What restrictions are on USPTO officers and employees regarding patents?
They cannot, during the period of their appointments and for one year after, apply for a patent or acquire any patent right or interest directly or indirectly, except by inheritance or bequest
309
Can the duty to disclose apply to a cooperation?
No, the duty of disclosure applies only to individuals, not to organizations. However, it would apply to individuals within the corporation who were substantively involved in the preparation or prosecution.
2001.01
How can you overcome a prima facie showing of no specific and substantial credible utility?
Any combination of claim amendments, arguments or reasoning, new evidence in a 132 affidavit or declaration, or in a printed publication.
2107.02
Are examiner interview permitted off Office premises without the authority of the commissioner?
No.
713.01
Can an interview be conducted in a CPA before the first action?
Yes, the in continuations and substitute applications has been adapted to broadly apply to all continuations and substitutes.
If the form of a claim (as distinguished from its substance) is improper, should it be rejected or objected to?
Objected to.
706.01
Is an objection appealable to the Board?
No, an objections is reviewed only by way of petition to the Commissioner.
706.01
Can you convert a provisional application into a non-provisional application?
Yes, but claiming the benefit of the provisional application is less expensive and will result in a longer patent term so it’s better to do that.
601.01c
How do you claim the benefit of a provisional application or a non-provisional application?
The later filed application must contain a specific reference to the prior application For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an ADS.
211.02
Is the phrase “the outer circumference of said pipe” indefinite under 112?
No, because the outer circumference is an inherent component of an element recited, so it has antecedent basis in the recitation of the component itself.
2173.05f
Do original claims constitute their own description?
Yes. See 608.01L
If a person A learns that a patent application has been filed by a person B without naming A as coinventor, can A file a petition that protests inventorship and directs B to add A’s name as a coinventor to the patent application?
No, unless a protestor has been granted access, the protestor is not entitled to any information including the fact that the application exists. - see 1901.05
The patent application process is ex parte, and inventorship may only be contested inter partes (between opposing parties) in the USPTO through the interference process. See 1901.07.
Can you get both a design and utility patents on an article?
Yes, if the invention resides both in its utility and ornamental appearance.
1502.01
Can you file an international design application designating various countries?
Yes, under the Hague Agreement, not PCT.
Can you request a CPA on a utility application?
No, and the office will treat an improper request for a CPA as an RCE, and if the CPA does not satisfy the requirements to be a proper RCE (e.g., lacks a submission or is not accompanied by the fee) the improper CPA will be treated as an improper RCE, and the time period set in the last Office action will continue to run.
706.07(h)
When can a provisional rejection (under 1002(a)(2) or 103) be made?
If two applications have at least one common inventor or common applicant or the applications are commonly assigned, and the first application (upon publication or issuance) would qualify as prior art under 102a2.
What must an oath or declaration do?
identify the inventor or joint inventor executing the oath, identify the application to which it is directed, include a statement that the person believes the inventors to be the original inventors, and state that the application was made or authorized by the person executing the oath or declaration.
Can restriction requirements be made by telephone?
Yes, see 812.01
Can the specification include tables and chemical formulas?
Yes, 608.01
Can the specification include graphical illustrations or flowcharts?
No. 608.01
Can the specification include hyperlinks or other forms of browser-executable code embedded in the text?
No. 608.01
Where can information on examiner’s amendments after final actions be found?
706.07f
When can a protest be submitted?
Before the date the application is published or the date a notice of allowance is given/mailed, whichever occurs first.
1901.04
What information can be relied on in a protest?
Any information which would make the grant of a patent improper. This includes both prior art and things like information indicating violation of the duty of disclosure.
1901.02
