Exam Questions and Concepts Flashcards
There are 52 Tables as part of the application can you submit them on CD Rom?
NO
- ONE table more than 50 page long can be submitted on CD.
- ALL tables TOTAL more than 100 pages, then OK
Can the International Search Authority create an abstract for a PCT application?
YES
- The ISA (International Search Authority) WILL create an abstract if one is missing.
- Applicant may within 1 MONTH of the from the date of mailing of the international search report make comments on the abstract.
HOWEVER, under USPTO examiner WILL NOT supply missing abstract but MAY amend one if application is in condition for allowance.
Under Graham vs. John Deere Co. what are the four factors for OBVIOUSNESS?
(A) Determining the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
(D) Evaluating evidence of secondary considerations.
You represent Joe Blockhead who files a nonprovisional application which claims the benefit of a provisional application. You receive a Notice of Allowance and Blockhead decides that he wants to extend the term of his patent and remove the benefit. How do you enter an amendment to do this?
a) Pay the issue fee then file a RCE with the amendment.
b) Don’t pay the issue fee, and file a RCE with the amendment.
c) Juggle watermelons (not really, but something out there)
d) Pay the issue fee then file an the amendment.
e) Don’t pay the issue fee, and file the amendment.
B.
Amendments not entered as a matter of right. RCE can only be filed before Fee is paid.
Test takers report a second variant of deleting a benefit claim that hinges on the following:
Realize the 4 months/16 months deadlines (see 1.55(a) and 1.78(a)(2)(ii)),
figure out these deadlines are exceeded, and
realize that because the applicant removed the claim himself he cannot avail himself of adding the claim as unintentional (new ground of rejection is applied after the application withdraws his claim, and he has no way to put the claim back).
In a PCT application how long do you have to file missing parts?
2 months (PCT rule 20.7)
Otherwise parts are considered not part of it (possibly causing abandonment)
So if 1 part is submitted in time and the other isn’t then the application is not timely filed.
What to do if there are no claims in a PCT application and that PCT application claims the benefit of a provisional application. How can these claims be sent to the USPTO? The options are to send the claims by facsimile, by express mail, by certificate of mailing, and two others that were off-the-wall answers.
According to the MPEP, you can’t use a certificate of mailing for PCT. You can use a fax as long as you’re not submitting documents to enter the national stage of an application.
You can use EXPRESS MAIL to get a filing date.
No claims means no filing date!
Filing Fee cannot be done by FAX!
A test taker reported a question where the applicant submits three different amendments to the UPSTO as the Receiving Office of a PCT application.
a) Correcting a misspelled word “ccar”
b) Adding a drawing that was accidentally left out but is in earlier filed provisional or non-provisional application benefit of which is claimed.
c) Adding a page to explain in the specification something clearly shown on a drawing.
Only A can be corrected.
2 practitioners, one suspended for 3 months (whose address was correspondence address). Which of the following are allowed EXCEPT:
(A) sending an action to the first named inventor,
(B) Send to the last known address of the OTHER attorney
(C) Send to the suspended practitioner because he is only suspended for 3 months and by the time he would reply his 3 months suspension would be up
(D)??????
(E) ???
C
