Question: What must any nonstatutory double patenting rejection made under the obviousness analysis make clear? Answer: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims —…
Question: When is a nonpublication request not appropriate? Answer: A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international agreement, that requires publication of applications at…
Question: What may an examiner do after he or she has considered the issues on appeal? Answer: After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter…
Question: Except as provided in 37 C.F.R. 11.107 (b), a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. When does a concurrent conflict of interest exist? Answer: A concurrent conflict of interest exists…
Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise,…
Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake to issue? Answer: Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may…
Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. Answer: Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a…
Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference? Answer: The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke…
Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types of concepts courts have found to be laws of nature and natural phenomena are shown by these cases, which are…
Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims…
Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall not act as advocate at a proceeding before…
Question: If a patent is assigned, will that change the “correspondence address” or “fee address” used for maintenance fee purposes? Answer: An assignment of a patent application or patent does not result in a change of the “correspondence address” or…
Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the…
Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer: A division of a fee between practitioners who are not in the same firm may be made only if: The…
Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil…
Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States…
Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that: (1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be…
Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, an assignment may contain the statements required…
Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. Answer: The factors to be considered…
Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16, 2013? Answer: No, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application…
Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of the reexamination proceeding may be brought to an end, and…
Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or…
Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual…
Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from or with competitors potential infringers third parties Chapter Details: The answer to this question can be found in chapter 2000…
Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention). Chapter Details: The…
Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected by filing a request for a Certificate of Correction…
Question: What does bibliographic data include? Answer: Bibliographic data includes: inventor information; correspondence information; application information; representative information; domestic benefit information; foreign priority information; and applicant information. Chapter Details: The answer to this question can be found in chapter 600…
Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include…
Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the information. Chapter Details: The answer to this…
Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a…
