Random Notes Flashcards

Question

"interconnectedness" requirement of 112

Answer 1

a claim needs to interconnect the way it is in the specification because otherwise its not supported cannot rely on one of ordinary skill to assemble your invention in the claim

Answer 2

- show why the amendments were not earlier presented - remarks must address each and every objection and rejection of examiner - request reconsideration

Answer 3

Yes. as long as other operable species of the invention are also within the scope of the claim.

Answer 4

5 characters

Answer 5

affidavit used to traverse rejections showing objective evidence of Nonobviousness

Answer 6

affidavit swearing behind a reference Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.

Answer 7

you will lose the initial priority date for that new material filed

Answer 8

"-ing" words these will guide the comparing of claim language for these method claims.

Answer 9

it is explicitly not allowed in MPEP 2100. this is an example of exemplary language not allowed in claims.

Answer 10

MPEP 1900 once application publishes. its for a 3rd party while application is still pending to turn over patents and publications that they believe has a bearing on the patent application pending.

Answer 11

any person at any time while the patent remains enforceable, including the patent owner, may submit "prior art" in the form of printed patents, publications or patent-owner statements which that person believes has bearing on patentability no fee required can file anonymously. no guarantee the patent office even looks at it when it's submitted.

Answer 12

only based on patents and printed publications applied under 102 and 103 anyone can do this have to put together information and describe why this rises to a substantial new level of patentability if the office thinks they should reexamine - then a process is conducted and only the patent owner is involved response periods are limited to two months and extensions are only limited to "for cause" if office decides to not look into it and its submitted by 3rd party then they can challenge it. have to file petition Commissioner within 1 month of the mailing date of that decision reexamination cannot be withdrawn or cancelled after filing new claims can be added but not broader claims a reexamination can be revived if unintentional A final rejection of examiner can be appealed like a normal application (only by patent owner)

Answer 13

Yes. 3rd party can come unless the patent owner has been granted a request that the hearing is closed to the public

Answer 14

MPEP 700 you get another month to respond if you like

Answer 15

§ Applicant, representative, owner of application (employer, etc. if diff than applicant) § Owner normally only shows up after assignment of the rights of an application is filed with office Any of those three who have access can grant access to others

Answer 16

A foreign filing license is required before an application covering that invention can be filed in another country acquired in 3 ways - passage of six months following the filing of any US application including provisional application - by being granted specifically on the filing receipt - by the granting of a petition asking for one

Answer 17

Yes. Generally the rule is that not all pending applications are open to the public but those patent applications that publish are available only at that time.

Answer 18

No. not unless they are mentioned in something that is itself available.

Answer 19

maybe. not unless the continuation is public

Answer 20

For those patents/applications that are available to public the assignment records will be available.

Answer 21

Yes. by submitting a written request for the status of the parent which includes a copy of the patent you found. will not get access to the actual patent app contents but will get status.

Answer 22

Yes. just have to show it was an honest mistake.

Answer 23

A cover sheet or signed ADS identifying: - the application as a provisional application - the names or name of inventor(s) - the residence of each named inventor - the title of the invention - the name and registration number of the agent or attorney - the docket number of the filer if any - the correspondence address - also, a specification as described by 112 - drawings - filing fee

Answer 24

``` no claims no oath or declaration no examination or amendment no design applications no possible claim for priority from other applications no information disclosure statement ```

Answer 25

The second or third etc. application by the same applicant for the same invention claimed in a prior, non-provisional application and filed before the original parent becomes abandoned or is patented. A continuation is typically filed to start fresh with prosecution after a final rejection rather than taking an appeal or filing an RCE only need one common inventor with parent all continuations require the parent is copending An assertion of priority in the originally filed paperwork operates as an automatic incorporation by reference for inadvertently omitted subject from the priority application.

Answer 26

A continuation in part is also the second application by the same applicant for the same invention claimed in a prior, non-provisional application and filed before the original parent becomes abandoned or is patented. In addition, a continuation in part repeats some substantial portion of the earlier application and adds matter not disclosed in the earlier application

Answer 27

A divisional is a leader application for a distinct and independent invention carved out of a pending application, and claiming only subject matter disclosed in the earlier, parent application. A divisional must be copending with its parent.

Answer 28

A Request for Continued Examination is a procedure where a utility or plant application can be further examined upon request, with the fee, and the submission of something for the examiner to consider. It is not considered a new application filing but is rather an ongoing version of the original. RCE must be accompanied by a submission (i.e., an amendment that meets the reply requirement of 37 CFR § 1.111)

Answer 29

1. File a claim for the priority i.e. ask that he or she be given the benefit of the foreign filing date in an ADS; and 2. File a certified copy of the original for an application (translation is necessary only if rejection given)

Answer 30

1) be in English 2) Identify all patients assigned by number and applications by number 3) accompanied by correct fee (free if filed electronically) 4) be accompanied by cover sheet

Answer 31

102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or as such: 1) the subject matter disclosed must have been developed in the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement I was in effect on or before the effective filing date of the claims invention; and 2) the claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement; 3) the application for Patton for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement

Answer 32

MPEP 500 small guys get half off and really small guys get 75% off

Answer 33

specification including a description at least one claim any required drawings -- must be enabled properly under 112(a) so if drawings are required to enable they are needed

Answer 34

No. However if you have already filed a provisional and then you are filing a non provisional apparently that is allowed. (form 500 prime questions)

Answer 35

Yes. however it has to be for some form of an error. cannot just say they changed their mind.

Answer 36

1. A multiple dependent claim cannot depend form another multiple dependent claim. If it does, it is improper and is counted in calculating fees as a single dependent claim 2. A multiple dependent claim can depend from more than one previous claim in the alternative only ("and" is forbidden; "or" is permitted); and 3. In calculating the number of claims for calculating fees, each proper multiple dependent claim counts as the number of claims from which it depends, and improper multiple dependent claims are counted as a single claim.

Answer 37

1. If filed within three months of the application filing date OR before the first action, only the IDS need be filed 2. If filed after the first action, but before allowance or final action, either a statement OR a fee must be provided 3. If filed after final action, close of prosecution or allowance, but before payment of issue fee, a statement AND a fee are required - the timing for filing an IDS cannot be extended MPEP § 609, under the heading "Minimum Requirements for an Information Disclosure Statement," under the subheading "B(3). Information Disclosure Statement Filed After B(2), but Prior to Payment of Issue Fee 37 CFR 1.97 (d)", and subheading "B(5) Statement Under 37 CFR 1.97(e)." (A) The statement specified in 37 CFR § 1.97(e) requires that the practitioner certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the information disclosure statement.

Answer 38

1. A list of the individual items submitted with parents identified by patentee, number and issue date; and publications identified by author, title, relevant page(s), date in place of publication 2. A copy of every patent, publication or other information being submitted (including cited U.S. pending applications not in the IFW system) 3. At least a concise explanation of relevance of anything not in English. Translation into English are required if they are readily available

Answer 39

Rule 1.56 "each person associated with the filing and prosecution of a patent application has a duty of candor in good faith and dealing with the office, which includes a duty to disclose to the office all information known to that individual to be material to patentability..." IDS are preferred way to disclose possible material information to the Patent Office

Answer 40

- The DUTY extends not only to the attorney and the inventor, but EVERYONE else associate with prosecution. This may include the owner of the patent, or an expert retained to do research in conjunction with responding to an official action - The information required to b disclosed includes information whether or not obtained in conjunction with the particular application in issue. Thus, if an attorney happen to remember some piece of prayer art he had seen in doing work in the past for another client, and that piece of prior art is material to the application in issue, failure to disclose would be a breach - a breach of the duty to disclose will result in a refusal to grant the patent if the failure is discovered before the patent issues, or invalidity of the patent if it is discovered after issue - The refusal to issue or invalidity result even if the patent owner and/or inventor are entirely blameless, and the breach was by others - The time for filing IDS cannot be extended - Information required to be disclosed extends to al 102 acts not just patents and printed publications - When material prior art is discovered after the application has been allowed and the issue fee paid, the proper course is to seek withdrawal of the application from issue so the art may be considered in a continuation application - Non-complying IDSs will be placed in the file, but not considered

Answer 41

1. I am an inventor 2. This was filed with my permission 3. I have reviewed and understood it 4. I acknowledge my duty of disclosure to the patent office

Answer 42

Pending application = Rule 1.48; by filing a continuation application with a new declaration signed by the new inventors.Have to pay filing fee More efficient Rule 1.48 = file a new oath signed by the new inventor, and file an ADS adding the new inventor along with a fee correcting inventorship.*** after a patent has issued you can file a petition to the Commissioner under Rule 1.324 saying "this was a mistake" and thats all. there will be a certificate of correction put in.

Answer 43

Live with whatever you have on file and accept the original filing date for the application with the missing information or send what is requested into the office and accept a later filing date.

Answer 44

A U.S. patent or a U.S. published application. If you get this wrong you can fix my sending in an amendment and a declaration that the material added corresponds to what was added originally by reference. no new matter added.

Answer 45

one of three things must happen: 1. A response must be filed which the examiner agrees places the application in condition for allowance; or 2. A Notice of Appeal must be filed; or 3. The examiner, either on his or her own initiative or in response to a request by the applicant, converts the action to a non-final one. note: filing a continuation under rule 1.53(b) or (d) or RCE is not a 'response' since these are separate applications or initiate new proceedings and the parent is abandoned, or in the case of RCE, resuscitated for another round of prosecution.

Answer 46

1) cancel claims 2) comply with requirements as to form or adopt suggestions of the Examiner 3) present claims in better form for consideration on appeal note: other amendments will not be entered without a showing of why they were not presented earlier and why they are necessary. there is no right for an interview after final rejection but they are usually granted.

Answer 47

Applicant has 6 months to sort out an application after final rejection. The PTO will pick up the cost of any extension they cause but to be eligible for treatment it is up to applicant to active this cost-saving by responding *within 2 months of the mailing date of the Final Rejection.* When this is done, the "free" response period lapses at the end of 3 months from the mailing date of the Final Action, or on the mailing date of the Advisory Action - whichever is later. further extensions are calculated from the end of the "free" period in no event can the applicant extend beyond 6 months

Answer 48

Yes. you do not have a right to an interview after a Final Action

Answer 49

Applicant can be considered earlier (cut the line) for a set of special reasons. special status may be granted after filing a petition. reasons include NO FEES: ``` Illness of inventor Environment - will help improve environment Enegery - improves energy usage/supply Age - inventor over 65 Contributes to countering terrorism ``` FEES: Infringement - patent needed to stop infringement Safer DNA For asking - upon request; have to accept restriction requirements given by office, results of patentability search presented, copy of references w/ discussion submitted. HIV/AIDS and cancer superconductivity materials biotech by small entity special category added after Aug. 25, 2006: submit a bunch of shit w/ thorough research. no more than 3 independent claims and no more than 20 total claims.

Answer 50

NO. no matter how good the reason is.

Answer 51

Basic rules: 1. Automatic extensions (no reason or cause required) are available for 1 month, 2 months, 3 months, 4 months, and 5 months. A total automatic extension greater than 5 months is not possible. 2. The 6 month statutory time-limit requirement for all responses to Official Actions cannot be extended. A response to every Official Action must be filed within 6 months to avoid abandonment ~~note: the two month deadline for filing an appeal brief is not statutory, and thus the full 5 month extension can be obtained. Likewise, response to a notice to file missing parts can be extended up to 5 months as well. 3. Extensions of time are frequently necessary to make an application co-pending with its continuation or division so as to maintain the effective filing date. 4a. Automatic extensions CANNOT be obtained in six circumstances: - Where the office action so states; - A Reply Brief (responsive to Examiner answer in appeal and to PTAB and interferences) - A request for an oral hearing in an Appeal - Responding to a decision of the Board - Anything in an interference; and - Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must be filed before that due date. 4b. Due dates for the following CANNOT be extended even EVEN FOR CAUSE: - IDSs - Any due date set by statute (such as the six-month absolute deadline for replying to Official Action) - The issue fee can now, by statute, be paid late upon a proper showing, but it cannot be extended - Filing Formal Drawings at time Issue Fee is paid Extra, Detailed rules: 1. All dates are calculated from the mailing date from the patent office which is stamped on the action. The date of receipt by the attorney or applicant is irrelevant to the due date. 2. By statute all responses to official actions must be filed within six months from the Patent Office mailing date, but the six month period can be shortened by the commissioner and usually is so shortened. All due dates from the Patent Office are either statutory or non-statutory. Statutory due dates can be extended only if they are shortened form the statutory six-month period and non-statutory dates can be extended unless specifically forbidden to be. 3. the patent office has the power to set shorter periods for response (Shortened Statutory Period), and normally sets a shortened period. 4. Whenever the patent office sets a shorter period to respond, an automatic extension of time up to five months can be obtained simply by asking and paying the fee, provided of course that, if the response is to in official action, the response must be filed within the statutory six month period. 5. Automatic extensions of time can be obtained retro actively 6. if the due dates fall on weekends or holidays, the due date is the next business day. 7. due dates for a second and succeeding month are still calculated from the original mailing date. ... 13. An extension of time cannot be obtained to pay the issue fee. However, the issue fee can be paid late upon a proper showing. 20. One month means not less than 30 days. 2 months means not less than 60 days.

Answer 52

- Petition to Revive an unintentionally abandoned application must be accompanied by a response to any action which was outstanding at the time of abandonment or continuation - intentionally abandoned application cannot be revived

Answer 53

required whenever the term of the patent is calculated from the issue date and not the filing date. applies to all design patents. might be used if there is a double patenting issue that needs resolved.

Answer 54

Even if the examiner does record in writing the substance of each telephone or personal communication, the applicant still has the obligation to do so as well.

Answer 55

Yes To be entered, remarks accompanying the proposed amendment must state the four whys 1. Why the amendment is needed; and 2. Why no new search or consideration is required; and 3. Why an amended or new claims are patentable; and 4. Why the amendments were not earlier presented. after issue fee is paid, no amendments are allowed.

Answer 56

Double patenting is claiming the same invention or an obvious variant in two separate applications. Where the inventions are the same, the rejection can be overcome only by canceling the claim or claims from one application. Where they are an obvious variant and the two applications are commonly owned, the rejection can be overcome by filing a terminal disclaimer so that the two patents expire at the same time and expire if they ever cease being commonly owned

Answer 57

Appeal Brief must be filed within two months of the date of the Notice of Appeal is received by the PTO The time period is automatically extendable up to an additional 5 months

Answer 58

applicant has two months filling the Examiner's answer to file a Reply Brief, which can now be filed as a matter of right. any extension of time must be for cause under 1.136(b) If appellant fails to respond to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection.

Answer 59

Request a rehearing within 2 months, or Appeal to CAFC or District Court

Answer 60

This IS NOT FINAL SO NOT APPEALABLE. A rejection cannot be appealed unless it is a Final Rejection or has been made twice. Submit response and have examiner consider OR request rehearing and address new ground of rejection

Answer 61

Nah fam. No. This is a 3 month period after the Notice of Allowance has been sent. Potential for the issue fee to be accepted late in the event of an erroneous failure to pay. Muse have a petition to accept the fee filed under 1.137 with the 1.137 fee.

Answer 62

For Applications filed on or after the date of June 8, 1995 and before May 29, 2000, the 20 year term may be extended up to five years for delays in the issuance of the patent due to interferences, secrecy orders and or successful appeals to the board of pet appeals and interferences, or the federal courts ~~Applications are not available for PTA if file dafter May 29, 2000

Answer 63

3 categories when PTA can happen: 1. Certain Administrative delays: -greater than 14 months from initial filing to: Notice of Allowance, first office action, written description requirement, or an examiner request for information -Greater than 4 months to reply to an amendment or appeal (time runs from the time the appeal brief and fee are received) or -Greater than 4 months to act after decision by Board or CAFC or -Greater than 4 months to print patent once issue fee has been paid and all outstanding issues satisfied (14/4/4/4)!! 2.Overall pendency from initial filing to issue of more than 3 years ~Note: these periods are not counted against the 3 years: time consumed by continued examination under RCE, time consumed by secrecy order, interference, or appellate review, time consumed by applicant requested delays 3. Delays to to Interference or Secrecy Orders and Successful Appeals PTA can be reduced for applicant delays like: not having application ready for examination within 8 months of filing, suspension of prosecution, national stage procedures, etc. ~~Applications are not available for PTA if file dafter May 29, 2000

Answer 64

15 years from issue

Answer 65

Reissue - A patent which is deemed (incorrectly but in good faith) by the owner to be wholly or partially inoperative or invalid may be reissued The most common bases for filing a reissue application are: (1) the claims are too narrow or too broad; (2) the disclosure contains inaccuracies; (3) applicant failed to or incorrectly claimed foreign priority; and (4) applicant failed to make reference to or incorrectly made reference to prior co-pending applications. - if it is broadening claims it must be filed within two years of the issue date of the patent - an oath or celebration is needed by assignee where no claims are broadened. If they are broadened you need one from all inventors with written assent of assignee Cerificate of Correction - Mistakes of a clerical or typographical nature, whether by the Patent Office or the applicant, can be corrected. -If the mistake is by the patent office then this is free Disclaimer - renunciation of one or more patent claims in a patent. can have a terminal disclaimer as well.

Answer 66

all plants are patentable except those which are 1) bacteria OR 2) tuber propagated. (potatoes and Jerusalem artichokes) The plant must have either been invented or discovered in a cultivated state AND asexually reproduced before filing

Answer 67

1 Filing of the international application by the applicant, and its processing by the "Receiving Office" 2. Establishment of the international search report by one of the "International Search Authorities" (ISA) 3. A preliminary non-binding written opinion sent to the Applicant by the ISA as to novelty, inventive step, and industrial applicability 4. Publication of the international application along with the international search report 5. (optional) establishment of an international preliminary examination that results in a second written report entitled "International Preliminary Report on Patentability" notes on dates: - international search report is established about 16 months from the priority date. - Publication of the international application typically occurs about 18 months from priority date. - non-binding written opinion by the ISA is made publicly available at the end of 30 months from priority date

Answer 68

1. A request 2. Designation of at least one contracting (PCT participating) state 3. Name of applicant 4. Specification, claim and drawing (if necessary to understand) 5. an Abstract 6. fee abstract and fee can be submitted late (if you filed with a non publication request - you wouldnt be able to file PCT but you can rescind these requests) A nonpublication request must be made, if at all, at the time of filing an application. By filing a nonpublication request, the applicant is waiving the right to seek foreign patent protection in another country or under a multilateral international agreement that requires publication of applications at 18 months. The application may, however, rescind the previously filed nonpublication request at any time. In order to rescind the nonpublication request, the applicant must both rescind the nonpublication request and provide notice of foreign filing. Specifically, the applicant must, not later than 45 days after the date of filing of a foreign application or international application, notify the USPTO of such filing.

Answer 69

International application are subject to the "unity of invention" standard" of the Treaty -the international application should set forth claims that relate to only one intention or to a group inventions so linked as to form a single general inventive concept. Unity of invention is present only when there is a "technical relationship" among the claimed inventions involving one or more of the same corresponding "special technical features"

Answer 70

To enter the national stage in the US, the following must be furnished to US patent office by end of 30th month after either the filing date or the priority date - whichever is earlier 1. a copy of the international application 2. the national filing fee [CANNOT BE SUBMITTED LATE AND CANNOT BE EXTENDED] -oath and translation must also be provided to designated office but can be filed later with usual surcharge

Answer 71

20 years from the filing date of the international application. not the date it enters the national phase.

Answer 72

1. At least one "applicant" who is a US national or legal resident 2. English description 3. Request for treatment as an international application 4. designation of at least one country (automatic) which can be US 5. Abstract (may be submitted later)

Answer 73

1. Fee and Abstract may be submitted late 2. "Applicant" means inventor OR owner 3. Priority claim cannot be added late 4. An all-encompassing designation is automatic 5. The standard for restriction is based upon unity of invention and the U.S. restriction rules do not apply

Answer 74

to enter national phase: 1. copy of international application; and 2. the national filing fee These elements cannot be submitted late. These elements are due before expiration of the 30 month period The oath and translation must also be provided to the designated Office but can be filed later with the usual surcharge

Answer 75

for calculating 102(e) date of a US patent that stems from PCT. first look if ti was filed before or after Nov. 29, 2000. If yes, just look at FOT - if after then its full FOT/DUSE FOT -Fee Oath Translation D.US.E -Designate US English if DUSE satisfied, then the PCT itself gets a 102(e) date as of its international filing date.

Answer 76

102(e) date is now the "effective filing" date (foreign filing date). plain and simple. this is different than the "international filing date" in pre-AIA

Answer 77

1. Filing of International Application - no later than 12 months 2. Int'l search report and written opinion by ISA; amendments by applicants; publication - About 16 months - Article 19 amendments (claims only) - the later of 22 months or 3 months from the mailing date of the Report and Written Opinion - about 18 months 4. demand for preliminary examination - no later than 22 months 5. Entry into national Phase - 30 months

Answer 78

Interference is between 2 parties claiming exactly the same thing at the patent office. Trying to see who gets to claim it Interference is not possible between applications with filling dates on or after 3/16/13 unless there is at least one claim present in each application that has full support in a priority document that has a pre-3/16/13 filing date The examiner normally suggests that you amend a claim with very specific language so that you each have the same language to start an interference. if you refuse to amend then that exactly claim becomes prior art against you. key -> someone has to be pending at the patent office. If 2 patents are newly issued and one believes there is the same claim then they have to file a reissue.

Answer 79

- where an invention includes biological material and words alone cannot describe how to make and use the invention - a deposit that lasts 30 years is required - symbols and format for nucleotide and or amino acids sequence characters shall conform to WIPO standard ST.25

Answer 80

- Fees are due based on when term begins - US requires maintenance fees be paid at 3.5, 7.5, and 11.5 years after issue - payments can be made up to 6 months early. Can also be paid up to 6 months late w/ a late fee. - you can pay these things late if it was an honest mistake. however there are intervening rights (just as in reissue and reexamination). if someone relied on you not paying the fee during that window then you cant turn around and enforce the patent against them.

Answer 81

- USPTO will look at substantial question of patentability on any issue the patent owner presents - this is different than reexamination which is limited to patents or printed publications. - If a new significant new question of patentability arises then a reexamination starts and you go through that process - you would do this to get a ruling on something to take the issue off the table - prevent future litigation etc.

Answer 82

- USPTO will accept your international industrial design application - Need a foreign filing license. - Sent to office in Geneva. If they think the app sent to them by the indirect country of filing then they give it a international industrial design registration date which is coincident w/ the day it was sent to indirect country of filing - If Geneva says there are corrections, your date changes to the day you make those corrections - after it passes Geneva, the app is sent back to US. You will either get a Notice of Allowance or first office action - Instructor note: you will just file a design app in US and then you file a Hague agreement application for the rest of the world not including the US. this avoids all these delays - dont have to be a US citizen to file. just have to have "reasonable business presence" in US

Answer 83

1. 53(b) is for continuations and continuation in part generally 1. 53(d) is only for design patents. The prior application is abandoned once this is filed.

Answer 84

- used to overcome an intervening disclosure - can be used to overcome a disclosure in the form of another patent application WHERE THE CLAIMS ARE DIFFERENT - if the patent application claims of an intervening disclosure are the same or substantially similar then you cannot use a 1.130 "Affidavit or declaration of attribution or prior public disclosure"

Answer 85

Based on the filing date of the application.

Answer 86

- Printed publication - Issued patents - Public use - Offers for sale

Answer 87

- only a specification describing the invention. (As of PLTIA which became effective on Dec 18, 2013) - however, MPEP encourages you (in the case of a foreign application on hand you want to file in US) to file the entire application as its best practice.

Answer 88

example from question: -a WIPO publication of a Patent Cooperation Treaty (PCT) international application that designates the U.S.

Answer 89

-magic date is March 16, 2013 - continuations filed after the magic date that have parents filed before magic date get pre-AIA - CIPs that contains claims that are getting priority after the magic date get AIA treatment (the entire application gets viewed under AIA)

Answer 90

- it is the foreign filing date under AIA when foreign filing date is used to establish priority in a: 1. US application that publishes; 2. US patent that issues; 3. Or a PCT application that publishes -otherwise it is only prior art as of the date of the foreign publication of application/patent

Answer 91

- you have 1 year to claim priority - you can have up to 2 additionally months to claim priority if you make a mistake and can show you made a mistake (under PLTIA which became effective Dec 18, 2013)

Answer 92

yes. can be useful if you accidentally file a non provisional without claims or something.

Answer 93

PLTIA passed Dec 18, 2013 after PLTIA, you cannot petition to revive an application for unavoidable abandonment after PLTIA you can only petition to revive based on unintentional abandonment

Answer 94

An inventor who wishes to initiate a derivation proceeding has one year from publication/issuance of the respondents patent application -the fee must be paid (cannot be paid later)

Answer 95

a "substantial evidence" showing in the petition - burden never shifts in the proceeding and it always remains on the petitioner - it is absolutely necessary to file an affidavit relating to communication and lack of authorization

Answer 96

A derivation proceeding is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner's application. The procedure for derivation took effect on March 16, 2013. -note: these are allowed to be settled by the parties

Answer 97

YES this is the one time under AIA. you will have to demonstrate earlier conception in a derivation proceeding. This is the only way to do it.

Answer 98

F. We do not know who contributed what in the PCT application.

Answer 99

37 CFR part 11

Answer 100

Patent term adjustment is reduced if an application is not in condition for examination within 8 months from either the date on which the application was filed or the date of commencement of the national stage in a PCT application

Answer 101

free card fam

Answer 102

free card fam

Answer 103

by identifying a lead compound.

Answer 104

A small number of options; and An easily traversed number of options NOT a closed set and defined number of options

Answer 105

1. Whether there is a clear-cut indication of the scope of the subject matter covered by the claim. 2. Whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained. 3. Whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.

Answer 106

2. The phrase "means for" or "step for" or the non-structural term recited in the claim is modified by functional language. 3. The phrase "means for" or "step for" or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.

Answer 107

1. The specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure. 2. General and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure. 3. The prior art provides evidence that the term has an art-recognized structure to perform the claimed function.

Answer 108

No. merely reciting a general purpose computer is not enough. In fact, for a computer-implemented means-plus-function claim limitation invoking §112(f), the corresponding structure is required to be more than simply a general purpose computer or microprocessor. To claim a means for performing a particular computer-implemented function and then to disclose only a general-purpose computer as the structure designed to perform that function amounts to pure functional claiming.

Answer 109

An applicant seeking entry into the US National phase via PCT has to pay the national fee no later than 30 months from the earliest priority date being asserted

Answer 110

Do not need a filing fee at that time. (The application needs to be in English, At least one applicant must be a US national or legal resided, Application must designate at least one PCT contracting state, A request for treatment as an international application must be included.)

Answer 111

Do not need to designate any additional countries. All member countries of WIPO are automatically designated in any PCT applications filed after 1/1/04.

Answer 112

The failure to claim priority in the continuation application can be corrected by obtaining a Certificate of Correction and also filing a Grantable Petition and fee for Late Assertion of Priority.

Answer 113

Yes (apparently)

Answer 114

35 U.S.C. 115(a) says that when one files a patent application under either 35 U.S.C. 111(a) (i.e., a nonprovisional patent application) or enters the national stage under 35 U.S.C. 371, each inventor must be named and each inventor or joint inventor must execute an oath or declaration unless “otherwise provided.” It is 35 U.S.C. 115(b) that relates to the exception for each inventor to submit an oath or declaration. In lieu of executing an oath or declaration under subsection 115(a), the applicant for patent may provide a “substitute statement.” The substitute statement must identify the individual to whom the statement pertains. Furthermore, the substitute statement must either state that the inventor identified is under an obligation to assign and refused to execute the oath or declaration (see 115(d)(2)(B)) or that the inventor is deceased, legally incapacitated or cannot be found after reasonable effort (see 115(d)(2)(A)).

Answer 115

37 CFR 1.46(b)(2) sets forth the requirements for an applicant who is claiming they have sufficient proprietary interest to file an application. The fee pursuant to § 1.17(g) is required, as well as a showing of such sufficient proprietary interest. Also required is a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

Answer 116

Pursuant to 37 CFR 1.46(b), if an application is made by a person other than the inventor, the application must contain an application data sheet specifying the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

Answer 117

true statement because, as Rule 1.63(b) explains, the oath or declaration must identify the inventor by legal name and provide a mailing address, unless that information is supplied in an Application Data Sheet (ADS) submitted in accordance with 1.76. Thus, it is not necessary for an oath or declaration to contain this information in all instances.

Answer 118

37 CFR 1.76(c) explains that information submitted in an ADS, oath or declaration can be corrected until the issue fee is paid. However, there are some exceptions. Inventorship changes must comply with the requirements of §1.48, foreign priority and domestic benefit information changes must comply with §§1.55 and 1.78, and correspondence address changes are governed by §1.33(a).

Answer 119

In order to be eligible for entry into the Patent Prosecution Highway (PPH), the applicant must have already received an indication of allowable subject matter in a related patent application from a partnering PPH office. The indication of allowable subject matter can come before the patent actually issues in the Office of Earlier Examination (OEE). In order to partake in the PPH, it is a requirement that the application with allowable subject matter from a partnering PPH office must share the common earliest date of priority. == In order to qualify for the PPH, it is required that the application from the Office of Earlier Examination (OEE) have the same priority date as the application filed in the U.S. for which entry into the PPH is sought. The rule for entry into the PPH says that examination cannot have started in the U.S. application prior to entry into the PPH. This requirement, however, relates to substantive examination. The USPTO has specifically explained: “if you have only received a notice to file missing parts, this would not be considered as substantive examination.” Thus, in this question, you have received but have not yet responded to the Notice of Missing Parts, which means that no substantive examination could possibly have started. Therefore, you could still enter the PPH. a claim that is narrower than one allowed in the Office of Earlier Examination (OEE) can only be granted if it is a dependent claim, which is dependent upon a claim that is of the same or similar scope as a claim indicated as allowable in the OEE application. It is, however, possible to amend the application to make the claim “sufficiently correspond” to the claim deemed allowable in the OEE. In those instances where the request for participation in the PPH pilot program does not meet all the requirements, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to perfect the request in a renewed request for participation. Action on the application by the USPTO will NOT be suspended (37 CFR 1.103) awaiting a renewed request for participation. If the application is picked up for examination after the applicant has been notified of the defects in the request, any renewed request will be dismissed. If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified, and the U.S. application will be advanced out of turn for examination. If the request is not perfected, the applicant will be notified and the application will await action in its regular turn.

Answer 120

Yes relates to Research Corp. Tech. v. Microsoft Corp. (U.S. Patent No. 5,111,310), where the invention presented functional and palpable applications in the field of computer technology with specific applications or improvements to technologies in the marketplace. So, although the claimed method uses algorithms and formulas, the claim was found eligible.

Answer 121

The Federal Circuit explained: “The ’929 patent does not simply claim hepatocytes’ ability to survive multiple freeze-thaw cycles. The ’929 patent instead claims a method of producing a desired preparation of multi-cryopreserved hepatocytes. This new and improved technique, for producing a tangible and useful result, falls squarely outside those categories of inventions that are ‘directed to’ patent-ineligible concepts.” claims would still be patent eligible under the second step, which asks whether, considered both individually and as an ordered combination, the additional elements transform the nature of the claim into a patent-eligible application. In order to be patent eligible under step two, more than well-understood, routine, conventional activity already engaged in by the scientific community is required in order to transform the claim into something significantly more than a patent upon the concept itself. The Federal Circuit explained that the claims covered an invention that provided a significant improvement for a variety of reasons, and also because the discovery was used to achieve a new and useful preservation process.

Answer 122

failing to explain a matter to the extent reasonably necessary to permit the client to make decisions regarding the representation.

Answer 123

Pretty much the law firm cannot represent company B. Not even with consent and w/ screening the attorneys that had info: To arrive at the correct answer, one must very carefully parse 37 C.F.R. 11.109 and 37 C.F.R. 11.110. Rule 11.110 relates to imputed conflicts and allows a firm to continue representing a client even if one or more practitioners would themselves be disqualified for ethical reasons, provided an ethical screen is put in place. If you read Rule 11.110 closely, you will notice that the aspect relevant here pertaining to former clients is (a)(2), which allows an ethical screen to be put in place where the disqualification of the practitioner is required by Rule 11.109(a) or (b). If you then turn to Rule 11.109, you see there are subparts (a), (b) and (c). Subparts (a) and (b) relate to disqualification where representation may be materially adverse to the former client, Rule 11.109(c) requires disqualification where the practitioner possesses some information about the matter. In this situation, the attorneys who provided the enforcement strategy to Identity Secure were given confidential information relating to the validity of the patents in the portfolio. Therefore, the conflict arises under 11.109(c) and cannot be solved with an ethical screen or client waiver.

Answer 124

§ 11.110(a), while practitioners are associated in a firm, none of them shall knowingly represent a client when any one of them practicing alone would be prohibited from doing so by either § 11.107 or § 11.109. The pertinent rule here is § 11.107, which relates to conflicts with current clients. A current conflict exists in this situation because both PhotoDetection and BigFruit are seeking patent claims on the same technology. However, pursuant to § 11.107(b), a practitioner may still engage in representation if: (1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client; (2) The representation is not prohibited by law; (3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and (4) Each affected client gives informed consent, confirmed in writing. In this situation, given that two different patent attorneys are involved, it should be reasonable to believe that competent and diligent representation can be provided to both. The representation is not prohibited by law, and it does not involve the assertion of a claim by one against the other. Therefore, if both give informed consent in writing, this will not be a problem.

Answer 125

37 C.F.R. 11.116 relates to declining or terminating representation. Subsection (a) deals with declining representation and Subsection (b) deals with situations where a practitioner may withdraw from representation. Practitioners shall not represent a client and must decline representation, or withdrawal if representation has commenced: (1) if representation would result in a violation of the USPTO Rules of Professional Conduct or other law; (2) the practitioner has become physically or mentally impaired to the point the practitioner is unable to represent the client’s interests; or (3) the practitioner has been discharged by the client. Under Subsection (b), which deals with permissive rather than mandatory withdrawals, a practitioner may withdraw from representing a client for a larger variety of reasons... including: - The client has used the practitioner’s services to perpetrate a crime or fraud. - A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement. - The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client.

Answer 126

equires that practitioners promptly inform the client of a decision or circumstance with respect to which the client’s informed consent is required, and reasonably consult with a client about means by which the client’s objectives are to be accomplished.

Answer 127

patent prosecution rules mandate that the required §1.63 oath or declaration state that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims. The practice of having a client sign a §1.63 oath or declaration prior to the preparation or completion of the application is plainly contrary to patent prosecution rules and to the Rules of Professional Conduct applicable to registered patent practitioners.

Answer 128

Horowitz undertook joint representation of two applicants in a patent application. Horowitz continued to represent both applicants after she became aware of an inventorship dispute without obtaining informed consent from each to continue the representation. Horowitz named one of the two applicants as the sole inventor on the nonprovisional application that claimed priority to the original application. Horowitz failed to inform the excluded applicant and continued to represent the first applicant in the matter, despite an actual or potential conflict of interest, and without obtaining informed consent from each. Horowitz followed the directions of the applicant who paid the legal fees. Horowitz also represented one of the applicants in a trademark application that was related to the patent application, without obtaining informed consent to the representation. These actions would be violations of 37 C.F.R. §§ 11.107(a)(l)-(2) and (b)(3)-(4) (representing a client when the representation of one client will be directly adverse to another client; representing a client when the representation of that client may be materially limited by the lawyer's responsibilities to another client; representing a client when the representation involves the assertion of a claim by one client against another client represented by the practitioner in the same proceeding without obtaining consent after full disclosure); and 11.104(a)(l)-(2) and (b) (failing to inform the client of any decision or circumstances with respect to which the client's informed consent is required; failing to consult with the client about the means by which client's objectives can be accomplished; failing to explain a matter to the extent reasonably necessary to permit the client to make an informed decision).

Answer 129

§ Most common - every patent issued is eligible for this § You bring evidence that there is a likelihood of an issue under 102 or 103 □ Threshold to show is low § Over a course of a year the patent office will determine if the claims live or die § Standard is "preponderance of evidence" § If it’s a pre-AIA granted patent it starts immediately § If its AIA you have to wait 9 months after issuance because have to wait for post grant review period to expire § Common questions □ What happens if you file IPR and district court proceeding at same time? ® The IPR goes forward; the district court proceeding is stayed § You can settle these and patent office has to approve of settlement § Estoppel provisions Any issues not raised when you had the opportunity in an IPR are now off the table in any USPTO, ITC, and Court proceeding Decision of whether to institute an inter partes review is non-appealable*

Answer 130

§ For AIA examined applications only § There is a 9 month window when you can challenge a newly issued patent § Can be based on any issue - 101, 102, 103, 112 Same estoppel issues will be raised here - if you didn’t bring the issue when you had the chance its off the table in the future

Answer 131

a new ground of rejection cannot be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must either reopen prosecution or request rehearing before the Board. If neither option is pursued, the appeal will be terminated. Further, where the examiner rejects the claims for the reason cited in the Board’s new ground of rejection, the rejection should be made final. That means that the applicant can now appeal to the Board. In these circumstances, when a final rejection of the claims has been made by the examiner, it is a mistake to believe that the Board will again review the rejection by virtue of the previous appeal. After such a final rejection, an applicant who desires further review of the matter by the Board must file a new appeal to the Board. Such an appeal from the subsequent rejection by the examiner will be an entirely new appeal involving a different ground than the previous appeal, which means that it will be necessary to file a new notice of appeal, appeal brief, and payment of appropriate fees.

Answer 132

Yes correction of inventorship should be accomplished by filing a request for Certificate of Correction if (1) the only change being made is to correct the inventorship; and (2) all parties are in agreement and inventorship is not contested. Such a request to correct inventorship of a patent must be accompanied by (1) the appropriate fee; (2) a statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change; and (3) a statement from all assignees agreeing to the change of inventorship in the patent. note: 37 C.F.R. 1.48. pertains to correcting inventorship during the pendency of an application. Furthermore, a petition is no longer required under Rule 48 even to correct inventorship during a pending application

Answer 133

Not much. A hearing is note required in some instances. Director may suspend the practitioner after reviewing the documentary evidence provided by the OED Director without the practitioner being given a formal opportunity to be heard. This seeming lack of due process is due to the fact that the practitioner has already been afforded due process by the tribunal in the underlying criminal matter. This is a form of reciprocal discipline that allows the Director to immediately suspend practitioners who have been convicted of a serious crime. an interim suspension is only appropriate where the practitioner has been convicted of a serious crime. In fact, the pertinent rule specifically says: “If the crime is not a serious crime, the OED Director shall process the matter in the same manner as any other information or evidence of a possible violation of any USPTO Rule of Professional Conduct coming to the attention of the OED Director.”

Answer 134

File the copy of the Japanese application before midnight While the best course of action would be to have obtained an English language translation of the application, that is no longer realistically possible given the hour. Furthermore, you do not absolutely have to file an English translation As a result of the PLTIA, it is possible to claim priority to a previously filed application for up to 14 months. In order to take advantage of the additional two-month period, the delay must have been unintentional. Here, the facts do not suggest an unintentional delay.

Answer 135

Everyone involved in the prosecution has a duty to disclose to the USPTO. However we may get a question where only a certain portion of that group know of a prior art reference. in that narrow instance we say only those that know about the prior art have a duty as it pertains to that prior art. Rule 56(d) allows those who are not the attorney, agent or inventor to satisfy the duty to disclose by notifying the agent, attorney or inventor.

Answer 136

The standard that will be used to determine whether the USPTO will initiate review is the "reasonable likelihood" standard.

Answer 137

The AIA amended the patent laws to provide that a patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent. The supplemental examination will determine whether the information presented in the request raises a substantial new question of patentability. If the information presented in the request raises a substantial new question of patentability, the Office will order ex parte reexamination of the patent. While filing a reexamination could address the patentability issue, it would not address any potential inequitable conduct problem. If inequitable conduct is found, all of the claims to the patent are lost because they will be deemed unenforceable. To fix this problem, you need to pursue a supplemental examination. The entire point of supplemental examination is to submit information to the Office so they can consider whether it matters, while at the same time inoculating a patent from a charge of inequitable conduct, or in the terms of the statute, from being “held unenforceable.”

Answer 138

It is true that, since the passage of the AIA, the lack of best mode is no longer an acceptable reason to find a patent claim to be invalid. It is also true that 35 U.S.C. 112(a) still requires best mode to be disclosed. But best mode is not a concept that exists in a vacuum. 35 U.S.C. 112(a) requires the disclosure of the best mode of the claimed invention. (example explanation from relevant question) In Claim 1, there is no mention of lemons whatsoever. As such, the fact that, in one embodiment of the invention, the cleaning solution uses lemons, and specifically Seminole County, Florida, lemons, is irrelevant. With respect to Claim 2, however, you have included lemons and you have not disclosed that the preferred lemons come from Seminole County, Florida. We know you have not disclosed this fact in the specification because the question tells us that on the August 27 call your client tells you this for the first time. This also means that you have not engaged in any kind of ethical violation by seeking claims you know you are not entitled to receive, but it also means that you cannot ethically proceed to attempt to obtain Claim 2.

Answer 139

A Response to an Office Action may be transmitted via facsimile to the United States Patent and Trademark Office. The MPEP uses an example where a facsimile transmission begins day 1 at 8:45pm Pacific Time but concludes at 9:05 am Pacific Time the next day. The date of the facsimile would be day 1 if a Certificate of Transmission were used, because an Office Action Response is not on the list of proscribed documents at 1.8(a)(2). Therefore, it can take the benefit of a Certificate of Transmission. The only application that can be filed via facsimile is a CPA, which is a continuation filed pursuant to 37 CFR 1.53(d).

Answer 140

~written description~ The written description requirement has several policy objectives. "[T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed." "The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed." ~Enablement~ About enabling POSA to recreate invention without undue experimentation.

Answer 141

Information disclosure statements filed after payment of the issue fee in an application will NOT be considered but will merely be placed in the application file. MPEP 609.04(b)(IV). If the applicant wants the IDS to be considered, the application may be withdrawn from issue and the applicant may file a Request for Continued Examination (RCE) or a continuing application. IMPORTANT NOTE: There is a distinction here between what is allowed in everyday practice at the USPTO and the material testable on exam day. Beginning on May 16, 2012, the USPTO started what they call the Quick Path Information Disclosure Statement (QPIDS) Pilot Program. You are not tested on QPIDS because it is not yet in the MPEP, and the Federal Register Notice announcing the pilot program is not one of the testable documents.

Answer 142

No. In re Nuijten. In that case, the United States Court of Appeals for the Federal Circuit determined that transitory signals are not patent-eligible subject matter. The Federal Circuit concluded: “A transitory, propagating signal like Nuijten’s is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” Nuijten was, however, granted patent claims covering the process, the device that performed the process, and a storage medium holding resulting signals.

Answer 143

No. It will be good for a rejection under 35 USC 103 based on reference X, if reference X is available as prior art only under 35 USC 102(a)(2).

Answer 144

Yes. MPEP § 2144.03 provides that when an applicant seasonably traverses an officially noticed fact, the examiner may cite a reference teaching the noticed fact and make the next action final.

Answer 145

"step" plus function limitations shall be construed to cover the corresponding acts disclosed in the specification and their equivalents. Accordingly, the step plus function imitation correspondingly includes acts (1)-(5) and their equivalents. Thus, in order to anticipate, a prior art reference must disclose each and every act, or its equivalent, for the step plus function.

Answer 146

The appeal is considered withdrawn. Apparently this also means the claims that were rejected will be canceled and those allowed in the last office action are allowed still. Status of the application is: pending.

Answer 147

The examiner should cancel claims 1 and 2 and allow the application with claim 3 only. Examiner can't convert dependent claim 2 into independent form. See MPEP § 1214.06 under the heading "Claims Stand Allowed." Where one or more other claims stand allowed, the examiner is not authorized to convert to independent form a dependent claim that has been objected to (but not allowed or rejected) based on its dependency to a rejected claim.

Answer 148

Review of a final restriction requirement is only possible as a petitionable matter before a Technology Center Director. It is not an appealable matter to the Board.

Answer 149

Yes in MPEP § 2127, under the heading "Abandoned Applications, Including Provisional Applications," and subheading, "Abandoned Applications Disclosed to the Public Can Be Used as Prior Art," states "the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent may be relied on in a 35 U.S.C. 102(e) rejection based on that patent if the disclosure of the abandoned application is actually included or incorporated by reference in the patent.

Answer 150

- A specification as prescribed by the first paragraph of 35 USC 112. - A description pursuant to 37 CFR 1.71. - At least one claim pursuant to 37 CFR 1.75. - Any drawing required by 37 CFR 1.81(a). DO NOT NEED: The basic filing fee required by 37 CFR 1.16(a).

Answer 151

Present evidence why the steps of the claimed process produce a patentably different structure. MPEP § 2113, under the heading "Once A Product Appearing To Be Substantially Identical Is Found And A 35 U.S.C. 102/103 Rejection Made, The Burden Shifts To The Applicant To Show An Unobvious Difference," states "[o]nce the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.

Answer 152

No. The application will not be accorded an international filing date because the failure to designate at least one contracting State cannot be cured by a facsimile transmission. As stated in MPEP § 1817.01, "[a]ll designations must be made in the international application on filing; none may be added later." The application will not be accorded an international filing date since the practitioner has tried to cure the failure to designate at least one contracting State by filing a paper using facsimile which is not permitted according to 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d). (But, bear in mind since 1/1/04 - a designation is automatic as a part of a PCT filing.)

Answer 153

There is no duty to disclose information regarding how the moon rock formulation was developed to the USPTO. 37 CFR § 1.56; MPEP § 2001.05. 37 CFR § 1.56(a) sets forth a duty to disclose information that is material to patentability. MPEP § 2001.05 states that "information is not material unless is comes within the definition of 37 CFR 1.56(b)(1) or (b)(2). If information is not material, there is no duty to disclose the information to the Office." The information that moon dust was never actually used is not material as defined under 37 CFR § 1.56(b)(1) or (2) which state that information is material if "(b)(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office or, (ii) Asserting an argument of patentability." That the use of the moon dust as part of an erasure formulation was only theorized and not actually used is acceptable as is an example for making it. MPEP § 608.01(p), II, under the heading "Simulated or Predicted Test Results Or Prophetic Examples," states that "[s]imulated or predicted test results and prophetical examples (paper examples) are permitted in patent applications. ... Paper examples describe the manner and process of making an embodiment of the invention which has not actually been conducted." Care, however, must be taken not to state that an experiment was actually run or conducted when it was not and that "[n]o results should be presented as actual results unless they have actually been achieved." MPEP § 2004, item 8.

Answer 154

The entire period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses. Work relied upon to show reasonable diligence must be directly related to the reduction to practice.

Answer 155

A list of the sole Japanese language publication submitted for consideration, including the publication date of the publication, a copy of the Japanese language publication and a written English language translation of the pertinent parts of the publication. 37 CFR § 1.290: MPEP 1134.01. The Rule allows that a third party may submit in an application a foreign-language publication and an English language translation of pertinent portions of the publication. The submission must "identify the application to which it is directed by application number," . . "include the fee (if more than 3 references are submitted) include "a list of the patents or publications submitted for consideration by the Office, including the date of publication of each patent or publication;". . . a " copy of each listed patent or publication in written form or at least the pertinent portions;" and an "English language translation of all the necessary and pertinent parts of any non-English language patent or publication in written form relied upon." Post 9/16/12, third party submissions are much broader than under old Rule 99.

Answer 156

File the complete reissue application complying with 37 CFR 1.173(a) and 1.53(b) with an unexecuted reissue declaration listing the names of all the inventors with at least one broadening claim on May 8, 2017. 35 U.S.C. § 251; 37 CFR § 1.53(f); MPEP § 1403. Filing a broadened reissue application with at least one broadening claim prior to the expiration of the two-year time period set in the statute satisfies the diligence provisions of 35 U.S.C. § 251. The executed reissue oath/declaration and the filing fee may be filed at a later time. According to MPEP § 1403, a reissue application can be granted a filing date without an oath or declaration, or without the filing fee being present. See 37 CFR § 1.53(f)

Answer 157

MPEP § 2113, under the heading "Product-By-Process Claims Are Not Limited To The Manipulations Of The Recited Steps, Only The Structure Implied By The Steps," states "'even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the .product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.'

Answer 158

2-Dec-99 See MPEP § 706.02(f)(1) in general and Example 7 in particular.

Answer 159

No but, facsimile transmission may be used to file certain correspondence in PCT applications. See MPEP § 1805. only example I found: The Demand for international preliminary examination may be filed by facsimile transmission

Answer 160

Tricky question, NO the proper question is whether the invention as a whole, not just the differences, would have been obvious. See MPEP § 2141.02 further, A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.

Answer 161

The practitioner should file a request including (1) a corrected application data sheet that identifies each inventor by his or her properly spelled legal name, and (2) the processing fee. As of September 16, 2012, it is no longer necessary to have distinct procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors. 37 CFR 1.48(f) permits an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names) and allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent). 37 CFR 1.48(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2)); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected application data sheet, the request should also identify the desired inventor name change.

Answer 162

where an application is filed with an application data sheet correctly setting forth the residence of inventor B, and an executed 37 CFR 1.63 declaration setting forth a different incorrect residence of inventor B, the Office will capture the residence of inventor B found in the application data sheet.

Answer 163

Tuesday, November 28, 2000 The filing date of the nonprovisional application, (. See MPEP § 201.04(b), which states "[t]he [Uruguay Agreement Round Act] provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. Under the provisions of 35 U.S.C. § 119(e) applicants are entitled to claim the benefit of priority in a given application in the United States. The domestic priority period will not count in the measurement of the 20-year patent term. See 35 U.S.C. 154(a)(3). Thus, domestic applicants are placed on the same footing with foreign applicants with respect to the patent term." A provisional application is filed under 35 U.S.C. § 119(e) and according to 35 U.S.C. § 154(a)(3), such a filing date is not taken into account in determining patent term.

Answer 164

MPEP § 2163.01, under the heading "Support For The Claimed Subject Matter In The Disclosure," states that "[I]f the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack of written description under 35 U.S.C. 112, first paragraph, or denial of the benefit of filing date of a previously filed application." Note on a "new matter" rejection: MPEP § 2163.01 states that unsupported claims "should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that originally presented."

Answer 165

Wednesday, August 6, 2015. See 35 U.S.C. § 172; MPEP § 1504.02. Registration of a design abroad is considered to be equivalent to patenting under 35 U.S.C. 119(a)-(d). In order for the filing to be timely for priority purposes, the U.S. design patent application must be made within 6 months of the foreign filing.

Answer 166

-An oath or declaration executed by applicant pursuant to 37 CFR 1.63. You do need the spec (and description), claim, drawings when required

Answer 167

- An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country. - See MPEP § 512, which states "The Certificate of Mailing procedure does not apply to papers mailed in a foreign country."

Answer 168

- An uncontradicted declaration by A asserting that the subject matter relied on by the examiner in reference P constitutes A's sole invention, with the result that Reference P is not available as prior art against the claim. - See MPEP § 717.01 (III), which states "Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the applicant. If successful, the activity or the reference is no longer applicable. . . . An uncontradicted 'unequivocal statement' from the applicant regarding the subject matter disclosed in an article, patent, or published application will be accepted as establishing inventorship.

Answer 169

- Upon allowance of application B, the practitioner must identify XYZ Company as the assignee in the appropriate space on the Issue Fee Transmittal form for specifying the assignee for application B. - MPEP § 306 states, "In the case of a division or continuation application, a prior assignment recorded against the original application is applied to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications." MPEP § 307 states, "Irrespective of whether the assignee participates in the prosecution of the application, the patent issues to the assignee if so indicated on the Issue Fee Transmittal form PTOL-85B. Unless an assignee's name and address are identified in item 3 of the Issue Fee Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied." A new assignment document need not be recorded for a divisional or continuation

Answer 170

- The application does not contain a claim. - Okay if: the description and claims in diff language; the Request is signed by attorney instead of applicant; the sole applicant is a Canadian resident and national; and the application is without fees - PCT Article 11(1)(iii)(e); 35 U.S.C. § 363; 37 CFR § 1.431(a); MPEP § 1810. Under PCT Article 11(1)(iii)(e), to be accorded an international filing date, an application must have "a part which on the face of it appears to be a claim or claims."

Answer 171

- Jan. 5 2001 - 35 U.S.C. § 102(e)(1) provides that a US published application of a national stage of an international application filed on or after November 29, 2000 has a prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, and was filed on or after November 29, 2000, the USPTO published application is entitled to its international filing date of January 5, 2001 for prior art purposes under 35 U.S.C. § 102(e)(1). See Example 4 of MPEP § 706.02(f)(1)

Answer 172

- The Board will reverse the rejection based on Smith and Jones only. - MPEP § 1207.03. If the claimed invention is rendered obvious by Smith in view of Jones and Brown, the statement of rejection must include all three references. Reliance on Brown to support the rejection is a different rejection from a rejection relying only on Smith in view of Jones. In accordance with MPEP § 1208.01, the Board will not consider the teachings of Brown because Brown was used to support the rejection, but was not listed in the statement of the rejection. As stated in MPEP § 1208.01, "Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection.

Answer 173

- claims 1, 4, and 6 - 37 CFR § 41.37; MPEP § 1205.02, under the heading "Appeal Brief Content". The Board considers the claims as grouped and argued in Applicant's Brief.

Answer 174

The application is abandoned because the practitioner did not rescind the nonpublication request and provide notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).

Answer 175

A statement by Dave that the information required to be submitted is unknown and is not readily available to Dave. See 37 CFR § 1.105(a)(3); MPEP § 704.12(b). MPEP § 704.12(b) states "A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible."

Answer 176

See MPEP § 2173.05(h). A Markush group is an acceptable form of alternative expression provided the introductory phrase "consisting of," and the conjunctive "and" are used.

Answer 177

No. MPEP § 502.01. MPEP § 501.01, under the heading "Correspondence Relative To Patents And Patent Applications Where Filing By Facsimile Transmission Is Not Permitted," identifies among the correspondence not permitted to be filed by facsimile transmission "(B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application filed under 37 CFR 1.53(d) "

Answer 178

Yes. the reply is proper. MPEP § 1204, under the heading "Appeal By Patent Applicant," states that "[a] notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of 'twice or finally...rejected' does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application."

Answer 179

Submit an appropriate reply to the Notice to File Missing Parts by filing, on August 3, 2016, a declaration under 37 CFR 1.63 executed by Sam, accompanied by a petition under 37 CFR 1.136(a) for an extension of five months, and the fee set forth in 37 CFR 1.17(a).

Answer 180

in advance, that is, at the time of requesting any action.

Answer 181

False. Not all fees are subject to the small entity reduction

Answer 182

True What is false is: The filing and recording of an assignment will operate as a revocation of a power or authorization previously given.

Answer 183

Reject the claim under 35 USC 103 as obvious over the prior art reference. A prima facie case of obviousness exists where the claimed ranges and the prior art are close enough that one of ordinary skill in the art would have expected them to have the same properties. See MPEP § 2144.05.

Answer 184

File a timely petition pursuant to 37 CFR 1.181 seeking review such that the new ground of rejection in the answer is so designated, after efforts to persuade the examiner to reopen prosecution or remove the new ground of rejection are unsuccessful. 37 CFR § 1.181 - Petition to the Director.

Answer 185

drawings or flow diagrams. MPEP § 608.01, under the heading "Illustrations In The Specification," states "[t]he specification, including any claims...may not contain drawings or flow diagrams." see MPEP § 608.01, which states, "The...claims may contain tables only if necessary to conform to 35 U.S.C. 112."

Answer 186

factual evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone. See MPEP § 2164.06(c) under the heading "Affidavit Practice (37 CFR 1.132)." Factual evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone can rebut a prima facie case of nonenablement.

Answer 187

Yes 37 CFR § 1.27(c)(4) ("The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application, including a continued prosecution application under § 1.53(d), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.").

Answer 188

A clean copy of the original specification (including one or more claims), any necessary drawings (none containing new matter), a copy of the signed declaration (as filed in the parent application), and all required fees.

Answer 189

The Appeal Brief states that the claims do not stand or fall together, and presents argument as to why the claims are separately patentable, but the primary examiner does not agree with the applicant's argument. See MPEP § 1207. If the examiner disagrees with the reasons given, the reason for disagreement should be addressed in the Examiner's Answer. If the brief includes a statement that a grouping of claims does not stand or fall together but does not provide reasons, [the examiner is to] notify appellant of the non-compliance. If the examiner disagrees with appellant's statement in the brief that certain claims do not stand or fall together, the examiner explains in the examiner's answer why the claim grouping listed in the brief is not agreed with and why, if appropriate, e.g., the claims as listed by the appellant are not separately patentable.

Answer 190

No. MPEP § 2112, under the heading "Something Which Is Old Does Not Become Patentable Upon The Discovery Of A New Property," states that "claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.

Answer 191

As explained in MPEP § 608.01(n), under the heading "Multiple Dependent Claims," subheading "Acceptable Multiple Dependent Claim Wording" the multiple dependent claim wording of new claims 16-27 is proper. See, for example, "any one of the preceding claims," and "in any of claims 1-3 or 7-9."

Answer 192

Joan may obtain access to the entire Application A by submitting a written request, since, notwithstanding the fact that only a redacted copy of Application A has been published, a member of the public is entitled to see the entire application upon written request. A redacted copy of the application was used for publication purposes, and 37 CFR § 1.14(a)(1)iii: provides that "If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy."

Answer 193

Consider the new matter and treat Claim 1, determining whether the invention as claimed with the new matter, would have been obvious in view of reference A, and reject Claim 1 under 35 USC 112, first paragraph, for lack of support in the original disclosure for new matter. MPEP § 2143.03, which requires the examiner to consider new matter

Answer 194

Remarks filed by applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with the claim.

Answer 195

True As explained in MPEP § 901.01, the "matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in that it then constitutes prior public knowledge under 35 U.S.C. 102(a),