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…
Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that…
Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer:…
Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative. Answer: Once the issue fee has been paid, the Office will not withdraw the application from…
Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether the same petitioner previously filed a petition directed to the same claims of the same patent; Whether at the time of filing of…
Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CFR 1.103(a) must: (A) be presented as a separate paper; (B) be accompanied by the petition fee set forth…
Question: The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of…
Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: a “Sequence Listing” either as a PDF image file, on physical sheets…
Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include one or more of the following arguments: The petitioner is statutorily barred from pursuing a review; The references asserted to…
Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium for filing IDSs are not permitted except for: IDSs electronically submitted using the USPTO patent electronic filing system;…
Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of…
Question: What must the supplemental search fee be accompanied by in addition to the payment? Answer: As shown in chapter 1800 … The supplemental search fee must be paid and be accompanied by: a protest and a request for refund…
Question: What does routine discovery include? Answer: Routine discovery includes: Production of any exhibit cited in a paper or testimony; The cross-examination of the other sides declarants; and Relevant information that is inconsistent with a position advanced during the proceeding.…
Question: What should a request for a certificate of correction filed via the patent electronic filing system use as the document description? Answer: “A request for a certificate of correction filed via the patent electronic filing system should use the…
Question: What are the major differences between 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following: 35 U.S.C. 102(c)is keyed to the effective filing date of the claimed invention, while…
