Key words for identifying a Markush group?
ANSWER
"consisting of" plus "AND"
example: R is an element consisting of A, B, AND C.
what cannot be filed via fax?
ANSWER
anything app or provisional app that is related to a NEW application. So CPA, RCEs, amend-
ments CAN be faxed
look for answers with CPA and RCE listed because if one is true the other will likely be true.
and if one is false, the other will likely be false
ANSWER
..
you appeal a ____ you petition a ____
ANSWER
appeal a rejection. appeals can be made against NON final rejections and final rejections
petition on objection
inventions must be the ____ when comparing foreign and US applications filed by the same
inventor for the same invention
ANSWER
EXACT same - not even a non obvious improvement can be added
1
,one cannot show nonobviousness by attacking the references individually where the rejec-
tions are based on a combination of references.
ANSWER
..
rejected based on XYZ in view of ABC means..
ANSWER
you are being rejected based on a combination of references. therefore, you cannot only ap-
peal a single reference, you would have to appeal based on all of them
is adding best mode in an amendment considered new matter?
ANSWER
YES
what is a jepson claim and what identifies prior art?
ANSWER
it has a preamble where everythign in it is admitted prior art of another. then the claims all
talk about what are the novel imrpovements to this prior art
when is request for an interview prior to the first Office action typically granted?
ANSWER
when it is a substitute or continuing application and it must be in the EXAMINER's office (not
the practitioner's office)
if there is both a rejection and objection, do you petition or appeal?
ANSWER
appeal! a petition will not be allowed.
2
,is Encouraging the client to meet with an opposing party for settlement discussions allowed?
ANSWER
YES
is investing the funds the client advanced for the practitioner legal fees (not costs and ex-
penses) in long term United States Treasury Bills in order to obtain
guaranteed protection of the principal allowed?
ANSWER
NO
is Entering into an agreement with the client to limit the amount of any damages which the
client may collect for any mistakes the practitioner may make during prosecution of the cli-
ent's patent application in exchange for prosecuting the application at a reduced fee. al-
lowed?
ANSWER
NO
is Failing to disclose controlling legal authority which is adverse to the practitioner's client's
interest when arguing the patentability of claims in a patent
application allowed?
ANSWER
NO
are application processing fees reduced with small entity status?
ANSWER
FALSE - only maintenance fees. Still must pay the same..
also to ascertain small entity status, no clear wording is required - but you must clearly indi-
cate
3
, HOWEVER, filing fees ARE reduced.
what foreign filing papers is precluded from receiving the benefit of a certificate of mailing
or transmission?
ANSWER
Certificate of Mailing procedure does not apply to papers mailed in a foreign country But
they ARE permitted by fax transmission (can combine fax and certificate of mailing from a
foreign country and it's OK). "The Certificate of Mailing procedure does not apply to papers
mailed in a foreign country
"Board affirms rejection.." - what does this usually mean next?
ANSWER
abandonment
what happens to assignment if only one of 2 inventors signs the assignment and oath, but
other named inventor does not sign anything?
ANSWER
the other inventor cannot be excluded from accessing the application because the entire as-
signment does not belong to the assignee designated by the other inventor, even though the
other inventor did not sign the oath.
also, a nonsigning inventor is entitled to inspect any papers in the application
what are the appropriate ways to respond to final rejection?
ANSWER
1. ammendment cancelling rejected claims and only pursuing allowed claims
2. notice of appeal WITH fee (note: watch out for if it says "only a notice of appeal" - can't
just file only - also need fee.
if you get a rejection that you want to overcome, you have to show proof yourself as the per-
son filing to have the rejectoin vacated and the claim allowed, and not just demand that the
4
ANSWER
"consisting of" plus "AND"
example: R is an element consisting of A, B, AND C.
what cannot be filed via fax?
ANSWER
anything app or provisional app that is related to a NEW application. So CPA, RCEs, amend-
ments CAN be faxed
look for answers with CPA and RCE listed because if one is true the other will likely be true.
and if one is false, the other will likely be false
ANSWER
..
you appeal a ____ you petition a ____
ANSWER
appeal a rejection. appeals can be made against NON final rejections and final rejections
petition on objection
inventions must be the ____ when comparing foreign and US applications filed by the same
inventor for the same invention
ANSWER
EXACT same - not even a non obvious improvement can be added
1
,one cannot show nonobviousness by attacking the references individually where the rejec-
tions are based on a combination of references.
ANSWER
..
rejected based on XYZ in view of ABC means..
ANSWER
you are being rejected based on a combination of references. therefore, you cannot only ap-
peal a single reference, you would have to appeal based on all of them
is adding best mode in an amendment considered new matter?
ANSWER
YES
what is a jepson claim and what identifies prior art?
ANSWER
it has a preamble where everythign in it is admitted prior art of another. then the claims all
talk about what are the novel imrpovements to this prior art
when is request for an interview prior to the first Office action typically granted?
ANSWER
when it is a substitute or continuing application and it must be in the EXAMINER's office (not
the practitioner's office)
if there is both a rejection and objection, do you petition or appeal?
ANSWER
appeal! a petition will not be allowed.
2
,is Encouraging the client to meet with an opposing party for settlement discussions allowed?
ANSWER
YES
is investing the funds the client advanced for the practitioner legal fees (not costs and ex-
penses) in long term United States Treasury Bills in order to obtain
guaranteed protection of the principal allowed?
ANSWER
NO
is Entering into an agreement with the client to limit the amount of any damages which the
client may collect for any mistakes the practitioner may make during prosecution of the cli-
ent's patent application in exchange for prosecuting the application at a reduced fee. al-
lowed?
ANSWER
NO
is Failing to disclose controlling legal authority which is adverse to the practitioner's client's
interest when arguing the patentability of claims in a patent
application allowed?
ANSWER
NO
are application processing fees reduced with small entity status?
ANSWER
FALSE - only maintenance fees. Still must pay the same..
also to ascertain small entity status, no clear wording is required - but you must clearly indi-
cate
3
, HOWEVER, filing fees ARE reduced.
what foreign filing papers is precluded from receiving the benefit of a certificate of mailing
or transmission?
ANSWER
Certificate of Mailing procedure does not apply to papers mailed in a foreign country But
they ARE permitted by fax transmission (can combine fax and certificate of mailing from a
foreign country and it's OK). "The Certificate of Mailing procedure does not apply to papers
mailed in a foreign country
"Board affirms rejection.." - what does this usually mean next?
ANSWER
abandonment
what happens to assignment if only one of 2 inventors signs the assignment and oath, but
other named inventor does not sign anything?
ANSWER
the other inventor cannot be excluded from accessing the application because the entire as-
signment does not belong to the assignee designated by the other inventor, even though the
other inventor did not sign the oath.
also, a nonsigning inventor is entitled to inspect any papers in the application
what are the appropriate ways to respond to final rejection?
ANSWER
1. ammendment cancelling rejected claims and only pursuing allowed claims
2. notice of appeal WITH fee (note: watch out for if it says "only a notice of appeal" - can't
just file only - also need fee.
if you get a rejection that you want to overcome, you have to show proof yourself as the per-
son filing to have the rejectoin vacated and the claim allowed, and not just demand that the
4
