Missed Patent Bar Problems

markush group example

"consisting of" + "ABC and D"

In a PCT filed before 11/29/2000, when is the effective filing date of an international application? Don't worry too much about this one

The day on which the last of fee, oath, or translation arrives

Where a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the later of (4 things you need to know it's quite a bit)

(1) four months from the actual filing date of the later-filed application, (2) four months from the date of entry into the national stage in an international application, (3) 16 months from the filing date of the prior-filed application, or (4) the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application

Arnold Horshack is the inventor of a new and improved turkey call, which he conceived and reduced to practice on January 30, 2012. The device creates the most obnoxious sound, which approximates a wheezing hyena. Field studies show that turkeys appear to be drawn to the noise out of curiosity, or perhaps pity for what sounds like a dying animal. Horshack files a patent application in Canada on April 1, 2012, and on May 1, 2012, he files a U.S. patent application claiming priority to his Canadian filing date. For financial reasons, the U.S. application is expressly abandoned on July 1, 2012. The Canadian application publishes on October 1, 2013. Freddie Washington files a U.S. nonprovisional patent application on November 1, 2013, which relates to a turkey call that approximates a wheezing coyote. Which of the following would be the earliest date the Horshack disclosure could be used as prior art against Washington?

(E) is correct. U.S. patents and U.S. patent application publications can be prior art as of their earliest effective filing date, regardless of whether the earliest filing date is based upon an application filed in the U.S. or in another country. For example, AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO-published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Thus, a foreign filing date can be a prior art date. But will we have a published U.S. application, an issued U.S. patent or a published PCT? There is no mention of a PCT application, and the U.S. application was abandoned so there will be no U.S. patent. Thus, this question turns on whether there will be a U.S. published application that claims priority to Horshack's Canadian filing date. A U.S. patent application will be published promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless the application is no longer pending. See 37 C.F.R. 1.211(a)(1). Because the Horshack U.S. patent application was expressly abandoned, it will not publish. Thus, Horshack will not obtain a U.S. patent and there will be no U.S. publication. Therefore, the Canadian filing date will not be the prior art date. That means the earliest prior art date would be the date of the Canadian publication, making (E) the correct answer.

Requirements to update the inventor's name if it is wrong or there is an error in the spelling under 1.48

1) an ADS 2) the processing fee This applies to design patents as well

Three criteria for prima facie 103

1) must be some suggestion or motivation 2) reasonable expectation of success 3) Prior art must teach or suggest all limitations

Is the following acceptable procedure? Prior to the first Office action being mailed the inventor calls the examiner to whom the application is docketed to offer help in understanding the specification. In this case this is a utility/national application

F, a request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications[,] [a] request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral

In a pre-AIA application, if a foreign patent publishes what statutory bars will be presented?

102(a) and 102(b)

Which sections of 102 are addressed by 37 CFR 1.130

102(a)(1) and 102(a)(2). Note that this is technically the 102(b) exemption but it addresses 102(a)(1) and (2) rejections

PCT creates two 102 rejections what are they

102(a)(1) as of their publication date, 102(a)(2) as of the earliest priority date.

In a pre-AIA application, if another person diligently reduces the invention to practice before you and then sells it, what kind of bar would this create

102(g)

where are derivations in the mpep ?

2300

Fees for assignment docs are under what section of 37 CFR 1.19

37 CFR 1.19(b)(4)

How long do you have to file a design patent in the US after filing in a foreign country?

6 months

If you file design patent in another country, how long do you have to then file in the united states

6 months BUT you have an extra 2 months under PLTIA

T or F: A claim which depends from a claim which claims an invention "consisting of" the recited elements or steps can add an element or step to further limit the claimed invention?

F, cannot add an elements or step

T or F: Failure to respond to an Official Action in reexamination will result in abandonment.

F, failure to respond= reexam certificate

T or F: If both and objection and rejection, the new matter should be decided by petition and is not appeal

F, if there is both objection and rejection then it should be decided by appeal NOT by petition

When proving priority in a foreign application what do you need to file?

A copy and translation of the foreign application for which you rely on for priority.

Roberto files a U.S. patent application fourteen months after he perfects an invention in Europe in 2009. Which of the following would establish a statutory bar against the granting of a U.S. patent to Roberto? THIS IS PRE-AIA

A foreign patent issued to Roberto 11 months prior to the filing date of Roberto's U.S. patent application. The foreign patent was granted on an application that was filed 23 months prior to the effective filing date of Roberto's U.S. patent application. The foreign patent application and the U.S. patent application claim the same invention.

If no independent claims stand allowed, but some dependent claims stand allowed after review by PTAB what should the examiner do with the application?

Abandon the application. If the board reversed a rejection of a dependent claim, and no independent claims stand allowed, THEN the examiner has to allow the applicant a chance to rewrite the claims. But when they are rejected as is and the board affirms the rejection, the application would be toast.

Can you consider and adopt ideas well known in the art while making your invention?

Absolutely just can't copy their exact invention

Which of the following practices or procedures may be employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(a)(2)? A) Persuasively arguing that the claims are patentably distinguishable from the prior art. B) Filing an affidavit or declaration under 37 CFR 1.130 showing that the reference invention is not by "another." C)Filing an affidavit or declaration under 37 CFR 1.130 showing disclosure within one year of the filing date of the application that predates the filing date of the reference. D) A and C E) all of the above

All of the above. Reference is not "by another" does apply to AIA 102, despite the MPEP seeming to show it only applies to pre-AIA

You prepare a patent application to be filed on behalf of LowStar, LLC which will protect their new low-earth-orbiting communications satellite. The claims in the application are drawn to a significant improvement that relates to encryption and decryption of real-time secure messages. This allows for greater security without causing messages to be delayed in transit. Unfortunately, the inventor of the technology on which LowStar wishes to file a patent, a gentleman by the name of Matthew Rodgers, hasn't been seen at LowStar headquarters for many months. Rumors first suggested that he was abducted by aliens, which seems rather implausible given his overall cantankerous demeanor. More recently, a private detective hired by LowStar has reported suspicious activity on Rodgers' credit card statements with repeated monthly charges to a Holistic Wellness Retreat run by Humphrey Hollins, a reputed cult leader in the desert of southwest Arizona. No telephones are allowed at the Hollins compound and attempts to contact Rodgers have all been rebuffed. LowStar would like to file the application in the name of the company and omit any reference to Mr. Rodgers, preferring not to eventually have the sanity of the inventor become an issue. What advice do you give LowStar?

An application must include, or be amended to include, the name of the inventor for any invention claimed in the application. i had previously selected the following wrong answer: The name of an inventor may be omitted if the application filed is a provisional patent application, but if the application filed is a nonprovisional patent application, the name of the inventor and an oath or declaration must be submitted. this is wrong

Trick question: which of the following is prior art under 102? A) patent issued one day before the filing date B) a publication reaching subscribers one day before the application was filed C) a sale one week before the application was filed D) a public demonstration the week before filing E) all of the above

Answer is E because none of them said the disclosure was made by the inventor

Timeline for submitting third party submissions

Any third-party submission under this section must be filed prior to the earlier of: (1) The date a notice of allowance under § 1.311 is given or mailed in the application; or (2) The later of: (i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or (ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application

If applicant files a reissue to "narrow" a claim, but the applicant then later, by amendment, broadens the scope of the reissue, what is examiner supposed to do?

Apparently the original intent is irrelevant, as long as the broadening reissue is brought within two years (and it can be brought on the last day) so the examiner should examine the application with the broadening claims.

T or F: 102 rejection can be overcome by arguing that the alleged anticipatory prior art is not recognized as solving the problem solved by the claim invention

F, the problem to be solved is irrelevant. in this instance and is irrelevant in 103 rejections as well

request for continued prosecution has the same requirements as an RCE

FALSE, THIS IS A CPA, AND IT IS NOT AVAILABLE FOR APPLICATIONS WITH A FILING DATE ON OR AFTER MAY 29,2000. THE REQUIREMENTS ARE ALSO DIFFERENT. so if you file for an app filed after 2000, then it will be treated an RCE but will receive a notice of improper request

In the Examiner's Answer that Rick recently received, the Examiner had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 102 as anticipatory, that 35 USC 103 ought to carry the day inasmuch as the references rendered the claims obvious. In addition, since the rigor of exact one-to-one correspondence of claim elements to disclosure is relieved under 103, the rejection should be maintained because common sense would render the invention obvious. Rick filed a Petition under 1.181 to ask that the new rejection(s) be designated as a new ground of rejection. The Petition was granted. Rick should a) do nothing b) file an amendment under rule 1.111 reopening prosecution c) file a reply brief d) any of the above e) a or B

B) If the appellant does not file an amendment, the Appeal is automatically dismissed.

If the application issues as a patent, and you forgot to claim priority to the parent (assume this is a continuing application) how do you correct? A) reissue B) certificate of correction and Grantable Petition

B) just get a certificate

Which of the following sections can be used as the basis for a provisional rejection? A) 102(a)(1) B) 102(b) C) 102(a)(2) D) 102(c)

C) 102(a)(2)

If you have a claim where 50% or more of the embodiments are not enabled, what should you do?

Cancel the claim and submit a new claim directed to the enabled part of the invention

If claims 1-10 are rejected, but claims 1,4,6 are argued for in the appeal brief, which claims will the board consider?

Consider claims 1,4,6 because they are grouped and argued in the appeal brief

What does a PCT app need for a filing date?

Description only

In order to obtain examination for an international industrial design in the United States through the Hague Convention on industrial designs, after a complete indirect filing and subsequent publication by the International Bureau in Geneva, an applicant needs to

Do nothing. If the United States is a designated Contracting Party in the international application, examination in the United States proceeds automatically once a complete application and fees have been sent to Geneva, and the international application has been published.

Can an abstract be used to form the basis of a 103 rejection, or any rejection for that matter?

Duh, if its in the publication or patent anything goes

When is a USPTO employee barred from applying for a patent ?

During their employment and one year after

T or F: Applications filed prior to May 29, 2000 are eligible for patent term adjustment

F

T or F: The specification may include graphical illustrations or flow charts

F

T or F: The specification may include a reservation for a future application of subject matter disclosed but not claimed in the application.

F, A reservation for a future application of subject matter disclosed but not claimed in a pending application will not be permitted in the pending application.

T or F: A product-by-process claim is properly rejected over a reference under 35 USC 102. There is no anticipation unless each of the process steps recited in the claim is disclosed or inherent in the applied reference.

FALSE. the process is irrelevant, it's the final product that matters

Ethically, if you fail to turn in property from a client, but did not intend to share it because you thought the property was already in the public domain, what charges will be brought against you?

Failure to surrender papers and property to which the client is entitled upon termination of representation. AND FRAUD AND DISHONESTY

T or F: A claim cannot be rejected for failing to interconnect elements of the invention, when it is clear to one of ordinary skill where the elements would go.

False, it can absolutely be rejected. Instead of searching interconnect remember to search interrelate

T or F: The filing and recording of an assignment will operate as a revocation of a power or authorization previously given.

False, it is not an automatic revocation but the assignee will have the OPTION to revoke POA

T or F: the specification must begin with one or more claims

False, it must END with claims.

T or F: "Teaching away" is a valid rebuttal to an obviousness rejection only when a person of ordinary skill would be explicitly discouraged.

False, there is no requirement that a reference explicitly teach away for "teaching away" to be a valid rebuttal. In fact, a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. It is improper to combine references where the references teach away from their combination. A prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness.

In the Examiner's Answer that Ben was reading, the Examiner had argued the original rejections contained in the file but had also, in addition, argued that the references had enough alternative structures to contemplate other variations on the existing rejection. The Examiner said the alternatives merely elaborated on what was already in the existing rejection. Ben should

File a Reply Brief with arguments. A new cite in an existing reference which only elaborates on the existing rejection is likely not a new ground of rejection and the only option here is to file a Reply Brief

If you wanted to dedicate an invention to the public for a period of patent term, what is the procedure?

File a disclaimer in this case for the time period, do not assign the rights to the public in a recording

What is the procedure for deleting a co-inventor

File an ADS in accordance with CFR 1.76, together with the fee, a petition is no longer required. I don't think 1.48 is necessary here because the names and addresses are correct.

When an amendment is filed after final rejection, how do you get it considered before filing an appeal brief?

File an RCE and re-offer the amendment., there is no other way

When can you use a certificate of correction to correct inventorship on an issued patent?

IMPORTANT: Only when all parties are in agreement, if not then you need to file a reissue.

T or F: If a claim is determined to be directed to a judicial exception to patent eligibility, the claim will be rejected by the patent examiner.

If a claim is determined to be directed to a judicial exception to patent eligibility, the claim will be rejected by the patent examiner.

Will a reexam consider only patents and printed publications?

In determining whether or not to order a reexam, only patents and printed publications will be considered insofar as whether or not there is a substantial new question. HOWEVER, once one has been ordered, the reeexam will continue all material relevant to patentability including public use or sale.

In accordance with the MPEP and USPTO rules and procedure, an application for patent may be made on behalf of a joint inventor in certain situations. Who may make application on behalf of a joint inventor who has refused to sign the application ("nonsigning inventor"), if the other joint inventor ("signing inventor") executes the application? A) A person other than the signing inventor, to whom the nonsigning inventor has assigned the invention. B) A person other than the signing inventor, with whom the nonsigning inventor has agreed in writing to assign the invention. C) The signing inventor. D) A person other than the signing inventor, who shows a strong proprietary interest in the invention. E) All of the above.

In the mpep it says this can only be a signing inventor, but it must not be properly updated because the correct answer is now all of the above.

In a situation where identical claims are put forth in two applications belonging to different owners, and one is pre-AIA and the other is AIA, how is the patent decided?

Interference proceeding, whoever conceives of and has diligence prior to the other will usually win out

Even though the assignee is listed in a parent application, does the assignment carry over to the continuation.

It carries over, but if you want to be sure that the assignment is on the face of the patent when it issues, you should write the assignment on the issue fee transmittal form still

when is "effective amount" definite ?

It's definite when it specifically says what the effect amount is set out to accomplish. Merely stating "effective amount" is indefinite

What is everything you need to be accorded an international filing date in a PCT?

Just need claim or claims

If ADS is filed with an oath, what information do you need on the oath?

Just the inventor's name, the mailing address and serial number on the application will be included on the ADS, and if there is an inconsistency the ADS will override.

The international filing date of an International Industrial design application is

The date of receipt of the application in offices of the Contracting Party of indirect filing.

T or F: A declaration which accompanies a patent application must state on the document a warning that willful false statements and the like are punishable by fine or imprisonment or both under 18 USC 1001, and the declaration must be notarized.

Must include that statement BUT declaration does not have to be notarized.

In a foreign application filed in 2011, what must you do to retain priority of a continuation?

Must make a claim in the continuation to assert priority and file a certified copy of the parent application

Can you have a client sign an oath before preparing the application?

NO big no no

Can an assignee file a broadening reissue application?

NO it must be the inventor

If a restriction requirement has been twice made, can you appeal?

NO this is decided by petition, claims are appealable

If app X claims the same invention claimed in Y can a terminal disclaimer be used to overcome a rejection.

NO, a statutory double patenting situation that cannot be avoided by filing a terminal disclaimer. In this case the application later filed will be PROVISIONALLY REJECTED UNDER 102(A)(2)

Can you have both ink drawings and color/black and white photographs in a design application?

NO, even if accompanied by petition. It's one or the other

Can a claim to a method of updating alarm limits by changing the number value of a variable be patented?

No

Can a terminal disclaimer be used when two patents do not claim the same patentable subject matter?

No

Can claims contain drawings or flow diagrams?

No

Can the fee for recording a document affecting title be reduced for small entities?

No

Can you use the term preferably in your claim language?

No

Does a translation need to have a statement that the translation is accurate and certified by someone who is fluent?

No

If a dependent claim inherits the defects of the parents claim, can it still be considered definite?

No

Is the actual receipt date accorded as the filing date in the following case? Non-provisional application filed "by reference" where a complete copy of the reference filing is not submitted within 4 months of filing, or sixteen months from the priority date.

No

Will an oral hearing be enough to count as substantial new question in a reexam?

No

Will examiner conduct an interview with any practitioner who shows up with a file? Meaning does the practitioner have to be an agent of record?

No

can a statutory bar be overcome by acquiring the rights to a patent?

No

can you file a provisional or national application specification and or drawing by fax?

No

can you incorporate material by reference to a hyperlink?

No

is a claim required for a filing date in a provisional?

No

will the patent owner be notified of the deficiency in the following? 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.

No

T or F: a 130 affidavit is proper procedural tool Where the subject matter relied upon is evidence under 35 USC 102(f).

No 102(f) rejection under AIA, 1.130 is an AIA tool

Are secondary considerations (such as unexpected results or commercial success) relevant to 102 rejections?

No secondary considerations are considered in 103 rejections

can you use wherein in an independent claim?

No this is a dependent claim signifier

Bill was unhappy that his friend Bob had obtained a patent in 2017 on something that he had told Bob about in 2015. He decided he would go right to the PTO and use derivation to get the PTO to revoke the patent. He puts together an affidavit detailing the facts regarding his inventorship, a copy of the patent, and all of the other necessary requirements for the request, along with the fee. The papers are filed October 1, 2019. Will the request be considered?

No, Derivation is only available for applications filed after March 16, 2013, and the derivation must be filed within one year of the patent issuing.

Can you remove a prior art reference using a 1.132 affidavit?

No, a 132 affidavit is one that you file to submit evidence to the Patent Office. It is not the correct procedural vehicle to remove a reference either under AIA or pre-AIA. You would need a 1.130 or a 1.131 if the reference is pre-AIA

Do you need to do any precautionary designation in a PCT?

No, after 2004 all member countries are automatically designated

If assignee wants a patent to issue in the name of the company and not the inventor, and the inventor has agreed to these terms, does the assignee need to file an oath?

No, and this can be done by specifying the LLC or S corp as the assignee on the ADS. This is acceptable to do though

Is a foreign filing license required to file a PCT in the US ?

No, but may be required before you can file elsewhere

If you file a patent before another identical patent issues in a foreign country, will you get a rejection under 102?

No, even if the issued patent has an earlier filing date it is only prior art as of its issue or publication date, so even if you filed after the other filing date but before the other issue date, you can still win

Can you amend a declaration

No, i do not think so I think it must be replaced

If application is involved in an interference and petition under 1.48 is filed to correct inventorship, PTAB will remand the case to the examiner

No, if the application is involved in an interference, the Board will decide the petition.

Will a third party declaration stating only that products are different be sufficient to overcome a 102/103 declaration.

No, in this case an argument and an affidavit showing evidence that, say one product had a lower melting point, would be better. A third party declaration merely stating the conclusion is opinion evidence

If person A learns that person B filed an application without them, person A can file a petition that protests inventorship.

No, in this case the person is a third party and can only file a protest not a petition or any inter partes resolution.

Can the copy of the international application or national fee in an IA entering the national stage be submitted by fax?

No, neither can.

can 102(c) be invoked to obviate A double patenting rejection based on reference X, if reference X is available as prior art under 35 USC 102.

No, only 102(a)(2)

can 102(c) be invoked to obviate A rejection under 35 USC 102 based on reference X, if reference X is prior art under 35 USC 102(a)(1)?

No, only 102(a)(2)

Can you say that you as the practitioner used the product and found it to be better than the prior art?

No, personal use is given no weight

If a company takes a non-exclusive field of use license in a patent can you still claim small entity status?

No, see 509.02

Can the PTAB remand an examiner to consider information in an amendment filed after final but not entered by the examiner?

No, since it was not entered it cannot force the examiner to do this

If inventor is "temporarily unavailable" can you use substitute statement?

No, so if inventor is out of town or on vacation you can't do this

Does adding an inventor to a patent after issue enlarge the scope of claims in a reissue?

No, so you can file more than two years after the patent issues.

Can you say "such as" in a claim

No, this is exemplary language it is prohibited

In the string example where a string was previously patented that stretched, but an application claiming a string could stretch to 10x its length, could the application be patented?

No, this is technically a new use of an old patent.

Does a CPA under 1.53(d) work under a utility application

No, you can't do this must be 1.53(b)

Can you tell the examiner that If the examiner will recognize that amending claim 2 will make it allowable the applicant will then make the amendment.

No, you can't make a deal with the examiner like this, present your arguments and then the examiner will respond

If you have one incredible utility, but another utility that is not incredible in the same application, can the examiner reject?

No. since another utility is disclosed the incredible utility is superfluous.

Claim 4 is an independent method claim directed to a method of using the apparatus. Does this claim mix claim types?

Nope, read carefully

A process claim containing the term "computer" should:

Not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning.

T or F: Failure to include an inventor's oath or declaration will result in the Patent Office issuing a Notice of Missing Parts

On or before September 15, 2012, an applicant was given a shortened statutory period of two months to respond, which was fully extendable for another five months. On or after September 16, 2012, the applicant has the option of not submitting the oath or declaration until the application is otherwise in condition for allowance. Postponement of the filing of the oath or declaration does require that the application contain an application data sheet that identifies each inventor, as well as the mailing address of each inventor where they customarily receive mail and the residential address of the inventor if different from the customary mailing address. Furthermore, when there is a postponement of the filing of the oath or declaration, the oath or declaration must still be filed within the time period set in the Notice of Allowance, which is not extendable

Do PCT applications have a 102(a)(2) date or 102(a)(1) date?

PCT applications have both, the 102(a)(1) date will be the date on which they publish, and the 102(a)(2) date will be the date the PCT is filed.

if the broad generic claim in an application includes an inoperative species of the invention__________________

The claim will not be rejected as long as the inoperable species does not correspond to the best mode or a preferred embodiment of the invention.

With respect to a US design patent that comes from an International Design application, the US filing date is

The date of indirect filing of a complete application in a Contracting Party country.

How long do you have to file a third party submission in a published patent application.

Six months post publication or before notice of allowance whichever comes first.

T or F A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board of Patent Appeals and Interferences

T

T or F: A deficiency under 35 US 101 also creates a deficiency under 112(a)

T

T or F: All notices and official letters for the patent owner or owners in a reexamination proceeding will be directed to the attorney or agent of record in the patent file at the address listed on the register of patent attorneys and agents.

T

T or F: In a pre-AIA filing... Declassified printed material is effective as a printed publication under 35 USC 102(b) as of the date of its release following declassification.

T

T or F: Upon written request, a person citing patents and printed publications to the Office that the person believes has a bearing on the patentability of a particular patent, may request that his or her name remain confidential.

T

T or F: The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission

T, application will be pending the appeal is withdrawn and the app will be passed to issue with the allowed claims

If the United States issues a Notification of Refusal to register the subject of an international design application,

The applicant may "prosecute" the design application as they would any other US design application. Once a refusal to register has been sent to the applicant by the USPTO, this is considered a first office action as to the US application, and regular prosecution is then commenced. The international design is subject to the same examination under 35 USC 101, 102, 103, and 112, just like any other US design application.

If a company is assigned all rights of a nonprovisional and records, the inventor files a divisional and assigns the rights of that to a separate corporation, which company wins out in the divisional?

The first one because the claims were already listed in the nonprovisional and likely just required election, since the assignment was recorded the second company buying the divisional loses.

If a patent examiner determines that a claim is patent-ineligible, what happens?

The patent examiner is instructed to still, nevertheless, evaluate the claims under each of the other patentability requirements.

In an After Final amendment, amendments are made which place the case in condition for allowance. Because this amendment will place the case in condition for allowance: the remarks must ______

The remarks must address each and every objection and rejection of the examiner and request reconsideration.

On Monday, May 13, 2022, John's secretary deposited in a "Priority Express Mail" drop box prior to the last scheduled pick-up for that day, an envelope properly addressed to the USPTO for delivery to the USPTO by the "Express Mail Post Office to Addressee" service. The envelope was received by the USPTO on Wednesday, May 15, 2022, containing a reply to an Office action which set a shortened statutory period ("SSP") for reply ending on Tuesday, May 14, 2022. The reply was marked by the Office as being received on May 15, 2022. The number of the "Express Mail" mailing label had not been placed on the response papers, and upon receipt of the "Express Mail" mailing label John learned that the "date in" was not clearly marked. John promptly filed a petition requesting the filing date to be the date of deposit. The petition included a showing that the date of deposit accompanied by evidence of USPS corroboration of the deposit. Accordingly,

The reply will be regarded as timely filed in the USPTO if a petition with proper fee for a one month extension of time is filed in the USPTO on or before June 14, 2022.the number of the "Priority Express Mail" mailing label must have been placed on each page of the response prior to the original mailing by "Priority Express Mail." The petition should not be expected to be granted inasmuch as the papers did not include the number of the "Priority Express Mail" mailing label on them. See § 1.10(c)(2), (d)(2), and (e)(2). (E) is wrong because 37 C.F.R. § 1.10(b) requires that "the number of the 'Priority Express Mail' mailing label must have been placed on each page of the response prior to the original mailing by 'Priority Express Mail.'"

If the examiner does not list a certain reference in statement of their rejection, but does indeed argue its use, and this decision is appealed, will the board reverse or affirm the examiner?

They'll reverse it because it was not included in the statement of the rejection, they will not consider the non-stated reference.

Examiner argued that even if the rejections could not be sustained under 35 USC 103 as obvious for inability to combine, that 35 USC 102 ought to carry the day inasmuch as the references rendered the claims unpatentable for a lack of novelty, is this acceptable or should this be designated as a new ground of rejection

This should be designated as a new ground of rejection

A five month extension of time to file an appeal brief in an appeal is always possible

True

T or F: A claim can be rejected for improper connection, even A claim can be rejected for including improper connection, even if undue experimentation is not required to perform the invention.

True

T or F: A claim which depends from a dependent claim should not be separated from that dependent claim by any claim which does not also depend from the dependent claim.

True

T or F: An unsigned application data sheet will be treated only as a transmittal letter unless it has been filed by an patent practitioner who is "of record" in the application.

True

T or F: Claims should be arranged in order of scope so that the first claim presented is the least restrictive

True

T or F: In the case where a patent owner did not consult the attorney and sold the license to the patent to a large entity and then paid small entity fees, you can still say this was a good faith mistake because the client did not consult you

True

T or F: Information in a previously submitted application data sheet, inventor's oath or declaration may be corrected or updated until the Notice of Allowance has been transmitted.

True

T or F: Product and Process claims should be separately grouped (recommendation)

True

T or F: The specification may include tables and chemical formulas.

True

T or F: a claim that depends from a claim which "consists of" the recited steps cannot add a step

True

T or F: i]f the patent is claiming the same invention as the application and its issue date is one year or more prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under 35 U.S.C. § 135(b) should be made

True

T or FA person being sued for infringement may file a request for Ex-parte reexamination without first obtaining the permission of the Court in which the litigation is taking place.

True

T or F: The Office will review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet.

True : The Office will review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet.

T or F: If, at any time, an application includes claims that gain priority support only in a filing that occurred on or after March 16, 2013, the entire application will be considered under the AIA. T or F: once such claims have been presented in an application, there is no cure; the canceling of the AIA claims will not work to return the application to one deserving of pre-AIA treatment.

True and true so you can't cancel to reclaim pre-AIA status

T or F: An oath executed in a foreign country must be properly authenticated.

True it has to be executed in front of an authorized official, so this technically means authentication to patent people

T or F: In order to demonstrate that a claimed invention is obvious, a patent examiner can demonstrate how one of ordinary skill in the art would be able to retrace the steps of the applicant in order to achieve the claimed invention.

True, but they used "re-assess" in the MPEP instead of retrace

T or F: The oath or declaration does not always need to identify each inventor by his or her legal name; nor does the oath or declaration always need to identify a mailing address where the inventor customarily receives mail, and residence.

True, if information is supplied in ADS this is acceptable

T or F: An application can be accepted for filing and given a filing date even though the inventors are not identified

True, provisional application, just says "application"

T or F: An applicant may opt out of publication at the time they file a nonprovisional patent application, but by doing so, they waive their right to file a foreign application

True, so if you try to opt out after filing a foreign application you can't do so

T or F: A provisional double patenting rejection can be made even when there are no common inventors in an application

True, this can still be made if there is common OWNERSHIP

When is appeal brief due?

Two months from the date the patent office RECEIVES your notice of appeal, and is then extendable for automatic extensions for five extra months. This gives you seven total months from the date the office receives the notice

pre-AIA 102 (prior art rejections) must be based on

US 102(e)

An acceptable Appeal Brief in the USPTO includes citations of case law authority to

United states reporter and west law, but there are a lot of acceptable citations they just can't say "only this one"

In an oral hearing in an appeal, will the examiner be able to present his argument without the appellant?

Usually not, BUT sometimes this will be allowed so it is a possibility.

a 1.130 affidavit can be used in pre-AIA

WRONG

When, in accordance with the patent laws, rules and procedures as related in the MPEP, is a supplemental oath or declaration treated as an amendment under 37 CFR 1.312

When filed in a reissue application after the Notice of Allowance has been mailed.

Should you file a derivation if the claims are the same or substantially the same.

Yes, the invention has to be the same or practically the same so if the claims are different do not use derivation. For claims that are different, but which appear to be in some way taken from the original inventor, a 1.130 affidavit can be used to disqualify the prior art

Is a certificate of mailing from a foreign country precluded from being afforded the benefits of the certificate of mailing procedure procedure under 37 CFR 1.8?

YES, however, they do get the opportunity to use certificate of transmission in a fax.

Can you encourage a client to meet for a settlement?

Yes

Can you file inter partes review under first to file and first to invent laws (pre-AIA and AIA) ?

Yes

Will the patent owner be notified if the appeal brief is filed without fees?

Yes

If the claims are held to be directed to a patent ineligible concept, can you still get patent protection on the claims?

Yes IF the claims add to significantly more than the abstract idea

If you don't include certain drawings in a continuation, can you file the missing items in response to the notice of omitted items with no change in filing date?

Yes because assertion of priority is an automatic incorporation by reference for inadvertently omitted subject matter from the priority application

If you fail to pay the issue fee but it was an accident, can the patent be revived

Yes by paying the fee if the delay was unintentional but there will be a patent term adjustment

Can the oath in a reissue be filed at a later time?

Yes indeed

In a petition to make special, can the petition be supported by the unverified statement that the patent owner is 65

Yes it can actually, because the statement alone submitted by the practitioner will count as evidence.

Can you use a 1.130 affidavit F showing common ownership, if the reference is not a U.S. patent that either claims the same invention or claims an obvious variation of the subject matter in the rejected claim(s)... for the purpose of overcoming a 102(a)(2) rejection

Yes this is pretty much 102(c) exemption

If the prior art discloses a range 35-60% and you file an application discloses 34.9% and 60.1%, will your application be rejected?

Yes under 103 as obvious

Can you represent clients seeking to patent the same technology?

Yes with informed consent confirmed in writing, but not if you have some secret information about the validity of the patents on one of them.

Can you use a 1.130 affidavit to overcome a 102(a)(2) rejection showing the the reference is not "by another"

Yes you can

do methods claims need to use gerunds?

Yes, a gerund is an "ing" word

If an international application is filed in the US receiving office in another language other than English, does it still get an international filing date?

Yes, all it needs are claims. Fees, translation , and residency do not affect filing date.

can 102(c) be invoked to obviate 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).

Yes, and only a 102(a)(2)

is this reference available as prior art? The applicant files a foreign application, later timely files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application, and the claims in the CIP are not entitled to the filing date of the U.S. parent application. The foreign application issues as a patent before the filing date of the CIP application and is used to reject the claims directed to the added subject matter under 35 USC 102/103. The reference is the foreign application.

Yes, because the filing of the CIP broke the chain of priority

can you revive a terminated reexamination proceeding ?

Yes, delay if delay is unintentional, but you'll need to look up the exact time frame for doing so

In the example of the moon dust eraser, there is an application filed with an eraser with x amount of moon dust, however it is discovered that it was only a theory and never actually tested. Is this acceptable and is there a duty to disclose in this instance?

Yes, in mpep 2000 it says simulated or predicted results and prophetic examples are permitted in applications, there is no duty to disclose in this instance.

Can you disqualify your own issued foreign patent within a year of the filing date?

Yes, it technically counts as your own disclosure

Do you have to tell patent office you have new material in a transition application?

Yes, look into this more but I believe you have one year from the priority date to notify the patent office you have new material in a transition application.

Is a billing process containing mathematical algorithms producing an invoice patentable subject matter?

Yes, see 2106

If in a phone call examiner requires election in a restriction requirement, and the applicant orally elects claims, can the applicant's election be upheld even though not in writing?

Yes, since it was an oral restriction the applicant can elect orally and it need not be in writing.

In pre-AIA cases, is a time lapse between conception and reduction to practice relevant?

Yes, so long as there is diligence

If a party learns of a disclosure from an inventor more than one year before the filing date, but publishes an article within the one year grace period, is there still a prior art bar.

Yes, the lecture from the inventor more than a year before takes over in this case and creates a bar.

If in a 103 rejection, one of the documents has a motivation to combine, albeit for a different purpose, can that document be used to support the 103 rejection.

Yes, the suggestion to combine does not need to be for the same purpose as applicant discloses in the application

Can you overcome a 102 rejection if you disclose information to another, that person then publishes the information (within a year of course), and someone else reads that information and makes another publication?

Yes, you can prove that all roads lead back to you

If PLTIA can be used to restore priority, should you assume it has been done?

Yes. failure to do so is malpractice

In interpreting claim language under 112(f), can you use.. "means for printing" "printer station for" "dot printer matrix for" "printer means coupled to"

You can only use means for, the other ones do not trigger 112(f)

If the specification or claims were sufficiently described in the original spec, but are required under 1.83 to be drawn, can you submit the drawings? Or should you petition?

You can submit the drawings because they are sufficiently described in the original specification

If you file a US application, and it issues, how long do you have to file a PCT application?

You have one year from your filing date to file the PCT even if the patent issued quickly

Can a legal guardian of the inventor file a patent ?

You know it, yes

If a multiple dependent claim refers to any of the preceding claims, but claim 2 is independent adding claim D to claim 1's ABC, how should you write the MDC

You should break it into 2 claims, one claiming abcd and another directed to claim 1 abc

If you file an application and there is some degree of utility but the examiner does not recognize this, what would be the best course of action?

You should file a declaration that a person of ordinary skill in the art would immediately recognize the utility.

If there is an undesignated new ground of rejection in an examiner's answer, what should your next move be?

You should move to have the new ground so designated, filing a reply brief in this instance would do you no good

Bob has filed an International Design application, which designated the United States, among the various contracting parties. The United States has refused registration following examination. Bob believes the examiner is wrong, and wants to further prosecution in the United States. Your advice to Bob is a) file appeal to PTAB b) File a continuation under Rule 1.53(b). c) File a continuation or divisional under Rule 1.53(d). d) File a CIP to add further distinguishing features to the design. e) (A), (B) and (D)

e), only thing you can't do in this instance is file 1.53d oddly enough

T or F: A double patenting rejection can be made only if the two applications have at least one inventor in common

false

T or F: extensions can be obtained retroactively in a reexamination.

false

T or F: a 130 Affidavit is the proper procedural tool when the claims are identical. (i.e. same patentable invention)

false, cant use it in this situation

With the exception of fees for new national applications, fees and payments are normally required to be submitted

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

When does an abandoned US patent application become prior art?

may become prior art when it is properly incorporated by reference in the disclosure of a U.S. application publication.

a rejection under 35 USC 102 can be overcome by demonstrating A) the reference is nonanalogous art. B) the reference teaches away from the claimed invention. C) the reference disparages the claimed invention. D) all of the above E) none of the above

none of the above, when it gives a list like this it's usually listed somewhere in the mpep

What is this an example of and is it allowed- Jane has Larry, a registered practitioner in the Washington D.C. area, who is more familiar with interview practice to call the examiner. Jane gives Larry a copy of the first Office action, which suggests that the primary examiner's analysis is incorrect, and offers to explain why. Jane instructs Larry that because Larry is unfamiliar with the inventor, Larry should not agree to possible ways in which claims could be modified, or at least indicate to the examiner that Jane would have to approve of any such agreement.

not allowed this is an example of sounding out the examiner

"without adding significantly more" is taken to mean what

that the idea is directed to an additional exemption, but does not do more than simply limit the judicial exemption to a particular medium, for example the internet. You must add important limitations that are more than the abstract idea that show inventive concept.

In order to overcome an obviousness rejection, the argument must both assert that

there is no teaching, suggestion or motivation to combine the references and that the claimed invention produces some kind of unexpected results.

what does antedate mean (know this)

to come before

T or F: Defensive publications are prior art as of their filing date

very false