MPEP 1300 (allowance/issue), 1400 (correction), 1900 (protest), 2200 (reexam), 2300 (deriv), 2500 (maintenance) , 2600 (IPR), 2700 (term), 2800 (supp) Flashcards
MPEP 1300 (allowance/issue), 1400 (correction), 1900 (protest), 2200 (reexam), 2300 (derivations), 2500 (maintenance fees) , 2600 (IPR), 2700 (term), 2800 (supplemental examination) (113 cards)
1
Q
What are relevant deadlines for a reissue application?
A
To broaden claims, you must file the reissue application within two years of issue.
2
Q
In what three ways is a reissue application different from a non-reissue continuation?
A
- It is filed after issuance.
- The original patent is surrendered. MPEP 1410.
- Must resubmit the drawings. MPEP 1413
3
Q
What is the rule against recapture for a reissue application?
A
For a reissue application, you cannot broaden a claim by removing a limitation that was originally added to overcome a 102/103 rejection, “to define the invention over the art of record.”
MPEP 1412
4
Q
How do you indicate claim amendments in a reissue application?
A
- underline additions
- single-bracket deletions
- 2nd round of revisions retain first round, so all revisions are seen with respect to claims in granted patent.
- parenthetical expressions: amended, twice amended, etc. Rule 173.
5
Q
Who must sign an oath/declaration for a reissue?
A
If no broadened claims are submitted: assignee
If claims are broadened: each inventor,* plus written consent of any assignee.
* Unless owner filed original application as the “applicant” using a Substitute Statement.
MPEP 1410, rule 1.175(c)
6
Q
What does a reissue oath/declaration require that is not required for a standard patent oath/declaration?
A
(A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
(1) by reason of a defective specification or drawing, or
(2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
(B) A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue.
MPEP 1414.01
Rule 1.175
7
Q
What are “intervening rights?”
A
Reissues: If X’s actions do not infringe on patented claim, but does infringe on a broadened reissue claim,, then X cannot be sued. X has intervening rights.
Same thing if a patent owner lets a patent lapse, X begins to sell a product that reads on lapsed claims, and then patent owner revives patent.
8
Q
How to you correct priority in a granted CON or DIV patent?
A
Certificate of Correction, provided proper claim was made in parent.
9
Q
What is a disclaimer, non-terminal?
A
Giving up selected claims of an issued patent because they are invalid without deceptive intent. Fee required. MPEP 1490.
10
Q
In an granted patent, how to you correct priority, e..g, add a missing priority claim?
A
If there is a parent application, then request a Certificate of Correction, provided proper claim was made in parent. (Reissue is OK too.)
See MPEP 216.01 I, - In re Van Esdonk and subsequent text until Roman numeral II.
11
Q
Protests: With the exception of a protest accompanied by a written consent of the applicant, when must a protest be submitted?
A
the earlier of (a) publication and (b) the date a notice of allowance,” MPEP 1901.04, Rule 1.291.
12
Q
How can you submit a protest against an application after the application has been published?
A
With consent of the applicant.
13
Q
What is the fee for filing a protest?
A
Zero, unless the same party files a 2nd or subsequent protest.
14
Q
What is the due date for a third-party preissuance submission?
Or: Where can you find this information?
A
- Determine later of (pub + 6 months) and (first rejection)
- Compare to allowance date.
- Pick earlier date.
File before this date, not on it.
—
Rule 1.290. U.S.C. 122(e).
15
Q
In a preissuance submission, what must you say, and what must you not say about the art being submitted?
A
say: describe relevance of each item.
not say: arguments against patentability
16
Q
When is there no fee for a preissuance submission?
A
When both (a) the number of references is at most 3, and (b) it's the first submission by party for this application. .
17
Q
When is the latest you can file preissuance submission?
A
earlier of
(A) allowance and
(B) earlier of (publication + 6 months) and 1st rejection on merits.
U.S.C. 122.
18
Q
Who cannot file a third-party (pre-issuance) submission, and why?
A
Anyone involved with prosecution of the application. Otherwise such a person could use third-party submission instead of filing a supplemental IDS, which can require also filing an RCE.
19
Q
You pay the wrong issue fee or publication fee, what happens?
A
It is true that a general authorization is not sufficient, but paying the incorrect issue fee does allow the USPTO to look to the deposit account to correct the deficiency.
See 37 CFR 1.311 (b)(1).
20
Q
If the issue fee has been paid, the only way to abandon the application is to file a petition to ________.
A
Withdraw the application from issue.
21
Q
Term for a design patent is:
A
15 years.
22
Q
Term for a plant patent is:
A
Same as a utility.
23
Q
What is the maximum term extension related to delays associated with secrecy orders and/or successful appeals?
A
Five (5) years.
24
Q
How long can you defer issuance of a patent?
A
for a period of up to 1 month only, in the absence of extraordinary circumstances or requirement of the regulations (e.g., 37 CFR 1.177) which would dictate a longer period. Rule 314, MPEP 1306.01.
25
You've paid the issue fee and then learn about a reference that possibly reads on one of the allowed claims. What's the proper action?
File a petition w/ fee requesting withdrawal of application from issue so the new reference can be considered in a continuation. (Test will not include QPIDS, it's not in MPEP yet)
Look up Withdrawal from issue, MPEP 1308, rule 1.313.
26
What is required for a protest to be entered into the application's file?
(1) It's filed on time -- before earlier of publication and; notice of allowance
(2) It's served upon the applicant.
27
A client wants the PTO to know about art related to a published application. What's the best way to proceed?
Third-party submission, as assignee of application need not give consent, unlike a protests after publication.
MPEP 1134
28
How do you change inventorship for a pending application?
How do you change inventorship on a granted patent? What information is required?
pending:
New ADS, fee, new oath/dec for any new inventor. Rule 1.48
granted:
* Certificate of Correction - if inventorship is not contested Petition to the Commissioner and pay a fee.
Statements from each inventor being added and from each currently named inventors.
* If inventorship is contested, file a reissue. MPEP 1402 II
MPEP 1481.02. 37 CFR 1.324, U.S.C. 256
29
How to you make prior art "of record" for an issued patent? Where is this in MPEP?
File a Citation of Prior Art. Explain relevance of cited art or written statement of the patent owner. MPEP 2202.
30
When can the party that initiated a post-grant proceeding participate in it?
Only in an inter partes reexamination/review. Not in ex parte reexamination (MPEP 2209)
31
If your patent is under reexamination, in what circumstances can you be granted an extension of time?
For cause only. Pay a fee. Rule 1.550(c) MPEP 2265.
32
How can you amend claims in a reexamination proceeding, if at all?
You can amend, but cannot broaden claims.
MPEP 2250, rule 1.121(j), no enlargement of claim scope.
(You can broaden claims in a reissue within 2 years of issue.)
33
Can a request for a reexamination be withdrawn?
No. "After the request for reexamination, including the entire fee for requesting reexamination, is received in the Office, no abandonment, withdrawal, or striking of the request is possible, regardless of who requests the same."
MPEP 2210.
34
Which of the following are allowable in a reexamination proceeding?
(1) continuation under rule 53(b) or 53(d)
(2) an RCE
(3) an appeal
Appeal only.
| MPEP 2272, After Final Practice.
35
Your client requested of a reexamination of a patent; which is now proceeding before the PTAB. In what cases can the client attend an oral hearing regarding the patent w/ the PTAB requested by the patent owner?
Client can attend, unless patent owner says no. MPEP 2209, 2276.
36
How much time does a patent owner have to respond to an order of reexamination?
Not less than two months.
| MPEP 2246, U.S.C. 304
37
The Director denies a request for an ex parte reexamination. What can the petitioner do, and when?
"The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination." MPEP 2248. Rule 1.515.
38
What can a reexamination be based on? What can a request for re-exam not be based on?
Must be based on prior patents and publications. Rule 510(a). MPEP 2214 - Content of request.
Cannot be based on alleged insufficient disclosure.
39
What types of documents are allowed in a Citation of Prior Art?
* patents
* printed publications
* written statements of the patent owner filed in a proceeding before a Federal Court or the USPTO by the patent owner in which the patent owner took a position on the scope of any claim of the patent.
MPEP 2205, U.S.C. 301
40
What applications can qualify for an interference proceeding?
One claim needs to be present in *each* application that has full support in a priority document (foreign or domestic) that has a filing date before March 16, 2013.(pre-AIA). MPEP 2301.04
41
When are maintenance fees due?
And what about a reissue patent?
3.5 years, 7.5 years, and 11.5 years after grant date
Payment accepted between 3-3.5, 7-7.5, and 11-11.5 years.
MPEP 2501, 2504.
Reissue: same schedule as original utility.
42
In what cases can you revive a patent that has lapsed because maintenance fee was not paid?
When failure to pay the fee was unintentional.
| MPEP 2590, Rule 1.378.
43
How are intervening rights related to maintenance fees?
During the lapsed period (the intervening period), there's no patent protection. The patent shall not "abridge or affect the right" of anyone "who made, purchases, or used anything protected by the patent while the patent had lapsed." MPEP 2591.
44
Who can request a supplemental examination? Who can request an ex parte reexamination?
ex parte examination: anyone, including the owner.
| supplemental examination: Only the patent owner.
45
What are allowable references in
(a) an ex parte examination, and
(b) in a supplemental examination?
ex parte examination: patents and printed publication - MPEP 2202.
supplemental examination: anything the owner believes the be relevant to the patent - MPEP 2801.
46
How many documents can a patent owner submit in a supplemental rexamination?
No more than 12. Rule 605, MPEP 2809.
47
At the conclusion of a supplemental examination, what happens if the PTO concludes that a substantial new question of patentability is raised?
It orders an ex parte re-exam. It's the same as standard ex parte re-exam, except that it's not limited to patents and printed publications. And patent owner cannot file a statement. MPEP 2818.01.
48
Consider a CIP application in which some claim group A have a priority date of the parent application. Claim group B have a priority date of the filing of the CIP. When does the patent term begin for each group?
Same for both: term ends 20 years from filing date of earliest *non-provisional* PCT or U.S. application for which a benefit is claimed.
"Foreign priority ... is not considered in determining the term of a patent." MPEP 2701 III
"Domestic priority under 35 U.S.C. 119(e) to one or more U.S. provisional applications is not considered in the calculation of the twenty-year term." MPEP 2701 IV
49
Of the pre-grant and post-grant challenges, which are not limited to printed publications and patents?
Protests only Rule 1.291. MPEP 1902
| Supplemental Examination
50
What is the fee for ex parte reexamination?
There is none!
51
Can you change your mind about a reexamination request that you filed?
No. After the request for reexamination, including the entire fee for requesting reexamination, is received in the Office, no abandonment, withdrawal, striking of the request is possible, regardless of who requests the same.” MPEP 2210
52
What is the role of an owner's statement in a reexamination proceding?
"Any statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination."
owner need not submit a statement, but can declare that no statement will be filed, which speeds up process.
MPEP 2249
53
What happens to a ex parte reexamination of patent that becomes involved in litigation?
"If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination."
MPEP 2286
54
A patent is under reexamination, and you learn of new prior art that might be relevant, e.g., via examination of a corresponding foreign application. What should you do?
File an IDS citing the reference. Same as in other examinations. Rule 1.555.
55
Name four reasons for filing a reissue application.
1. claims either too narrow or too broad.
2. inaccuracies in disclosure
3. missing or incorrect foreign priority claim
4. missing or incorrect priority/reference to prior co-pending applications.
MPEP 1402.
56
Can cancelled matter in a U.S. patent be prior art under AIA 102?
Yes, as a published document under 102(a)(1).
| Not as 102(a)(2). MPEP 2127.
57
For post-issuance examination,
(a) when is examination limited to only patents and publications?
(b) when is examiner free to look at any 102 art?
(a) Just ex parte reexamination
| (b) reissue and supplemental examination
58
How long can an patent be abandoned and still be revived?
No time limit. (Unless the term is up?) Rule 1.137. USC 41(c)(1)
59
What cannot be expunged from an application?
Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
Rule 1.59.
60
When can you submit a request for supplemental examination?
Any time during the enforceability of the patent, which extends six years after expiration.
MPEP 2808, Rule 1.601.
61
How do you request an interview during
(a) reexamination
(b) supplemental examination hearing?
(a) Just like normal prosecution. MPEP 2281
| (b) No interviews during supplemental examination.can't. MPEP 2814. ... No amendments, either! 2813.01.
62
When can you file a reissue to add new claims?
When can you file a reissue to broaden claims?
add new: any time, but no recapture.
MPE 1412
broaden: Within two years and if you haven't given up those claims, e.g., via a restriction or amendment.
MPEP 1412.03
63
In a derivation proceeding between a pre-AIA examined application and a post-AIA examined applicant, which rules apply for determining who the proper inventor is?
Pre-AIA.
64
Derivations: What is the time period to initiate a derivation proceeding?
The petitioner must initiates the derivation within one year from the first publication of the respondent's claim to the allegedly derived invention.
U.S.C. 135(a)(2). Rule 42.403.
65
Derivations: How can the the respondent, who allegedly derived the claimed invention from a petition, make his/her side heard?
Submit a rebuttal to the PTAB. U.S.C. 135(b).
66
Derivations: In a derivation, can both parties be owners of respective patents on the disputed claims?
No. Only a patent applicant can petition for a derivation.
"*Petitioner* means a patent applicant who petitions for a determination that another party named in an earlier-filed patent application allegedly derived a claimed invention from an inventor named in the petitioner’s application and filed the earlier application without authorization."
Rule 42.401.
67
Derivations: What must petitioner provide when filing a petition for a derivation proceeding?
Evidence, in an affidavit, that respondent derived claimed invention from petitioner w/o authorization. This implies the the petitioner conceived of the invention first.
U.S.C. 135(a)(2). Rule 42.405(c)
68
Derivations: Who has the burden of proof in the derivation proceeding?
The petitioner. U.S.C. 135(a)
69
Derivations:
What is required to get a filing date for the petition?
When is the deadline?
What: The petition.
A fee per rule 42.15
when: within a year of publication. 42.403.
70
Derivations: What should you do if your petition for a derivation is incomplete?
Remedy the deficiency within a month or before statutory deadline (one year from publication of respondent's claim), whichever is first.
CFR 42.407(b)
71
Derivations: How can parties to a derivation proceeding terminate the proceeding?
Settlement (U.S.C. 135(e)), or arbitration (U.S.C. 135(f))
72
Derivations: When parties of a derivation proceeding agree to settle, what is the PTAB's role?
"the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice." Rule 42. 74
73
Can a party of a derivation proceeding have the settlement treated as business confidential? And where is this stated?
Yes. U.S.C. 135. and Rule 42.74(c)
| This seems like a random question.
74
How* does one file a protest?
How* does one file a third-party preissuance submission?
* How in terms of getting information to the Patent Office
protest: By mail! Not electronically, not even via EFS. MPEP 1901.03
third-party preissuance submission: mail or via EFS-Web. MPEP 1134.01 IV.D
75
All pre- and post-grant challenges require serving the patent applicant/owner except for ________.
Third-party preissuance submission. 1134.01
Post-grant review *does* require serving patent owner: Rule 42.205. Service of Petition.
76
Of all the pre-grant and post-grant challenges to an application or patent, which are limited to § 102 and § 103 ground of rejection?
Ex Parte Reexam
IPR
(and obviously Citation of Prior Art)
77
Derivation Proceeding: Can either party appeal the outcome?
No. 35 U.S.C. 135 (a)(4)
78
1. For which post-grant proceedings is the threshold standard a substantial new question of patentability (SNQ) ?
2. If an SNQ is found, what happens?
1. Supplemental Examination and Ex Parte Reexam
2. For supplemental examination, an ex parte reexam is ordered, but not limited to patents and publications. 2818.01
For Ex Parte Reexam, the reexam proceeds if SNQ of patentability is found. MPEP 2246
79
What are the deadlines for post-grant challenges to a patent?
(1) Supplemental, citation of prior art, and ex parte reexam: term plus 6 years.
(2) Post-Grant Review up to 9 months after grant
(3) IPR: 9 months after grant or after PGR is done)
80
Which post-grant proceedings has a higher threshold standard for initiating the proceeding, PGR or IPR?
The thresholds are:
(a) a "reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim?
(b) "more likely than not" that at least one of the claims challenged in the petition is unpatentable
PGR has a higher threshold -- "more likely than not" that a claim is found unpatentable. For IPR, it's just a "reasonable likelihood."
PGR is tougher to get started, but the review is also more rigorous (anything but best mode) than IPR (just 102/103).
81
How to you file a third-party pre-issuance submission for a reissue application?
You can't. Issuance has occurred!
Go to MPEP 1134 and search for "reissue."
Protest is allowed - MPEP 1441.01.
82
Patent Term Extension: What does the "clock" start?
14/4/4/4
1. greater than 14 months from initial filing to allowance, first OA, restriction requirement, or examiner's request for information.
2. greater than 4 months for PTO to reply to an amendment or appeal, after a decision by PTAB or CAFC, or print a patent after issue fee is paid.
MPEP 2730. Rule 1.703.
83
What kind of patents do not require maintenance fees?
Plant and design patents. MPEP 2504., rule 1.362.
84
Which post-grant proceedings can be filed anonymously?
Which post-grant proceedings require identifying all real parties in interest?
anon: Citation of Prior Art, Ex Parte Reexamination (MPEP 1134.01)
real party in interest: PGR, IPR, and Covered Business Methods
85
Which post-grant proceeding lacks estoppel provisions?
Ex Parte Reexam. The rest do: Supplemental Examination, IPR, PGR, and CBM. For IPR, PGR, CBM, the real party in interest is estopped from challenging patent in USPTO, ITC, or district court on any ground the RPI raised or could have raised in the IPR/PGR.
86
For application to be allowed, what status of claim is not appropriate?
No claim can be withdrawn. They must be cancelled or rejoined.
MPEP 821. Treatment of Claims Held To Be Drawn to Nonelected Inventions
87
Which post-grant proceedings apply *only* to post-AIA patents?
Just Post-Grant Review (PGR)
88
Why would a patent owner seek supplemental examination instead of initiating an Ex Parte Rexam?
(a) supplemental reexam is broader: Anything vs. 102/103
(b) supplemental reexam has estoppel provisions, so it limits has patent can be held unenforceable in a court proceding. Ex parte reexam has no estoppel.
89
If a petitioner can provide expert testimony when petitioning for a PGR, IPR, CBM, what rights does the patent owner have?
The "patent owner is allowed to submit new testimonial evidence with its preliminary response." There's "no negative inference" from whether or not patent owner includes or does not include new testimonial evidence in the preliminary response.
37 CFR part 42. Amendments to Rules of Practice at PTAB.
90
What patents can be challenged via an post grant review and during which time can you request the reexam?
(1) The patent has an effective filing date on or after March 16, 2013.
(2) You file the request within nine months of issue.
91
When can you file a petition for inter partes review?
For patents examined under pre-AIA: grant date or after.
| For post-AIA patents: 9 months after grant date, or after termination of post-grant review.
92
Can the PTAB's decision not to initiate an PGR or IPR be appealed? If so, to what body?
Can the PTAB's final decision on an PGR or IPR be appealed? If so, to what body?
Decision not to initiate cannot be appealed. 35 USC 314, 324.
PTAB's final decision on PGR or IGR can be appealed to Federal Circuit Court. 35 USC 319, 329.
93
Failure to respond to an Official Action in reexamination will result in __________________.
"abandonment is not possible in are examination proceeding, a reexamination certificate will be issued and published at the conclusion of the proceeding.... The reexamination certificate will set forth the results of the proceeding and the content of the patent following the reexamination proceeding."
MPEP 2288. Issuance of Ex Parte Reexamination Certificate
94
What constitutes a broadened claim in reissue and reexamination?
If the claim expands the scope of potential infringing parties, then it is a broadening claim. "Where the original patent claims only the process, and the reissue application newly adds product claims, the scope of the claims has been broadened"
MPEP 1412.03.
95
For which type of patent/application challenges does the PTO want "a CONCISE description of the asserted relevance of each item identified in the document list."
Third-party pre-issuance submission.
| 1134.01.
96
For a granted national phase application having entered the national stage from a PCT filing, when is the starting date for the term?
(a) If PCT application claims priority to a U.S. non-provisional application, then the starting date is the filing date of the U.S. NP application.
(b) If no such priority, the international filing date.
U.S.C. 154(a)(2), 154(a)(3)
97
Which post-grant patent challenge procedure is not stayed where the same issues are before a U.S. District Court?
Ex Parte Reexam.
98
For a reissue application, if the parent claims priority to a foreign application, does the reissue also have to claim priority?
Yes.
MPEP 1417.
Same with CON, and DIV applications.
99
How do you rectify a non-compliant third-party submission?
Correct it by the due date. No extensions.
"The statutory time period for making a third-party
submission will not be tolled by a non-compliant
submission. Accordingly, making a third-party
submission at the earliest opportunity increases the
likelihood there will be sufficient time to make a
resubmission should the initial submission be found
non-compliant"
MPEP 1134.01
100
How does a patent owner's statements filed with a Federal Court or USPTO relate to a ex parte reexamination, IPR, and PGR?
The examiner will not use patent owner's statements to determine whether to order reexamination, IPR, or PGR. But if the proceeding is ordered, the statements can be used if they are part of the file.
```
USC 301(d)
"written statement submitted pursuant to subsection (a)(2) ... shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304 [reexam], 314 [IPR], or 324 [PGR]"
```
101
Which post-grant proceeding can address potential inequitable conduct or material fraud by the patent owner?
Supplemental examination.
| MPEP 2803.
102
What is the maximum number of items of information may be included in request for supplemental examination?
Twelve (12).
| MPEP 1809, rule 1.605
103
Can you amend claims during a supplemental reexamination proceding?
No. Applicant would need to wait for ex parte reexam ( 1st OA on merits) should one arise from the supplemental "exam."
MPEP 2813.01.
Can amend claims in Ex Parte Reexam, PGR, IPR (one chance),
Rules 42.121, 42.221.
104
During a supplemental examination, a substantial new question of patentability is raised. What happens next?
The UPSTO orders an ex parte reexam. But it's different because the grounds of filing are not limited to patents and printed publications.
2258 Scope of Ex Parte Reexamination, mentions U.S.C. 257, Supp. Exam.
105
For post-grant review what is:
(a) the threshold standard for initiating and
(b) grounds for filing the petition? (Basis of rejection)
* Or a CBM post-grant proceeding
(a) More likely than not.
(b) 101, 102, 103, 112 - enablement, 112 - written description,
Not 112, best mode.
Rule 42.204
106
Who cannot challenge an issued patent via inter partes review?
(a) Petitioner who has challenged the same claims before, e.g., in a PGR.
(b) Petitioner was served with an infringement complaint more than one year before filing the IPR.
(c) The petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
Rule 42.101
107
What is the rule against recapture, that is not related to narrowing claims to get around a 102/103 rejection?
You can't file a reissue applications to recapture claims that you could have filed in a DIV or CON to pursue claims of non-elected species.
1412.01
"Claims to separate inventions/embodiments/species that were not claimed in the original application prosecution (i.e., “overlooked aspects”) are not a part of a recapture analysis" MPEP 1412.02.
108
Can a patent owner dedicate or disclaim part of the patent term to the public? If so, how much?
All of it, or any *terminal* part of the term, e.g., the final 3 years.
Rule 1.321, statutory disclaimers
109
Late Payment of Issue Fee: What happens if you miss the three-month deadline for filing an issue fee?
Revival: You can revive the patent if missing the date was unintentional.
* submit the reply required to the outstanding Office action or notice,
* pay a fee
* terminal disclaimer (for designs)
* state that delay was unintentional
Rule 1.137(a).
110
What post-grant proceedings can be merged?
(a) two copending ex parte reexamination proceedings - MPEP 2283
(b) ex parte reexamination proceeding and a reissue - MPEP 2285
(c) ex parte reexamination proceeding and an inter partes reexamination (ended in 2012)
111
A non-enabling reference may qualify as prior art for the purpose of what kind of rejection?
“obviousness under 35 U.S.C. 103.”
| Symbol Techs Inv. v. Opticon. MPEP 2121.01.
112
What qualifies as prior art for an ex parte reexamination?
What is the exception to this?
Patents and printed publications. No sales, public use, insufficient disclosure.
Exception: When a supplemental reexamination matures into an ex parte reexam, the reexamination can consider 101 and 112 issues. MPEP 2201.
113
Can the loser in an derivation in the PTO later claim to be the first to invent in a Federal District Court?
Yes. U.S.C. 146.
