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How about some practice questions today?

Posted by longacrepatentbarreview on September 9, 2011

1. A notice of allowance is mailed to the applicant in a non-provisional patent application on September 25, 2011. In which of the following situation would the issue not be considered to be timely filed?

(A) The issue fee is filed at the Office on Monday December 28, 2011

(B) The issue fee is filed in the Office on November 25, 2011

(C) The issue fee is mailed to the Office on Thursday, December 24, 2011 by first class mail and arrives on Monday December 28, 2011

(D) The issue fee is received by the Office on January 12, 2012, accompanied by a request for a one month extension of time and the required extension fee.

(E) The issue fee is mailed to the office with a proper certificate of mailing on December 28, 2011, and arrives at the Office one week later

2. Applicant Wilson Pickett discovered after prosecution had been closed by mailing of an ex parte Quayle action that the last page of the specification had been inadvertently omitted when the non-provisional application was filed. The application as originally filed contained a claim for the benefit of a prior filed application under 37 CFR 1.78. That prior filed application included the missing last page of the specification.

Which of the following would be the most appropriate action to take?

(A) Prepare and file an amendment submitting the missing page

(B) File a Request for Continued Examination (RCE) to reopen prosecution, accompanied by the appropriate fee and an amendment in compliance with 37 CFR 1.57(a)

(C) Telephone the examiner and ask her to amend the application by examiner’s amendment to include the missing page

(D) File a Continued Prosecution Application with the missing page

(E) File a paper asking the examiner to advise whether the missing page is necessary to satisfy the requirements of 35 USC 112.

3. To obtain the benefit of an earlier filed, copending application, the latter application must include ________________________

(A) a claim for priority

(B) a reference to the prior application in compliance with 37 CFR 1.78(a)

(C) the specification of the earlier application in its entirety

(D) no new inventors not coinventors or inventors of the earlier application

(E) claims which are supported by the disclosure of the earlier application

1. (D) is correct. The deadline to pay the issue fee is statutory, and cannot be extended. Any deadline that files on a Saturday, Sunday or holiday is automatically extended to the next day that the Office is open for business. December 25 is a holiday you should instantly recognize so the deadline is extended until Monday December 28, 2009. Certificates of mailing work for paying the issue fee so mailing the fee with a certificate on the last day is proper.

2. (B) is correct. MPEP 201.17, Example 2. An ex parte Quayle action is one that closes prosecution, but allows you to correct enumerated formal mistakes. If you want to introduce new or amended claims after an Ex Parte Quayle, you are going to have to file an RCE or continuing application

3. (B) is correct. This is a typical tricky PTO question. We can easily eliminate (E) and (C). Continuing applications can have more or less than the parent application. In that instance, priority would extend to some claims, and not to others. (D) is likewise clearly wrong. Different disclosure will often introduce or delete inventors. How about (A)? You do in fact sort of claim priority when you include that reference to the earlier application. But (B) is dead on, no doubt correct. So in choosing between the one that is sort of right and the one that is clearly right which do you pick?

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One Response to “How about some practice questions today?”

  1. That was very educational blog

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