Question: When has a 35 U.S.C. 102 rejection over multiple references been held to be proper when the extra references are cited? Answer: Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the […]

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Question: What happens when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent? Answer: When the claim for foreign priority or the certified copy of the foreign application is filed […]

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Question: What are some non-limiting examples of claims that are not directed to any of the statutory categories? Answer: Non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or […]

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Question: When is information material to patentability according to the duty to disclose? Answer: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of […]

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Question: What are two of the requirements for an English language translation of a non-English language foreign application? Answer: If an English language translation of a non-English language foreign application is required: 1) the translation must be that of the certified copy (of the foreign application as filed) and 2) it must be filed together […]

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Question: List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest. Answer: The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest: (A) Information demonstrating that the invention was publicly known […]

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Question: When should relevant documentation submitted to a regulatory review body be submitted for the Office for review? Answer: Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for […]

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Question: Under what circumstances will the international and search fees be refunded? Answer: The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau. The search fee will be refunded if the application is withdrawn […]

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Question: Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceeding? Answer: The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are: (1) A single assignee. An assignee of the entire right, title and interest in the […]

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Question: If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplemental reissue oath or declaration required? Answer: For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath […]

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