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