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Patent Bar: MPEP > What Can You Do in the Patent Office? > Flashcards

What Can You Do in the Patent Office? Flashcards

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1
Q

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

A

Cannot

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2
Q

File a response to an official action more than six months after the date of the action (Six Month Rule)

A

Cannot (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 (MPEP 706.03(x), 35 U.S.C. 251)

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4
Q

Seek an interview prior to issuance of an official action unless the application is a continuation

A

Cannot (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, unless the invention was made in another counry

A

Cannot (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 (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 (MPEP 605.04(a))

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8
Q

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

A

Cannot (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 (MPEP 714.02, Rule 1.134)

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10
Q

Appeal a first rejection, except in a continuation application where the first action has been made Final

A

Cannot (MPEP 1205, 706.07(b))

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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 Federal Express or any other courier service other than Express Mail provided by the Post Office

A

Cannot (MPEP 513, 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 (MPEP 302.01, 302.02, 303.03)

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13
Q

Amend an application to include new matter

A

Cannot (MPEP 706.03(o))

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14
Q

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

A

Cannot (MPEP 201.07, 35 U.S.C. 120)

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15
Q

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

A

Cannot (MPEP 1503)

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16
Q

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

A

Cannot (MPEP 506, 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 (MPEP 1600)

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18
Q

Obtain access to an unpublished abandoned application unless it is mentioned in an issued patent or other special circumstances apply

A

Cannot (MPEP 103)

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19
Q

Traverse a restriction requirement without making an election

A

Cannot (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 (MPEP 706.03(c), 608.01(h), 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 (Rule 10.57)

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22
Q

Submit a multiple dependent claim which depends from another multiple dependent claim either directly or indirectly

A

Cannot (MPEP 608.01(n))

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23
Q

Ask for an automatic sixth month extension of time

A

Cannot (MPEP 710.02(e), Rule 1.136(a))

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24
Q

Withdraw from representing a client in a pending application without the permission of the Commissioner of Patents

A

Cannot (MPEP 402.05, 402.06, 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

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26
Q

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

A

Cannot (MPEP 509.03)

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27
Q

File a Request for Reexamination based upon any prior art other than prior patents or publications

A

Cannot (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 (MPEP 502, Rule 1.5)

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29
Q

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

A

Cannot (MPEP 706.02(b))

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30
Q

File any paper which is submitted for an improper purpose e.g. is being filed for the sole purpose of delay or is not authorized by the client

A

Cannot (Rule 11.18(b))

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31
Q

Obtain an automatic extension of time in a reexamination

A

Cannot (MPEP 2265, Rule 1.136(a))

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32
Q

Submit a multiple dependent claim which combines other claims, i.e., an appartus as in claim 1 and 2

A

Cannot (MPEP 607, 608.01(n))

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33
Q

Obtain an extension of time to pay an issue fee

A

Cannot (MPEP 711.03(c), Rule 1.316(a))

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34
Q

Submit broader claims in a reexamination prosecution

A

Cannot (MPEP 2250, Rule 1.121(f))

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35
Q

Obtain an extension of time to file an IDS

A

Cannot (MPEP 609)

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36
Q

Transfer drawings from one pending application to another pending application without demonstrating hardship

A

Cannot (MPEP 608.02(i))

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37
Q

Amend an inventor’s oath or declaration

A

Cannot

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38
Q

File a petition to revive an application which became abandoned by failure to respond to an outstanding Official Action without submitting a response to that action, or filing a continuation

A

Cannot (MPEP 711.03(c), Rule 1.137)

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39
Q

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

A

Cannot (MPEP 711.03(c))

40
Q

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

A

Cannot (MPEP 2209, 35 U.S.C. 301, 302)

41
Q

File a continuation application instead of a response without also filing a request for an extension so that the continuation and its parent are copending

A

Cannot (MPEP 201.11)

42
Q

Amend a claim in a reissue or reexamination by directing the Patent Office to add any words e.g. “E.g., claim 3, line 4 after “bolt” add - having a protrusion extending ourwardly therefrom. -“

A

Cannot (MPEP 714.22, Rule 1.121(c))

43
Q

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

A

Cannot (MPEP 2250, Rule 1.121(f))

44
Q

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

A

Cannot (35 U.S.C. 134)

45
Q

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

A

Cannot (MPEP 804)

46
Q

Appeal to the Board of Appeals an improper restriction requirement

A

Cannot (MPEP 818.03(c))

47
Q

Correct failure to claim priority with a Certificate of Correction unless priority was already perfected in a parent application

A

Cannot (MPEP 201.16)

48
Q

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

A

Cannot (MPEP 1412.02)

49
Q

File a PCT at the U.S. Patent Office, i.e. an international application, unles you are a resident or national of the U.S.

A

Cannot (MPEP 1805)

50
Q

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

A

Cannot (MPEP 706.02(b))

51
Q

File a Rule 1.53(d) continuation without abandoning the patent application

A

Cannot (Rule 1.53(d))

52
Q

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

A

Cannot (MPEP 201.06(a))

53
Q

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

A

Cannot (MPEP 714.02, Rule 1.111)

54
Q

File an application to replace a provisional application more than one year after the filing of the provisional except if the one year anniversay falls on a Saturday, Sunday, or holiday

A

Cannot (MPEP 201.04(b))

55
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 (MPEP 2720)

56
Q

Copy claims from another patent without advising the Patent Office which patent the claims are copied from

A

Cannot (MPEP 710.04(a))

57
Q

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

A

Cannot (MPEP 509.03, Rule 1.38(a))

58
Q

Interviews are prohibited in a supplemental examination proceeding

A

Cannot (Rule 1.620(e))

59
Q

No amendments may be filed in a supplemental examination proceeding

A

Cannot (Rule 1.620(f))

60
Q

A party other than the patent owner (i.e. any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding

A

Cannot (Rule 1.601(b))

61
Q

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

A

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

62
Q

Obtain a filing date for a supplemental examination if the request is not in compliance

A

Cannot (Rule 1.610(d))

63
Q

Obtain a filing date for a petition to institute a derivation proceeding unless the petition is received with the required fee

A

Cannot (Rule 42.404)

64
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 (Rule 1.53(b))

65
Q

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

A

Can (MPEP 103)

66
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 (MPEP 2209)

67
Q

Protest any pending application

A

Can (MPEP 1901)

68
Q

Obtain up to a five month automatic extension of time retroactively by filing a petition and paying the reuired fee at the time the response is filed

A

Can (MPEP 710.02(e), Rule 1.136(a))

69
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 (MPEP 513)

70
Q

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

A

Can (MPEP 710.02(e), Rule 1.136(a))

71
Q

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

A

Can (MPEP 712, Rule 1.137)

72
Q

Have an application made special

A

Can (MPEP 708.02)

73
Q

Interview an Examiner after an official action has issued

A

Can (MPEP 713.01)

74
Q

Amend claims in a reexamination in response to an Official Action

A

Can (MPEP 2234)

75
Q

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

A

Can (MPEP 140)

76
Q

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

A

Can (MPEP 140)

77
Q

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

A

Can (MPEP 2590)

78
Q

Correct inventorship of an issued patent or a pending application

A

Can (MPEP 600, 1481)

79
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 (MPEP 1308)

80
Q

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

A

Can (MPEP 706.03(x))

81
Q

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

A

Can (MPEP 2202)

82
Q

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

A

Can (MPEP 1302.14)

83
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 at least one day

A

Can (MPEP 201.11)

84
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 (Rule 1.137)

85
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 (MPEP 1490)

86
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

Can (MPEP 818.03(c))

87
Q

File a continuation in a reissue applcation

A

Can (MPEP 1445)

88
Q

Withdraw a recorded terminal disclaimer until the date the patent issues

A

Can (MPEP 1490)

89
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 (MPEP 201.03, Rule 1.48(a))

90
Q

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

A

Can (Rule 1.53(d))

91
Q

File a substitute specification

A

Can (Rule 1.125(b))

92
Q

Submit color photographs in a design application provided a petitioin and fee are submitted

A

Can (Rule 1.152)

93
Q

Obtain a fifth month extension

A

Can (Rule 1.136(a))

94
Q

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

A

Can (Rule 1.35(c))

95
Q

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

A

Can (Rule 1.601(c))

96
Q

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

A

Can (Rule 1.290)

97
Q

File a petition to institute a derivation proceeding in the Office

A

Can (Rule 42.402)

Patent Bar: MPEP (31 decks)

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