Flashcards in Mini-Exam and Exercise Points Deck (76)
Do you have to record an assignment?
No but it is helpful in keeping your interest safe from subsequent assignments.
Can you get the ENTIRE CONTENTS of a pending unpublished application incorporated by reference into an issued patent without notice?
No, if you wanted a copy then yes but not the entire thing.
A person may not execute a substitute statement unless they have reviewed and understood the contents of the application.
Yes, you have to review it.
What if you forget an inventor in a provisional?
Fix it. 1.48
Failure to record an assignment will result in that assignment being null and void.
The recording of a document is not a determination by the Office of the validity of the document or the effect that document has on the title to an application.
Errors in recording assignments can be corrected, and no new recording fee is required.
An abandoned provisional patent application relied upon for priority in a non-provisional U.S. patent application is available to the public upon written request and payment of a fee.
A petition to withdraw from representing a client in an application is effective upon filing.
Every U.S. - origin application filed in the USPTO is considered to include an implicit petition for a foreign filing license.
An inventor can be added to a provisional application under 37 CRF 1.48(d)
Requires a fee
While only the assignee of record of the entire interest can intervene in the prosecution of an application, an assignee of a part interest or a licensee of an exclusive right is entitled to inspect the application.
True. Only the assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant.
An assignee of a part interest or a licensee of an exclusive right is entitled only to inspect the application.
A foreign filing license is not required to file a design application overseas, even if the design was invented in the US.
A substitute statement does not need to identify the circumstances leading to the unavailability of the inventor, but rather may merely state the applicant is the assignee and owns 100% of the right, title and interest in the claimed invention.
False, must include reason.
An inventor who protests his or her designation as an inventor is not entitled to inspect the file or to participate in subsequent prosecution.
Your client MageCorp has merged with its large competitor MegaGiant. The certificate of merger is not recordable in the USPTO because it does not affect title.
A non-exclusive licensee may not record the license agreement.
A resident alien may be given limited recognition to prosecute a specific application or applications upon a showing of circumstance that it is necessary or justifiable.
Loses if they leave the country.
Registered attorneys or agents who are not of record in the file may not file papers in a patent application.
What do you do if a client comes in unhappy with their attorney?
File a Power to Inspect and obtain a copy of the Official Patent Office file as soon as possible.
**Need to see file first and foremost.
When can you get a suspension?
IF and ONLY IF the examiner is on the clock.
You file a petition.
What do you do if you have two foreign filings?
Go with the earlier one.
How does an inventor avoid a first filing in a foreign county?
The first filed application needs to be withdrawn, abandoned or otherwise disposed of.
**Must be in the EXACT COUNTRY of first filing.
Can you claim priority through a provisional?
No a provisional starts the process.
What matters for the start of a Patent Term?
20 years from a non-provisional application filed in the U.S.
How to correct inventorship pursuant to 1.48 (a)?
Requires an Application Data Sheet
- identifies each inventor by legal name
- pay a fee
When is a provisional most appropriate?
When an inventor comes to you and are not ready but have something that could be patented as is.
You want to file as early as possible.
Facts about Foreign Priority
1. An inadvertent failure without deceptive intent to claim or perfect a claim for foreign priority can be cured by seeking a reissue.
2. The priority period for design applications is six months.
3. A translation submitted to establish foreign priority rights of an application not in English need not be sworn or in the form of a declaration.
4. Rather than submitting another certified copy of a priority document reference can be made to a document previously filed in another U.S. application.
When is an English translation required?
1. when the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner;
3. When specifically required by the examiner.
Ways to abandon an application?
1. An express abandonment of a pending application.
2. Failure to take appropriate action in a pending application.
3. Failure to pay the issue fee.
4. Passage of more than 12 months in the case of a provisional application.
Ways to abandon an invention?
Next to impossible.
You disparage the invention in something you file.
What is the rule of the duty of disclose?
Anyone involved in the application has a duty to disclose.
What must an Oath or Declaration do?
1. ID each inventor by his name.
2. ID the application to which the Oath or Declaration is directed.
3. Include a statement that the person executing the O/Dec believes the names inventor or joint inventor to be the original inventor or original joint inventor of the claimed invention for which the oath or declaration is being submitted.
4. State that the application was made or was authorized to be made by the person executing the oath or declaration.
Is an offer for a license going to trigger a problem?
No for either post or pre-AIA
Secret sale or use activity does not qualify as prior art under AIA 102(a)(1)
How to establish entitlement to an exception under AIA 102(b)(1)(B)?
You would file a 1.130 Affidavit
When can the foreign filing date be used for priority?
If it used to claim priority back to:
1. US Patent that issues
2. US Patent Application publication
3. WIPO PCT published application.
Is there a requirement that the disclosure be verbatim or identical to be entitled to the intervening grace period?
Not verbatim but not defined exactly.
NOT ipsissimis verbis
Failure to respond to a Notice of Omitted Items will result in the application being abandoned
Satisfying the claim with a statement claiming the information provided by the applicant.
These are allowed but not recommended.
When is a five-month automatic extension of time to file always possible?
1. Filing Appeal brief
2. Responding to the Notice of Missing Parts
Notice of Appeal Response Date
Runs from date of receipt or Express Mail.
2 month free - 5 months for extension
Extension Available for Appeal Briefs
Seven Months total
When can you file an RCE?
When prosecution has ended.
What are the two ways for prosecution to end?
1. Notice of Allowance
2. Final Rejection
What is to disclaim?
Giving up rights to exclusivity of the patent.
Doesn't matter to prior art.
What is the prior art of a copy of something in a library? (Thesis)
The prior art date is the Date Stamp.
Must be indexed properly
The day is accessible.
What is considered to NOT be NEW MATTER in your application?
Everything filed in your initial disclosure.
An agent or attorney who files a response to a non-final action which is incomplete is given one month, or until the end of the period for response whichever is greater, to complete the response unless it appears that the failure to respond fully was intentional.
Can you convert a non-provisional to a provisional?
Yes if it is:
1. Before issue fee being paid
2. The Non-provisional does not have any claims.
When can you Appeal?
After the Second or Final rejection.
Secret stuff under AIA
That which is secret CANNOT be prior art.
An IDS must include a translation of any references that anticipate any claims.
Do you file an IDS in a provisional?
What you need to know for Plant Patents?
1. Discovered in a cultivated area (not wild)
2. Asexually reproduced
**Cannot be tuberpropagated. (jerusalem artichoke/ potato)
Difference between what can be used in re-examination and supplemental examination
If stemming from Re-examination, only patent and printed publications
If stemming from a supplemental examination, anything can be used.
Can you use a PCT for a design application?
Must the real party in interest be the party that Appeals?
What happens if, during a Appeal, no assignee or interested party is defined?
The board will assume that the inventor is the real party in interest.
Streamline the rules to avoid delays by formalities.
Can a provisional double-patenting rejection can be made even when there are no common inventors?
Yes, but you would need common ownership.
What happens if the Patent Office determines at the conclusion of a supplemental examination that there is a substantial new question of patentability?
An ex parte reexamination is ordered, which will consider any and all evidence pertaining to patentability, including but not limited to sale bars or public use.
What is free?
- PTO error
- Statutory Period
How do you fix PTO error?
File a Certificate of Correction
What is last day that a third party preissuance submission can be filed?
1. Earlier of the date of notice allowance
2. Later of: Six month from publication or date of first rejection.
**MUST BE BEFORE
What are the basis for filing a reissue?
1. The claims are too narrow or too broad
2. The disclosure contains inaccuracies
3. The applicant failed to or incorrectly claimed foreign priority
4. The application failed to make reference to or incorrectly made reference to prior co-pending applications.
What is on the table in a re-issue?
How many times can you amend with the International Bureau?
How long do you get to pay the issue fee?
Can examiner's Answer in appeal contain new ground of rejection?
Yes they can.
What cannot be expunged?
4. Preliminary amendment specifically incorporated into an executed oath or declaration.
**Part of your original disclosure.
How long do you have to file a supplemental examination?
Six years after the 20 year term.
What is a supplemental examination?
To have the Office to look at prior art that you failed to disclose.
They examine to see if they need to re-examine the application.
How are you operating after Final Rejection?
Operating at Examiner's Discretion
1. A showing of good and sufficient cause why the amendment was not earlier presented
2. Placing the application in better form for Appeal by reducing the issues on Appeal
3. Placing the application in condition for allowance by adopting an Examiner suggestions.
What is the appropriate response to a best mode rejection according to 112(a)?
Argue that the best mode requirement is evaluated according to the inventor's knowledge at the time of filing and not according to the examiner's knowledge at the time of examination.