for Small Entities.
True
An extension of time after a Final Rejection extends the due date for a response, for filing a Notice of Appeal, and for filing a continuation.
True
When obtaining an extension of time after a Final Rejection in order to file a continuation, no response to the action is necessary.
True
The deadline for filing an IDS can be extended no more than five months.
False
No extension is possible when filing an IDS.
True
The three-month deadline for obtaining a refund for a fee paid as a small entity may be extended only for cause.
False
The three month deadline for obtaining a refund for a fee paid as a small entity cannot be extended.
True
An IDS may be timely filed within 3 months of filing a non-CPA US application, entry of an IA into the national stage, or international design publication/registration.
True
An IDS may be timely filed before mailing of a first office action on the merits or before mailing of a first office action after filing an RCE.
True
One acceptable form of alternative expression recites members as being “Selected from the group consisting of A, B, and C.”
True
One acceptable form of alternative expression recites members as being “Selected from the group comprising A, B, and C.”
False
Multiple dependent claims must be in alternative form (e.g. “A machine according to claims 3 or 4, further comprising…”
True
Examiners may reject claims as prolix.
True
Prolix claims are grounds for objection, not rejection.
False
A single claim which claims both an apparatus and the method steps of using the same apparatus is not indefinite under 35 USC 112.
False
A single claim which claims both an apparatus and the method steps of using the same apparatus is indefinite under 35 USC 112.
True
Utility applications may not be filed with an omnibus claim that reads as follows: “A device substantially as shown and described.”
True
Utility applications may be filed with a claim that reads as follows: “A device substantially as shown and described.”
False
35 USC 112(b) prohibits applicants from changing what they regard as their invention during the pendency of the application.
False
The language of 35 USC 112(b) does not prohibit an applicant from changing what they regard as their invention during the pendency of the application.
True
Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 USC 112(a); it is irrelevant to compliance with 112(b).
True
35 USC 112(b) does not require that claims and the specification be in agreement.
True
35 USC 112(b) requires that the claims agree with the disclosure of the specification.
False
Agreement between the claims and specification is required for 112(a) compliance.
True
35 USC 112(a) does not require that claims and the specification be in agreement.
False
Applicants are their own lexicographer, that is, they can define in the claims what they regard as their invention essentially in whatever terms they choose so long as such terms are not used in ways that are contrary to accepted meanings in the art.
True
The transitional term “comprising,” which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional elements or steps.
True
The transitional phrase” consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention.
True
A rejection under 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic.
True
The discovery of a new use for an old structure based on unknown properties of the structure is not patentable to the discoverer, even as a process of using.
False
The discovery of a new use for an old structure based on unknown properties of the structure is not patentable to the discoverer; however, a new and nonobvious use of the old structure, if not carried out in the process of normal operation, may be patentable as a process.
True
The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using.
True
The discovery of a new use for an old structure based on unknown properties of the structure is not patentable.
False–it might be patentable
Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.
True
If the prior art device performs all of the functions recited in the apparatus claim, the prior art will anticipate the claim even if there is a structural difference.
False
Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any structural difference.
True
Drawings alone can anticipate claims if they clearly show the structure which is claimed.
True
A pre-AIA 102(e) or AIA 201(a)(2) rejection cannot rely on matter that was canceled from the application and thus did not get published in the issued patent.
True
A doctoral thesis, even if indexed and shelved in a library, is not sufficiently accessible to the public to constitute prior art as a “printed publication.”
False
A doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a “printed publication.”
True
A Jepson claim results in an implied admission that the preamble is prior art.
True
A species claim will anticipate a claim to a genus.
True
The following amendment will be entered:
Please amend claim 1 at line 3 to replace the phrase “x” with –y–.
False
An amendment attempting to “rewrite” a claim in the interlineation manner may be held non-responsive.
True
If an election of species has been required and the applicant does not make an election because he or she holds the requirement to be wrong, the amendment on its face is not a bona fide attempt to advance the case to final action, and the examiner is without authority to postpone decision as to abandonment.
True
When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been
inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
True
An examiner may treat an amendment not fully responsive to a non-final Office action by accepting the amendment as an adequate reply to avoid abandonment.
True
An examiner may treat an amendment not fully responsive to a non-final Office action by notifying the applicant that the reply must be completed within the remaining period for reply or within any 1.136(a) extension to avoid abandonment.
True
An examiner may treat an amendment not fully responsive to a non-final Office action by setting a new time period for applicant to complete the reply.
True
The Examiner’s treatment of an amendment not fully responsive to a non-final Office action depends upon whether the amendment is bona fide, whether there is sufficient time for applicant’s reply within the reply period, and the nature of the deficiency.
True
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims will not be allowed.
True
An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive. However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made.
True
An applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection, or reinstate previously canceled claims.
True
An applicant may, as a matter of right, amend any finally rejected claims, add new claims after a final rejection, or reinstate previously canceled claims.
False
An affidavit under 37 CFR 1.130 is appropriate where the prior US patent claims the same patentable invention.
False
When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
True–1.130(a)
When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
True–1.130(b)
A 1.130 affidavit may disqualify a disclosure as prior art by establishing that it was directly or indirectly made by or obtained from the inventor or a joint inventor.
True
A 1.130 affidavit may disqualify a disclosure as prior art by establishing that the subject matter was previously publicly disclosed directly or indirectly by the inventor or a joint inventor.
True
The date to be overcome under 37 CFR 1.131 is the effective date of the reference (i.e. the date on which the reference is available as prior art).
True
When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is based under 37 CFR 1.131(a).
True
A 1.131 affidavit must swear behind the effective date (prior art date) of a US patent, published application, or PCT.
True
An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent application is referenced in the disclosure of another patent, in a publication, or by voluntary disclosure.
True
An abandoned patent application cannot become prior art if it was never published.
False
The subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication may be relied on in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection based on that patent or patent application publication if the
disclosure of the abandoned application is actually included or incorporated by reference in the patent.
True
The subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication cannot be grounds for a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection even if the disclosure of the abandoned application is actually included or incorporated by reference in the patent.
False
Unless it is a statutory bar, a rejection based on a publication may be overcome by a showing that it was published either by the applicant himself or on his behalf.
True
A declaration is a statement in writing made under oath before an officer authorized to administer oaths, while an affidavit must include and acknowledgement by the declarant that willful false statements are punishable by fine or false imprisonment and may jeopardize the validity of the application or patent.
False
37 CFR 1.68 permits a declaration to be used instead of an affidavit.
True
An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths.
True
A declaration must include an acknowledgment by the declarant that willful false
statements and the like are punishable by fine or imprisonment, or both and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
True
An affidavit must include an acknowledgment by the declarant that willful false
statements and the like are punishable by fine or imprisonment, or both and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
False
A declaration is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths.
False
Because they are registered to practice before the USPTO, attorneys’ arguments may take the place of evidence in the record.
False
Every patent includes an assumption of operability.
True
Drawings must illustrate every feature of claims that is essential for a proper understanding of the invention.
True
Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings.
True
Chemical or mathematical formulae, tables, and waveforms must be submitted as text in the specification.
False
The drawings must show every feature of the invention specified in the claims.
True
Design applications may include up to 4 claims with the proper fee.
False
Any proposal by the applicant for amendment of the drawings to cure defects must be embodied in a separate sheet of paper.
True
Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet.”
True
The figure or figure number of an amended drawing should not be labeled as “amended.”
True
The figure or figure number of an amended drawing should be labeled as “amended.”
False
