Question: List two types of individuals that affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 can be made by. Answer: Affidavits or declarations filed under 37 C.F.R. 1.131 to…
Question: How can an applicant overcome a statutory double patenting rejection? Answer: A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection. A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims…
Question: Can any further submission of prior art by the same real party in interest be considered after the filing of the protest? Answer: After the filing of the protest, no further submission of prior art by the same real…
Question: When has a 35 U.S.C. 102 rejection over multiple references been held to be proper when the extra references are cited? Answer: Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a…
Question: What happens when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent? Answer: When…
Question: What are some non-limiting examples of claims that are not directed to any of the statutory categories? Answer: Non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a…
Question: When is information material to patentability according to the duty to disclose? Answer: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It…
Question: What are two of the requirements for an English language translation of a non-English language foreign application? Answer: If an English language translation of a non-English language foreign application is required: 1) the translation must be that of the…
Question: List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest. Answer: The following are examples of the kinds of information, in addition to prior art documents, which…
Question: When should relevant documentation submitted to a regulatory review body be submitted for the Office for review? Answer: Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is…
Question: Under what circumstances will the international and search fees be refunded? Answer: The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy…
Question: Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceeding? Answer: The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding…
Question: If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplemental reissue oath or declaration required? Answer: For applications filed on or after September 16, 2012, if additional…
Question: Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Center? Answer: Yes, a provisional application that is relied upon for priority in a U.S. patent and is…
Question: Does the new ground of rejection raised by the Board in an appeal reopen prosecution? Answer: The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new…
Question: Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed. Answer: An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will…
Question: What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period? Answer: The following non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period: (1) Petitioner engaged…
Question: What are the reasons for insisting upon a restriction? Answer: Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each inventionas claimed is either independent or distinct from the other(s); and…
Question: What information should also be submitted for each patent on which a maintenance fee or surcharge is paid? Answer: The following information should also be submitted for each patent on which a maintenance fee or surcharge is paid: (A)…
Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis? Answer: For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes: (i) previously…
Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending…
Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: (1) a “Sequence Listing” either as…
Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter…
Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Office? Answer: An international application designating the U.S. will enter the national stage via the U.S. Designated Office…
Question: What are the factual inquiries related to obviousness that the Court enunciates? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and…
Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include? Answer: The language “new, original and ornamental design for an article of…
Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record…
Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.63 must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or…
Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in…
Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more…
