Flashcards in 700 Deck (34):
all dates computed from
PTO mailing date, everything has to be back in 6 months, if shortened then can buy the rest
if due dates falls on USPTO’s Weekends and holiday
then respond the next working day at PTO
due dates for a second and succeeding month are still calculated from
OA mailed on 3/12, setting 3 months
if response filed 6/14 is timely because 6/12 is saturday,
what about deadline for extension of one month
original mailing date
ok if file on 7/12
not ok if 7/14 have to have 2 months extension
if there is no such date in the month when due then due date is?
last day of the month
when an auto extension fee is not available or the full 5-months extension has been obtained, the only recourse is?
petition to extend for cause and for a reasonable time with fee
petition for cause can be obtained retroactively
false, must be in advance
reexamination is not a?
patent app, reexam request can netter be abandoned nor withdrawn
filing a second response or a notice of appeal after filing a first response to a final rejection may require
a further auto extension of time
extension of time cannot be obtained to
pay the issue fee, but issue fee can be paid late upon proper showing
when obtaining an extension of time for continuation and have the parent copending, response to parent?
an extension of time to a final rejection extends the due date for a
response, filing notice of appeal, filing continuation
when an app is filed with missing parts (OD, translation, fee) the app has
the app has 2 months from the filing date if no correspondence address is included, or 2 months from the date the notice of missing parts is mailed, to file the required papers
deadline can be extend auto up to 5 months and no 6 months max
deadline for appeal brief is calculated from
deadline for appeal brief is calculated from the date of receipt of notice of appeal at the PTO, even when the certificate of mailing is properly employed (the date PTO receives it can be known from the return post card u sent)
papers can be filed by? until?
in person, by fax, by mail until midnight on the day due
1 month and 2 months mean?
what about 3 and more
no less than 30, 60 days (still can be more if both 31 days month)
restriction mailed on 1/30 is timely replied if filed on 3/2
3 and more is calendar calculation
dont respond within 3 months shortened, went abandoned, is it abandoned?
yes, but they won't tell u and u could merely pay a fee to revive until the 7 months, at 7th months they will tell u ur app went abandoned at the 3 months expired time
• Swearing back under 1.131 (pre-AIA 102(a) and 102(e) only)
o Establishing by submission of affidavits or declarations an earlier date of invention based upon:
• An actual reduction to practice, or
• Conception and diligence from the critical date to the actual or constructive (filing) reduction to practice
o Prior art cant be removed if it claims the invention, interference
Affidavit practice under CFR 1.132
o Used to submit facts to rebut prima facie showing of obviousness, to establish utility or to establish enablement
o Proof of secondary considerations can be submitted in reexamination and reissue, even include evidence that were not available before the issuance of the original patent
o Can also establish utility, operability and the like
1.130 for AIA 102(b)
o 1.130(a) attribution
• 102(b)(1) and 102(b)(2) own prior disclosure
o 1.130(b) prior public disclosure
• own prior disclosure before 3rd party disclosure
What is the latest date that an appeal brief can be filed with automatic extensions of time to avoid abandonment
The Appeal Brief is due two months after the Office receives the Notice of Appeal, and the filing of the Appeal Brief is fully extendable. This means you have two months plus the 5 months of automatic extension available.
but for auto extension, u either need to file general authorization to charge the fee, or need an automatic extension requested or paid for at the time the Appeal Brief was filed
house burned down and didn't reply because the OA was burned, what to do now if reply period expired
Immediately file a petition to revive the application as unintentionally abandoned and pay the required fee.
A petition may be filed to revive the abandoned application. The Patent Law Treaties Implementation Act (“PLTIA”) has eliminated the “unavoidable” delay standard. There is now a single standard (unintentional delay) and petition fee for reviving an abandoned application, accepting a delayed patent owner response in reexamination, and accepting a delayed maintenance fee payment. Furthermore, the PLTIA eliminates the 24-month time period requirement for petitions to accept an unintentionally delayed maintenance fee payment.
after A Notice of Allowance is sent, seeking to amend the scope of the claims, what to do
File a Request for Continued Examination under Rule 114 with a preliminary amendment deleting the limitation.
Applications may be withdrawn from issue for further action either at the initiative of the Office or upon petition by the applicant. Generally speaking, to request that the Office withdraw an application from issue, the applicant must file a petition showing good and sufficient reasons why withdrawal of the application from issue is necessary, and pay the inevitable Patent Office fee. A petition is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application. Thus, because the issue fee has not yet been paid, no petition is necessary and the claims can be fixed by filing an RCE.
An application of your client John Doe was filed first in France on April 14, 2011, and then in the United States on March 14, 2012. A proper claim for priority was made and a certified copy of the French application was submitted. Claims 1 and 2 are rejected by the examiner under 102(e) based upon a U.S. patent to Woods that issued on August 1, 2013, which was filed in the U.S. on March 1, 2012. Woods teaches but does not claim the teachings of claims 1 and 2.
The most appropriate response would be:
File a response pointing out the priority date accompanied by a translation of the French application with a statement that the translation of the certified copy is accurate
The Office may require that the claim for priority and the certified copy of the foreign application be filed when necessary to overcome the date of a reference relied upon by the examiner.
213 Right of Priority of Foreign Application
37 C.F.R. 1.55(g) Requirement for filing priority claim,certified copy of foreign application, and translation in any application.
A CIP can have as its effective filing date the filing date of a parent application even though that parent application does not satisfy the disclosure requirement of 35 USC 112(a).
false; It is true that “A CIP can have as its effective filing date the date of a parent application,” but an application can take priority only from an earlier application that satisfied the 112 requirements as of the time of filing.
References based on the national stage (35 U.S.C. 371) of an International Application filed on or after November 29, 2000 and which was not published in English under PCT Article 21(2).
what if later the international application entered the national stage.
706.02 examples about 102(e) date
The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: None.
regardless of whether the international application entered the national stage.
IA filed in swedish US designated on 1/1/2001, IA published by WIPO in english on 1/6/2002
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.
inventors may make an app jointly even if they?
1, didn't physically work together or at the same time; 2, each inventor didn't make the same type or amount of contribution; or 3, each inventor didn't make a contribution to the subject mater of every claim of the app
nonprofessional may be converted to a provisional app be accorded the original filing date of the previously filed app, but request must be filed before the earliest of?
1, abandonment of the originally filed app; 2, payment of the issue fee; 3, expiration of 12 months after the filing date of the originally file app
a provisional rejection for double patenting and a provisional rejection under 102(e) cannot be made in the same OA
false; both can be made provisionally when the first filed but unpublished app; for 102e if there is common assignee or inventor (Note that provisional rejections over pre-AIA 35 U.S.C. 102(e) are only authorized when there is a common inventor or assignee, otherwise the copending application prior to publication must remain confidential.)
because 102e relates to disclosure and double patenting relates to claims, it is possible for both provisional rejections to be made together in the same OA
an IDS must include a translation of any references that anticipate any claims
false; for non-english docs that cited, applicant must supply a concise explanation of the relevance and/or a written english language translation of the doc
All patents (other than design patents) that were in force on June 8, 1995, or that issued on an application that was filed before June 8, 1995, have a term that is the greater of the “twenty-year term” or seventeen years from the patent grant. See 35 U.S.C. 154(c). A patent granted on an international application filed before June 8, 1995, and which entered the national stage under 35 U.S.C. 371 before, on or after June 8, 1995, will have a term that is the greater of seventeen years from the date of grant or twenty years from the international filing date or any earlier filing date relied upon under 35 U.S.C. 120, 121 or 365(c).
For applications filed on or after June 8, 1995, Section 532(a)(1) of the Uruguay Round Agreements Act (Public Law 103-465, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the term of a patent (other than a design patent) begins on the date the patent issues and ends on the date that is twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under 35 U.S.C. 120, 121, or 365(c), twenty years from the filing date of the earliest of such application(s).
an IDS is timely filed within 3 months from the filing of a provisional app
false; no IDS in provisional because provisional are not examined and dont need to have claims
improper multi dependent claim count as?
only 1 claim