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 proposed rejection is not made for all decisions favorable to patentability as to claims that […]

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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 of attorney must be filed in the patent for which supplemental examination is requested and […]

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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) issues with obviousness (35 U.S.C. 103) lack of subject matter issues with the written description, […]

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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 originally recorded assignment document (or other document affecting title); a corrected cover sheet; and the […]

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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 important in deciding whether or not the claim is patentable unless the same question was […]

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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 of the international search report or of the declaration referred to in PCT Article 17(2)(a), […]

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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 in ornamentality would be: common knowledge in the art; the appearance of the design itself; […]

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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, reexamination, inter partes review, post grant review, and covered business method review. Chapter Details: The […]

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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 Details: The answer to this question can be found in chapter 1600 of the MPEP. […]

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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 the Office: (2) a violation of 37 CFR 1.56 or illegality in the application; (3) […]

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