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…
Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a…
Question: List 2 types of applications that will not be published. Answer: The Office will not publish the following applications: Provisional applications; Design applications; International design applications; and Reissue applications (because reissue applications are not kept confidential). Chapter Details: The…
Question: What are the most common types of linking claims? Answer: The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are (A) genus claims linking…
Question: List 2 non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. Answer: The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,…
Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, a change of correspondence…
re Question: List one example of what an oath or declaration must do. Answer: An oath or declaration must: identify the inventor or joint inventor executing the oath or declaration by his or her legal name; identify the application…
Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recorded in the U.S.…
Question: What is a divisional application? Answer: A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an…
Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, title and interest; or A combination…
Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and concluded that the claimed…
Question: List the 3 categories the elements of an international design application fall into. Answer: The elements of an international design application fall into the following three categories: mandatory contents which include items required in all international design applications. additional mandatory…
Question: Who has the authority to grant access to a pending or abandoned application filed on or after September 16, 2012 that is in confidence? Answer: For applications filed on or after September 16, 2012, the following individuals may provide a…
Question: List two types of filing fees that are reduced by 50% for small entities. Answer: The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee,…
Question: What are the major differences between AIA 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: the AIA provision is keyed to the effective filing date…
Question: List two pieces of information regarding the patent that should be submitted when paying the maintenance fee. Answer: The information regarding the patent that should be submitted with the maintenance fee includes: the fee year the amount of the…
Question: Under what conditions will a first application usually be granted a Notice of Allowance and become a patent in spite of a second application with potentially interfering claims? Answer: A first application will usually be granted a Notice of…
Question: What must a petition under 37 CFR 1.137 be accompanied by? Answer: Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: The reply required to the outstanding Office action or…
Question: How can a patent owner file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request? Answer: The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental…
Question: List one of the required elements of a request for ex parte reexamination. Answer: The required elements of a request for ex parte reexamination are as follows: “A statement pointing out each substantial new question of patentability based on…
