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AIA Flashcards

1
Q

In the simplest terms, what is §101?

A

The right to obtain a patent. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.”

35 USC 101

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2
Q

In the simplest terms, what is §102?

A

Novelty.

You must be the first person to invent (disclose or file) your invention.

35 USC 102

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3
Q

Describe a scenario where you are first to publicly disclose, second to file, yet are entitled to a patent; whereas the first party to file is not entitled.

A

First date: You publicly disclose.
Second date: They publicly disclose.
Third date: They file
Fourth date: You file.

The fourth date is within one year of the first date. Their disclosure cannot be used against you; but your disclosure can be used against them.

Both you and they came up with the identical invention independently.

35 USC 102(b)(1)(B)

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4
Q

For a published application or patent to be used as prior art, what is the key date?

A

It’s filing or priority date. Thus, a publication may be prior art against an invention even it was not publicly known as of the filing date for the invention.

35 USC 102(d)

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5
Q

How has “reduction to practice” changed under AIA?

A

The old concepts of “constructive reduction to practice” [filing a patent application] and “actual reduction to practice” [the invention works as intended] are no longer applicable for any legal purpose, for applications filed on or after March 16, 2013.

35 USC 102

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6
Q

In order to claim an invention is “owned by the same person,” what are the three requirements to use a joint research agreement for this purpose?

A
  1. The invention was made by, or on behalf or, the parties to a joint research agreement, on or before the filing date.
  2. The invention is the result of activities under the scope of the joint research agreement.
  3. The application discloses, or is amended to disclose, the names of the parties to the joint research agreement.

35 USC 102 (c)

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7
Q

Prior to AIA, some prior art and usage could be used against you dependent on in which country they occurred. What geographic limitations exist now?

A

None. Any public use, offer for sale, sale, or disclosure or publication, anywhere in the world is treated the same. (Disclosure by the inventor within one year is not prior art.)

35 USC 102

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8
Q

Prior to AIA, the “first to invent” was entitled to a patent. How was “first to invent” determined?

A

A proceeding before the Patent Board of Appeals and Interference, called an “interference hearing” was held, to determine who was first, as determined by reduction to practice and other evidence.

Interference hearings no longer exist.

35 USC 102

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9
Q

Prior to AIA, whether or not prior art was published in English mattered. Does it now?

A

No. There is no mention of language is the current patent law for prior art. An English translation of a foreign document may still be required for priority or filing date or for a submittal by an applicant.

35 USC 102

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10
Q

Some people say the new law is not really, “first to file,” but rather, “first to disclose.” What do they mean?

A

Under new §102(b), a disclosure made (by anyone) cannot be used against you, if prior to that disclosure, you publicly disclosed. This is true even if they were first to invent and first to file–so long as you did not derive your invention from them.

Not that the disclosures still must be 1 year or less from the filing date.

35 USC 102(b)(1)(B)

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11
Q

Suppose you and someone else each publicly disclose, each of you claims originally and accuses the other of copying. How is this resolved?

A

A “derivation hearing” is held by the Patent Trial and Appeal Board, the PTAB, (which used to be called the Board of Patent Appeals and Interference, the BPAI).

35 USC 135

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12
Q

There are four bars to obtaining a patent because it is “not novel.” What are they?

A
  1. Patent
  2. Described in a printed publication
  3. In public use,
  4. A sale or offered for sale.

None of these bars has any grace period. Note that “printed publication” now includes availability on the internet.

35 USC 102

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13
Q

There is still a “one year grace period” under the AIA. What does that grace period cover?

A

Disclosures made by the inventor (or another who obtained the subject matter from the inventor) within one year of the filing date.

35 USC 102(b)

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14
Q

What are the categories of public use that are bars to patentability in §102?

A
  1. Public Use
  2. A sale or bona fide offer for sale, even if not known to the inventor
  3. Other wise available.

35 USC 102(a)(1)

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15
Q

What are the categories of publications, such as could be prior art?

A
  1. Patents
  2. Published patent applications
  3. Non-patent publications, including information available on the web.

35 USC 102 (a)(2)

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16
Q

What are two oft-stated important differences between the old law and the new law, for inventors?

A
  1. New law is the “first to file” is entitled to a patent, rather of the “first to invent.”
    (From “first to invent” to “first to file” system)
  2. New law makes no mention of what country in which an act or disclosure occurs–previously, actions in the US, and actions in WIPO member states had unique attributes.

35 USC 102

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17
Q

What date did the America Invents Act (AIA) fully take effect?

A

Key provisions, such as new §102 and §103 took effect March 16, 2013. Other provisions took effect September 16, 2012.

AIA

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18
Q

What is the “effective filing date” of an application as applied to “first to file” [§102(a)]

A

The earlier of:

  1. Actual filing date, or
  2. The earliest applicable filing date for a patent or application that is entitled to a right of priority or the benefit of an earlier filing date.

35 USC 102(d)

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19
Q

Can “nonanalogous art” be used to overcome both §102 and §103 rejections?

A

No. Only §103 (obviousness) rejections.

MPEP 2141.01 (a)

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20
Q

Can “secondary considerations” be used to overcome both 102 and 103 rejections?

A

No. Only §103 (obviousness) rejections.

MPEP 2131.04

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21
Q

Can “teaching away” be used to overcome both 102 and 103 rejections?

A

No. Only §103 (obviousness) rejections.

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22
Q

Can an examiner make a 102 rejection where the “arrangement of elements” in the reference is slightly different that the claim being rejected?

A

No. For a §102 rejection, the arrangement of elements must be the same, otherwise the examiner should use a §103 rejection.

MPEP 2141

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23
Q

In the simplest terms, what is §103?

A

Obviousness. Your invention cannot be “obvious” to an ordinary person trained in the art, as of your filing date.

35 USC 103

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24
Q

An inventor is not entitled to a patent if the invention is “obvious.” What is “obvious?”

A

“The differences between the claimed intention and the prior art are such that the claimed invention would have been obvious to a person having ordinary skill in the art.”

As of the effective filing date.

35 USC 103

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25
Q

How are the old §103 and the new AIA §103 different?

A

They are effectively identical.

The old §103 had a special definition of non-obviousness for “biotechnological process” involving “exogenous nucleotide sequences.” This special definition has been removed, resulting in a simple, one paragraph legal definition of “obviousness.”

35 USC 103

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26
Q

Is an earlier reference with a different inventive entity always prior art?

A

Yes. A Derivation Proceeding may be used to determine who is the “inventor” and thus who is entitled to a patent. The one year disclosure limit and who “obtained the subject matter” from whom becomes crucial.

MPEP 2137.01

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27
Q

What are the parts of 35 USC 111

A
  1. §111(a) Filing a nonprovisional patent application.
  2. §111(b) Filing a provisional patent application.

35 USC 111

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28
Q

How is 35 USC 112 related to the Specification?

A

35 USC 112, six short paragraphs, is the critical law requiring a written description in “full, clear, concise and exact” terms. Also, “claims particularly pointing out and distinctly claiming subject matter which the applicant regards as his invention.”

35 USC 112

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29
Q

What is 35 USC 112, paragraph (b)?

A

The second paragraph (b) requires claims:

The specifications shall conclude with one or more claims particularly pointing out and distinctly claiming the subjeect matter which the applicant regards as his invention.

I.e. The need for claim language. Specification must have claims.

35 USC 112(b)

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30
Q

What should the examiner do if the applicant’s reply or briefs are inconsistent with the claims?

A

Reject under 35 USC 112(b), “…what the inventor regards as his invention.”

Providing evidence during prosecution limiting the scope can be problematic for the inventor.

Any inconsistency may be considered “evidence that the inventor did not possess the claimed invention.”

MPEP 706.03(d)

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31
Q

What should the examiner do if the claims in the application fail to describe the interrelationship between elements in the claim?

A

If the claims, “fail to interrelate critical elements” as described in the specification then rejection is under 35 USC 112(b), because the claims fail to point out the “subject matter” in the specification.

MPEP 706.03(d)

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32
Q

When an application uses a “means plus function” limitation in a claim, what is actually claimed?

A

Only those structures, material, or acts described in the specification. “Equivalent” structures are only encompassed by the claim if they were NOT known as of the filing date.

35 USC 112, O’Reilly v. Morse, 56 US 62 (1853).

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33
Q

Why is 35 USC 112(f) important?

A

Paragraph 6(f) permits the use of “means” in a claim: “a means or step for performing a specifiedfunction without the recital of structure, material, or acts.”

A “means” is distinct from a claimed structure, material or act, which are the most common claim elements.

35 USC 112(f)

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34
Q

What is the new numbering for the prior 35 USC 112, paragraph 6?

A

This critical paragraph was renumbered from 35 USC §112 ¶6 to 35 USC §112(f). This critical paragraph is known as “means plus function.” It permits a claim to include a limitation without recital of a corresponding structure to implement a function. There is no change to this element of the law; simply a more convenient way to refer to it.

35 USC 112

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35
Q

What is the three pronged test to see if a claimed “means” meets the test of 35 USC 112 sixth paragraph?

A

The three prongs are:

  1. The claim must use the wording “means for” or “step for”; and
  2. The “means for” must be modified by functional language; and
  3. The phrase must not be modified by structure, material, or acts.

35 USC 112

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36
Q

37 CFR 1.48 is used to correct inventorship. What is the difference between part (a) and part (b)?

A

(a) is used to add or delete inventor names. All inventors have to sign the oath and assignee must consent.
(b) is used to drop an inventor when claims for his part of the invention are cancelled. May be signed by the attorney–no oaths needed.

37 CFR 1.48

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37
Q

What is “Make Special?”

A

Make Special is petition for Acceleration Examination. An extensive pre-examination Search Statement and Accelerated Examination Support Document are usually required, and must be submitted with the original application.

MPEP 708.02(a)

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38
Q

One of the five reasons that a “Make Special” petition may be filed without a fee, which two reasons also waive the onerous preexamination search report and the accelerated examination support document?

A

The applicant’s health or age (65 or over).

MPEP 708.02(a)

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39
Q

There are five reasons that a “Make Special” petition may be filed without a fee. What are these?

A
  1. Applicant’s health or age (65 or over);
  2. The invention will materially:
    a. enhance the quality of the environment,
    b. aid development or conservation of natural resources, or
    c. contribute to countering terrorism.

MPEP 708.02(a)

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40
Q

What is in a “preexamination search report?”

A
  1. Search must include US patents and applications, foreign patent documents, and non-patent literature
  2. Search must encompass all claims
  3. Identify fields of search by class and subclass
  4. Date of searches
  5. Databases searched
  6. Search logic used
  7. Copies of non-US patent references.

MPEP 708.02(a)

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41
Q

What is in an “accelerated examination support document?”

A
  1. Cite each reference most closely related to the claims
  2. For each reference, cite the location in the reference for each claim limitation disclosed by the reference.
  3. Detailed explanation of patentability over the each citation
  4. Showing of location in the specification for each limitation of each claim

MPEP 708.02(a)

42
Q

What must be filed along with a petition to “make special under accelerated examination?”

A
  1. A “preexamination search report,” and
  2. An “accelerated examination support document”

Unless applicant is in poor health or 65 or over.

MPEP 708.02(a)

43
Q

Are there time limitations in responding to Office Actions in an Accelerated Examination?

A

Yes, 1-month response time, non-extensible, or your application will go abandoned. The first Office action provides for a non-extensible 3-month reply period.

Note that you cannot opt out of Accelerated Examination, either.

MPEP 708.02(a)

44
Q

How fast will the Office examine accelerated examination applications?

A

Final disposition (final OA or notice of allowance) within 12 months of complete and proper application, petition, and supporting documents.

MPEP 708.02(a)

45
Q

If I am granted a Make Special petition, how do I later “opt out?”

A

You cannot opt out of the Accelerated Examination process for an application. Filing an RCE will not terminate, either. You may file a new application, claiming the earlier priority date, and thereby start the examination (an the wait) from scratch.

MPEP 708.02(a)

46
Q

What are appeal limits during Accelerated Examination?

A
  1. No interview.
  2. Claims cannot be argued separately.
  3. Shortened response time.

MPEP 708.02(a)

47
Q

What are other attributes of accelerated examinations?

A
  1. No ability to “withdraw” from program
  2. No preliminary amendment allowed
  3. Any translations provided on filing date
  4. No petitions for a non-signing inventor
  5. No time extensions permitted (!!)
  6. On appeal, all claims stand or fall together

MPEP 708.02(a)

48
Q

What are the claims limits for a Make Special application?

A

Applications are limited to three independent claims and 20 total claims.

MPEP 708.02(a)

49
Q

What are the technical filing requirement to petition to “make special under accelerated examination?”

A
  1. Signed petition, statement; and fee or claim for fee waiver
  2. Non-reissue utility application
  3. Electronically filed
  4. Complete application (fees, oath, etc.)
  5. 3 independent and 20 total claims limits
  6. One invention without traverse;
  7. Agree to interview

MPEP 708.02(a)

50
Q

What terminates an Accelerated Examination?

A
  1. Filing a Notice of Appeal
  2. A notice of allowance
  3. A final Office Action
  4. Abandonment
  5. A secrecy order or derivation hearing suspends accelerated examination

MPEP 708.02(a)

51
Q

What types of applications are eligible for accelerated examination?

A
  1. Nonprovisional utility applications
  2. Continuations and continuations-in-part
  3. Divisional applications
  4. Design applications

MPEP 708.02(a)

52
Q

What types of applications are NOT eligible for accelerated examination?

A
  1. RCEs (The continue to be examined accelerated or not under previous status)
  2. Reissue applications
  3. National stage international applications
  4. Plant applications

MPEP 708.02(a)

53
Q

What are key differences between accelerated examination and prioritized examination?

A

Accelerated examination is a request, which is free if granted, but requires a large number of special submissions (see other cards). Prioritized examination is simple purchased ($4000, currently). The Office attempts to complete examination of both within 12 months. An applicant can opt out of prioritized examination but not accelerated examination.

MPEP 708.02(a) and (b)

54
Q

May an unsigned inventor inspect the patent files under prosecution?

A

Yes. An unsigned inventor is still an inventor, in the eyes of the USPTO.

In fact, an unsigned inventor’s rights are protected on an issued patent.

However, an unsigned inventor cannot get a hearing or participate in the prosecution.

MPEP 409.03(i)

55
Q

May the assignee restrict access to the patent prosecution file?

A

No, however the assignee may REQUEST that the inventor be denied access, which then may be petitioned against by the inventor.

MPEP 106

56
Q

Claims were cancelled in order to file a divisional, but the divisional was never filed. The patent issued. How does the practitioner get back the cancelled claims?

A

File another patent application within one year of publication.

MPEP 1412.02

57
Q

What’s the difference between an ADS and an IDS?

A

The application data sheet (ADS) has “bibliographic” information such as inventors, practitioners, assignees, addresses, and priority applications.

The information disclosure statement (IDS) lists prior art patents and publications.

37 CFR 1.76 and 1.97

58
Q

What is an advisory action?

A

Following final rejection the applicant has 3 months (SSP) to respond. If the applicant responds withing 2 months, but the response does NOT place the application in condition for allowance, the examiner may mail out an advisory action. The key fact is that the response period is the LATER of the original 3 months or the mailing date of the advisory action. This is useful mostly for calculating extension fees.

MPEP 706.07(f)

59
Q

The new §102 and §103 took effect on March 16, 2013. To what patent applications do the old rules still apply?

A

35 USC §102 and §103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications.

35 USC 102 and 103

60
Q

What is “deceptive intent”?

A

Prior to AIA, requesting corrections (such as inventorship) required the petitioner to state that the original error was “without deceptive intent”. This was done with a checkbox on the filing form. This phrase has now been eliminated.

61
Q

What is the new name for the old “Board of Patent Appeals and Interference—BPAI?”

A

The Patent Trial and Appeal Board—PTAB.

AIA

62
Q

Are dictionaries “Evidence?”

A

No. An examiner may cite from a dictionary without that being considered a new reference. Note that the reason for the initial rejection cannot change in the examiner’s answer, or that would be new grounds. The dictionary should be a “standard work.”

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

63
Q

Can an applicant file a petition seeking a review of an examiner’s failure to designate an answer as a new ground for rejection and file a reply brief at the same time?

A

An applicant could, however under the new rules the applicant can await a decision on the petition before filing the reply brief, and thereby avoid having to request an extension of time in which to file the reply brief.

Fed Reg/Vol. 76, No 225 pp. 72270-72299

64
Q

Can the PTAB (formerly, the BPAI) find new ground for rejection if they have been asked to consider an appeal on the grounds of statutory subject matter?

A

Yes. The Patent Trial and Appeal Board may find that a patent is invalid as indefinite, failing 3 USC §112(b). Having so found the claims as indefinite, statutory patentable material is then not possible to consider.

Appeal 2010-011767

65
Q

How is a “new ground for rejection” now defined, for an examiner’s answer?

A

Any rejection that relies upon Evidence not relied upon in the Office Action from which the appeal is taken (as modified by any advisory action) shall be designated as a new ground for rejection.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

66
Q

If an appellant fails to make an argument in an appeal brief, is that argument waived?

A

Yes. The Board need not consider any argument not initially raised in the appeal brief, “unless good cause is shown.”

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

67
Q

If an examiner changes the statutory basis of a rejection from §103 to §102, citing the same teachings as before, is this a new ground for rejection?

A

No.

An examiner may also cite fewer that the prior number of references in a §103 rejection without triggering a new ground.

(Consider that the application has already had a “fair” chance to respond to the §103 rejection.)

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

68
Q

If an examiner changes the statutory basis of rejection from §102 to §103, is that a new ground for rejection?

A

Yes, if the examiner cites a new portion of the prior Reference that includes new scope, or cites a new Reference.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

69
Q

If an examiner cites a new structure in support of obviousness, is this a new ground for rejection?

A

Yes, if the examiner relies on a different structure. However, citing a different portion of a prior reference to elaborate upon a previous rejection does not constitute new ground.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

70
Q

If an examiner recites previously cited prior art used in a rejection, but changes the basic thrust of the rejection, is this a new ground for rejection?

A

Yes. A change to the “basic thrust of the rejection” triggers new ground. The examiner does not have to use the identical language as before, however, for the basic thrust to be the same.

(In re Kronig, 539 F.2d at 1303)

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

71
Q

Is a new ground for rejection possible, citing prior References?

A

Yes. If the examiner presents a new “thrust of rejection,” using an argument such that the application has not “had fair opportunity to react,” then that is a new ground for rejection. The examiner may preserve the “thrust” while using new words.

(In re Kronig, 539 F.2d at 1303)

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

72
Q

Name at least three (out of five) statements no longer required in an appeal brief.

A

No longer required:

  1. Status of claims
  2. Status of amendments
  3. Grounds for rejection
  4. Evidence appendix
  5. Proceedings appendix

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

73
Q

Over what aspects of ex parte appeals does the Patent Trials and Appeals Board (PTA, formerly, BPAI) have jurisdiction?

A

The Board has jurisdiction to consider and decide ex parte appeals for utility, reissue, design, and plant applications, and ex parte reexaminations.

This is no change in jurisdiction from before.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

74
Q

What do the new rules for ex parte appeals change?

A

(i) removed some requirements from the brief;
(ii) the PTAB takes jurisdiction sooner;
(iii) reply briefs are not acknowledged;
(iv) review of a decision based on a new ground for rejection is possible;
(v) the appeal now applies to all rejected claims;
(vi) new Evidence cited by an examiner is a new ground for rejection.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

75
Q

What happens to an IDS or a petition filed while the PTAB has jurisdiction on an application?

A

An IDS or petition filed during jurisdiction by the Board is held in abeyance until the end of their jurisdiction.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

76
Q

What information no longer needs to be in the appeal brief?

A

(i) status of all claims;
(ii) status of amendments;
(iii) grounds for rejection to be reviewed;
(iv) an Evidence appendix.

Also, these do not need to be in the examiner’s answer.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

77
Q

What is the effective date for the new ex parte appeals rules?

A

January 23, 2012.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

78
Q

What is the stated purpose of the ex parte appeal changes?

A

To lessen the burden on both applicants and examiners during the appeal process.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

79
Q

What should be in the headings in an appeal brief?

A

The headings should “reasonably identify the ground being contested, by claim number, statutory basis, and applied references.” However, this is not an absolute requirement, under the new rules.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

80
Q

When do the new rules for practice before the Patent Trials and Appeals Board (PTAB, formerly BPAI) take effect?

A

For notices of appeal filed on or after January 23, 2012.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

81
Q

When does the PTAB take jurisdiction of an application?

A

The PTAB will take jurisdiction upon th efiling of a reply brief or the expiration of time in which to file such a reply brief, whichever is earlier.

These events occur after a notice of appeal has been filed by the applicant.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

82
Q

Which claims are under appeal to the Board when an appeal brief is filed?

A

All claims under rejection, unless they have been cancelled by an applicant’s amendment.

Fed Reg/Vol. 76, No. 225 pp. 72270-72299

83
Q

Can a denial of a request for inter partes review be appealed?

A

Yes, a petition for review may be filed within a month.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

84
Q

Has ex parte reexamination changed under AIA?

A

No. However, the ex parte reexamination filing fee has shot up to $17,750.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

85
Q

What does the requestor of a inter partes review have to provide?

A

“A statement pointing out, based on the cited patents and printed publications, each showing of a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.”

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

86
Q

What is the difference between “review” and “reexamination?”

A

“Inter partes review” replace the old “inter partes reexamination.” As of September 16, 2012, for all patents. (Filing date doesn’t matter.)

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

87
Q

What is the key difference in the standard for the USPTO to accept an inter partes review request under AIA?

A

“Reasonable likelihood the requestor will prevail” on at least one claim in the request.

The old standard for accepting the request was the weaker standard of, “substantial new question (SNQ) of patentability.”

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

88
Q

Which review/reexamination requests use the “substantial new question of patentability” (SNQ) standard for acceptance by the USPTO?

A

The old inter partes and both the old and new ex parte reexamination requests.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

89
Q

Who determines the response, and how long does the Office have, to respond to an inter partes request?

A

The request is considered by the examiner.

The Office must respond within three months.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

90
Q

The new AIA laws took effect over a handful of different dates. Which two dates are the most critical?

A

The new §102 and §103, including first-inventor-to-file and this derivation proceedings: March 16, 2013.

Inter partes review, post-grant review, supplemental examination, and third-party submissions (think: “patent reviews”): September 16, 2012.

AIA

91
Q

What are the three names for the AIA?

A
  1. Leahy-Smith
  2. America Invents Act
  3. AIA
92
Q

Under what conditions does an inventor NOT have to sign an oath or declaration?

A

The assignee can file an application without the inventor’s signature when the inventor is “under an obligation to assign,” but has refused to do so or is dead. The assignee must describe these circumstances, and may be asked to provide additional information.

Effective September 16, 2012.

35 USC 1.15(d)

93
Q

What was the old name for the Patent Trial and Appeals Board (PTAB)?

A

It was the Board of Patent Appeals and Interference (BPAI). This Board has largely the same roles and jurisdictions as before.

Expect to see, “The Board” used on the exam to cover both the old and new acronym.

94
Q

Can applications entering the national stage under 35 USC 371 take advantage of Track I prioritized examination?

A

No. Nor does it apply to design, reissue, or provisional applications, or to reexaminations.

However, national stage applicants may file a “bypass continuation,” and then a request for prioritized examination.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

95
Q

What are examination Track I, Track II, and Track III?

A

Track II is regular examination.

Tracks I and Tracks III each require a request. Track I, “prioritized examination, “has additional fees of $4000, plus significant additional application requirements. Track III delays payment of search and examination fees up to 30 months.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

96
Q

What are the claims limitations for an application that requests prioritized examination?

A

No more than 4 independent claims and 30 total claims.

Note that for “accelerated examination”–different from “prioritized examination”–the claim limits are 3 and 20, respectively.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

97
Q

What are the requirements for applying for Track I examination?

A
  1. Utility, plant, or continuation applications
  2. Apply after Sept. 26, 2011
  3. All fees paid including Track I fees
  4. Filed online (EFS-Web)
  5. Meets the 4/30 claims restrictions
  6. Only 10,000/year requests granted
  7. Search and detailed patentability analysis required.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

98
Q

What is “Track I” procedure?

A

The USPTO’s other name for prioritized examination.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

99
Q

What is the fee for prioritized examination?

A

$4,000

$2,000 for a small entity.

During the exam, you can look up fees in the fee table. Be sure you know how to do this rapidly.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

100
Q

What is the period for reply to Office Actions in a prioritized examination?

A

One month, non-extensible.

Fed Reg/Vol. 76, No. 185 pp. 59050-59055

Patent Bar (6 decks)

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