Question: Copendency is defined in the clause which requires that the later-filed application must be filed before the occurrence of what? Answer: Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the…
Question: When can claims be finally rejected in a first Office action for a new application? Answer: For a new application, claims may be finally rejected in the first Office action when: (A) the new application is a continuing application…
Question: List 3 fees that are reduced by 80 percent for micro entities. Answer: The fees which are reduced by 80 percent for micro entities include: filing fees (nonprovisional and provisional) search fees examination fees issue fees appeal fees for…
Question: List 2 situations where RCE provisions do not apply. Answer: The RCE provisions do not apply to: (A) a provisional application; (B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;…
Question: What does application information include? Answer: Application information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the…
Question: As of December 29. 2022, list 3 fees that are reduced by 60 percent for small entities? Answer: As of December 29. 2022, the following fees are reduced by 60 percent for small entities: patent application filing fees including…
Question: Give 3 examples of asexually propagated plants. Answer: Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, apomictic seeds, bulbs, division, slips,…
Question: What rule are design practitioners registered under and what can they practice in? Answer: Design patent practitioners are registered under 37 C.F.R. 11.6(d) and can only practice in design patent matters. In contrast, patent practitioners registered under 37 C.F.R.…
Question: When is a Sequence Listing XML required? Answer: When an application filed under 35 U.S.C. 111(a) having a filing date on or after July 1, 2022, or an application which entered the national stage, having an international filing date…
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…
