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…
Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, and in what respect, the reissue claims are…
Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness depend on? Answer: The relevance of long-felt need and the failure of others to the issue of obviousness depends on…
Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; and Ascertaining the differences between the claimed invention and the…
Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or…
Question: What may the grounds of refusal for a notification of refusal be based on? Answer: The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code…
Question: Name one circumstance where an applicant may make amendments. Answer: The applicant may amend: before or after the first Office action and also after the second Office actions; after final rejection, if certain criteria are met; after the date…
Question: When does jurisdiction over the proceeding pass to the Board? Answer: Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Chapter Details: The answer…
Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, the publication fee; and the processing fee. Chapter Details: The…
Question: What is one way an ex parte reexamination proceeding may be concluded? Answer: Ex parte reexamination proceedings may be concluded in one of four ways: The prosecution of the proceeding may be brought to an end, and the proceeding…
Question: Is an electronic publication considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document…
Question: List two types of government organizations that cannot qualify as a nonprofit organization. Answer: Government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations. These include: A government research facility or other government-owned corporation could not qualify. Although…
Question: Name the four conditions which, if all are present, establish a statutory bar under pre-AIA 35 U.S.C. 102(d). Answer: Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of…
Question: What are the two ways in which permission to file a patent application abroad may be obtained? Answer: The two ways in which permission to file a patent application abroad may be obtained include: either a petition for a…
Question: Who may provoke an interference? Answer: Interferences may be provoked by: an examiner an applicant Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings. The answer is…
Question: What does AIA 35 U.S.C. 102(a) state? Answer: Specifically, AIA 35 U.S.C. 102(a) states that: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use,…
Question: What are the due dates for paying the maintenance fee without a surcharge? Answer: Due dates for paying without a surcharge are as follows: 3 to 3.5 years after date of issue for first maintenance fee payment 7 to…
Question: Where must the correspondence address appear in applications filed before September 16, 2012? Answer: The correspondence address in applications filed before September 16, 2012 must appear either in an application data sheet or in a clearly identifiable manner elsewhere in…
Question: What will a Right of Appeal Notice (RAN) set forth? Answer: The RAN will identify the status of each claim. It will set forth: the grounds of rejection for all claims rejected in the RAN; the reasons why a…
Question: How can a patent owner get the Office to send correspondence to a different address for the supplemental examination proceeding? Answer: If the patent owner desires the Office to send correspondence to a different address, then a new power…
Question: Name one type of issue that may trigger a rejection. Answer: Rejections are usually made due to issues with one of the following: unpatentable subject matter or lack of utility (35 U.S.C. 101) issues with novelty (35 U.S.C. 102)…
Question: What must a party wishing to correct a typographical error on a recorded cover sheet submit? Answer: A party who wishes to correct a typographical error on a recorded cover sheet must submit the following: a copy of the…
Question: When does an item of information raise a substantial new question of patentability or SNQ? Answer: An item of information raises an SNQ where there is a substantial likelihood that a reasonable examiner would consider the item of information…
Question: When must the Demand for international preliminary examination be made? Answer: The Demand must be made prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant…
Question: List two examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality. Answer: Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking…
Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in seven ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer,…
Question: Name one mechanism in which asexually propagated plants are reproduced. 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 or inarching. Chapter…
Question: Why might the USPTO withdraw an application from issue after payment of the issue fee? Answer: The USPTO might withdraw an application from issue after payment of the issue fee due to: (1) a mistake on the part of…
