Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: (1) a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text […]

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Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, can the non-elected invention(s) and non-claimed, distinct subject matter be […]

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Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Office? Answer: An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via […]

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Question: What are the factual inquiries related to obviousness that the Court enunciates? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; (B) Ascertaining the differences between the claimed invention and the […]

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Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include? Answer: The language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include at least three kinds of designs: […]

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Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card, is […]

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Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.63 must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) Identify the application to which it is directed; (3) Include a […]

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Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original […]

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Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to […]

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Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” […]

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Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer: If the examiner concludes that no substantial new question of patentability has been raised, the […]

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