Key Words Glossary Contents

Note: This keyword glossary is meant to be a comprehensive guide to all of the terms of art that you will need in going through the course. But, if you run across a term or phrase you’re not familiar with, and it’s not defined here, feel free to check the Patent Office’s online glossary at http://www.uspto.gov/main/glossary. Access ........................................................................................................................................... 3 Allowance ..................................................................................................................................... 3 Amendment ................................................................................................................................... 4 Anticipation (102) ......................................................................................................................... 5 Appeal ........................................................................................................................................... 6 Application .................................................................................................................................... 7 Best Mode ..................................................................................................................................... 8 Certificate of Mailing/Express Mail ............................................................................................. 9 Claims ......................................................................................................................................... 10 Correction of Inventorship .......................................................................................................... 12 Correction of Patents after Issuance ........................................................................................... 12 Design Patents ............................................................................................................................. 13 Disclaimer ................................................................................................................................... 14 Double Patenting ......................................................................................................................... 15 Duty of Disclosure/IDS ............................................................................................................... 16 Ethics ........................................................................................................................................... 17 Extensions of Time ..................................................................................................................... 18 Filing Date .................................................................................................................................. 18 Final Rejections .......................................................................................................................... 19 Foreign Filing Licenses ............................................................................................................... 20 Foreign Priority ........................................................................................................................... 21 In This Country ........................................................................................................................... 22 Incomplete Application ............................................................................................................... 23 Incorporation by Reference ......................................................................................................... 23

Interference ................................................................................................................................. 24 Interviews .................................................................................................................................... 25 Inventorship ................................................................................................................................ 25 Maintenance Fees ........................................................................................................................ 26 New Matter ................................................................................................................................. 27 Oath/Declaration ......................................................................................................................... 28 Obviousness ................................................................................................................................ 28 Ownership Contrasted with Inventorship ................................................................................... 29 Patent ........................................................................................................................................... 30 Patent Cooperation Treaty .......................................................................................................... 31 Petitions to Make Special ............................................................................................................ 32 Plant Patents ................................................................................................................................ 34 Prima Facie Showing of Obviousness ........................................................................................ 35 Protest ......................................................................................................................................... 35 Provisional Application .............................................................................................................. 36 Record ......................................................................................................................................... 37 Reduction to Practice .................................................................................................................. 37 Reissue ........................................................................................................................................ 38 Rejection/Objection .................................................................................................................... 39 Reply Brief .................................................................................................................................. 40 Representation ............................................................................................................................. 40 Restriction ................................................................................................................................... 41 Revival ........................................................................................................................................ 41 Secondary Consideration ............................................................................................................ 42 Serial Number/Filing Receipt ..................................................................................................... 43 Small Entity/Large Entity ........................................................................................................... 43 Statutory Inventions Registration (SIR) ...................................................................................... 44 Substitute/Continuing ................................................................................................................. 44 Swearing Back ............................................................................................................................ 45 Withdrawal .................................................................................................................................. 46 This keyword glossary is meant to be a comprehensive guide to all of the terms of art that you will need in going through the course. But, if you run across a term or phrase you’re not familiar with, and it’s not defined here, feel free to check the Patent Office’s online glossary at http://www.uspto.gov/main/glossary.

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ACCESS Definition The general rule is that unpublished applications are maintained in confidence. Unrestricted access to unpublished pending applications is limited to the applicant, the attorney of record, the assignee of record (and not the licensee), and anyone who has written authorization from one of these. After a patent has issued, or an application has published, anyone can inspect and copy it. However, access to unpublished pending and unpublished abandoned applications is for the most part limited to applications that are referred to in the text of an issued U.S. patent, or that are claimed for domestic priority, and thus access is necessary to determine the status of that issued patent. The application files for reissues and reexaminations are public, as are the file of an interference between a patent and an application, after the interference has ended. The assignment records for applications are subject to the same access rules as the applications assigned. MPEP cites -101-106 Rule 1.11 and 1.14.

COMMENTS: The Patent Office emphasizes the importance of confidentiality, and quite naturally this leads to a question on most exams.

ALLOWANCE Definition

Once an Examiner is satisfied that the statutory and Patent Office requirements have been satisfied the applicant is sent a Notice of Allowance, which sets a three-month period for payment of the Issue Fee. The three-month period for payment cannot be extended but the Issue Fee can be accepted late Rule 1.137 if the failure to pay timely was unintentional or unavoidable. Corrected drawings are typically due and required at the same time the Issue Fee is due. The Examiner has the power at the time of allowance to cancel claims to nonelected inventions, claims lost in interference, and rejected claims following an appeal. The Examiner can, if he or she wishes, provide written Reasons for Allowance. The applicant may respond to those reasons, but there is no requirement to do so. Applications may be withdrawn from issue prior to payment of the Issue Fee by petition of the applicant upon a showing of good and sufficient reasons and, of course, the fee. Alternatively a continuing application can be filed before the Issue Fee is due and the parent application abandoned either expressly or by failure to pay the Issue Fee.

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After an Issue Fee is paid, applications may be withdrawn by the Patent Office for:

1. a mistake on the part of the office;

2. a violation of the duty to disclose;

3. unpatentability of one or more claims;

4. interference; or

by the applicant for:

1. abandonment to consider an IDS in a continuing application, or

2. unpatentability of a claim.

A petition to defer issuance will not be accepted until after the Issue Fee has been paid. If submitted after that time, the issue date will be deferred up to one month for extraordinary circumstances, which do not include time for filing in foreign countries, time for preparing a CIP, or time to negotiate licenses. Requests for simultaneous issue of related applications, which are both allowed, are normally granted. MPEP cite-1300; Rule 1.137

EXAMPLE: After the Notice of Allowance has been received and the Issue Fee paid, prior art comes to light that could not have been discovered earlier and that the applicant wishes the Examiner to consider. An IDS will not now be considered in this application. Instead, a petition to withdraw the application from issue and abandon it in favor of a continuing application should be filed and an IDS filed in the continuing application.

AMENDMENT Definition

An amendment is any change that is made in the specification, claims, or drawings after, or at the same time, the application is filed.

A Preliminary Amendment is one made after or at the time of filing, but before an action is issued. Amendments can be made in response to an Official Action or, if no changes are made in the specification, claims, or drawings, the response to an Action may be a Request for Reconsideration. Amendments and briefs cannot be amended, but any portion of an application which has been changed by an amendment can be changed by a subsequent amendment. An application cannot be amended before it is filed or after it is abandoned, but a Preliminary Amendment may be filed with an application. A petition to revive an abandoned application that had an outstanding Official Action pending at the time it was abandoned must be accompanied by either an amendment or a request for reconsideration, or a filing of a continuation under Rule 1.53(b) or 1.53(d) (if eligible) or the filing of an RCE (37 CFR 1.114).

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NOTE: Oaths must be supplemented or replaced; they cannot be amended. Amendments after a Final Rejection may be entered, which means that the Patent Office henceforth will act on the basis that the amendments are part of the application, or refused entry, in which instance the Patent Office will proceed to appeal on the assumption that they never existed. Amendments sought after Final Rejection and after allowance are subject to special rules. Amendment format is set forth in 37 CFR 1.121. MPEP cite-714

COMMENTS: Questions involving an amendment are a certainty. In particular, you must know the rules for amending claims and the rules for amendment after final rejection, after allowance, and on appeal. Knowing that a Petition to Revive an unintentionally or unavoidably abandoned application must be accompanied by a response to any action which was outstanding at the time of abandonment, or a continuation, will get you an easy two points. Knowing an intentionally abandoned application cannot be revived is likely worth two more.

ANTICIPATION (102) Pre- and Post- America Invents Act (“AIA”) Definition

35 USC 102 sets forth some circumstances where a patent cannot be obtained. Those circumstances are called anticipation and include events and acts like:

1. a prior publication; 2. a prior patent; 3. an abandonment of the invention; 4. a prior sale or offer for sale; 5. a prior use; 6. prior public and general knowledge; or 7. a prior invention. These circumstances are collectively referred to as “prior art.”

Under Pre-AIA, some of these prior acts must have occurred before the invention was made

(102(a), 102(e), 102(f), and 102(g)); others count as prior art if they took place before the application was filed (102(d)) or more than a year before the application was filed (102(b)).

Under Post-AIA, a similar, less complex analysis is made, but the key focus is on the filing

date only! Much simpler to understand and apply.

Analysis under 102 is further complicated because some acts (public knowledge, use, sale or offer for sale, and prior invention) under the pre-AIA 102 don't count unless they occurred in the United States, while others (publication and prior patents) can take place anywhere in the world.

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Happily, under post-AIA 102, there are no geographic limitations. The same analysis is applied worldwide.

If a fact pattern presented as an exam question does not satisfy at least one of the listed circumstances under old or new 102, then it is not prior art. Just because something existed in the past does not mean it is prior art against which a later invention must be measured. If it is not prior art then it cannot be used to determine directly whether an invention is patentable.

If something is prior art and it also is the same as a claimed invention (it has all the elements and limitations of a given claim) then that piece of prior art is an anticipation. The existence of an anticipation precludes issuance of a patent. MPEP cite-2131

COMMENTS: No one can possibly remember all of the possible combinations that can be made under these seven sections, and you should not rely on your memory. Rather know how to find 35 USC 102 in the MPEP quickly and rely on that plus your scratch paper to work through the question. Note: Through the course, you will develop a thorough understanding of old and new 102!

APPEAL Definition

Second actions or Final Rejections can be appealed to the Board of Patent Appeals and Interferences. The appeal begins by filing a Notice of Appeal, of course paying the fee, either before or after a response to the Final Rejection is filed. Extensions of time may have to be bought to keep the application alive until the date that the Notice of Appeal is filed. Within two months or an extension thereof from the date that the Notice of Appeal is received at the Patent Office, which may be different from the date of filing if filing is accomplished using the Certificate of Mailing procedure, the applicant must file an Appeal Brief.

The Examiner will respond with an Examiner's Answer, which may include new grounds of rejection. A Reply Brief may be filed by the appellant. An oral hearing may be requested within two months after the date the Examiner's Answer is sent, and the usual fee paid.

An applicant can, during the time the appeal is pending, present only very limited amendments and evidence.

The appellant may at any time withdraw the appeal but unless there are claims allowed such withdrawal results in abandonment of the application.

The Board may affirm the Examiner in whole or part, or reverse the Examiner, sometimes setting forth a new ground of rejection. The new ground of rejection is binding upon the

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Examiner unless an amendment or showing of facts not previously of record overcomes the rejection in the opinion of the Examiner.

If the Board makes a new rejection the applicant has two options:

1. submit an amendment or showing of facts and have the matter reconsidered by the Examiner within the period set by the Board in its decision; or

2. ask for reconsideration by the Board of the Board's decision.

An applicant dissatisfied with the decision of the Board may seek review by the Court of Appeals for the Federal Circuit (CAFC) or the U.S. District Court for the Eastern District of Virginia, as he or she may elect. If no appeal is taken from a decision of the Board, the file is returned to the Examiner. If no claims are allowed, the application will become abandoned as of the date an appeal to the CAFC or district court should have been lodged. If claims are allowed and the appeal is unsuccessful, withdrawn, lost, or dismissed for failure to file an Appeal Brief, the Examiner will cancel the rejected claims and issue a notice of allowance. Appeals to the CAFC or the district court are not within the Patent Office and hence are not tested. MPEP cite-1200

COMMENTS: The intricacies of appeal are a favorite topic.

APPLICATION Definition

A patent application is the set of papers that is examined by the Patent Office during its pendency, and that becomes either abandoned or issued as a patent. The applicants are the inventor or inventors, and they own the application until such time as they may assign their ownership in whole or part to another person or entity that can hold title to property, such as a corporation, partnership, trust, or the like. If they have assigned the application, the owners may apply as the “applicant.”

Applications come in the following varieties:

1. Standard A standard application (utility, design or plant) is not related to another application and not identified as a provisional application.

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2. Continuation A continuation is the second, third, etc. application by the same applicant for the same invention claimed in a prior, nonprovisional application, and filed before the original (parent) becomes abandoned or is patented (co-pending). A continuation is typically filed to restart prosecution after a final rejection rather than appeal. A continuation can be filed under either rule 1.53(b) or rule 1.53(d) (if eligible as a design application).

3. Continuation-in-Part A continuation-in-part (CIP) is also the second application by the

same applicant for the same invention claimed in a prior, nonprovisional application, and filed before the original (parent) becomes abandoned or is patented (co-pending). In addition, a CIP repeats some substantial portion of all of the earlier applications and adds matter not disclosed in the earlier applications (New Matter). A CIP cannot be filed under Rule 1.53(d). This is the only type of application which is related to another application that contains new matter.

4. Substitute A substitute is the same application by the same applicants which was not co-pending and hence does not obtain the benefit of the earlier application's filing date.

5. Divisional A divisional is a later application for a distinct and independent invention carved out of a pending application, and claiming only subject matter disclosed in the earlier, parent application.

6. Provisional Application A provisional application is filed to establish an early filing date and has neither claims (optional) nor an oath. It automatically becomes abandoned one year after filing and cannot be examined. Provisional applications must be identified as provisional applications when they are filed. MPEP cites-201.04(b), 201.06, 201.07, 201.08, 201.09

COMMENTS: Knowing the distinctions between these kinds of applications and their idiosyncrasies are worth more than a few points.

BEST MODE Definition

The best mode requirement is the third requirement of 112, first paragraph, and requires the inventor to set forth the best mode known to him or her at the time of filing of carrying out the invention. The test is subjective; if the inventor knew of a better mode but stupidly failed to understand that it was a better mode, he or she has not violated the requirement. Similarly, if an inventor becomes aware of a better mode after his or her U.S. application has been filed, he or she has no duty to file another application. Neither can the application be amended to include the best mode because that would be new matter, and new matter can never, never, never be added to a patent application, and keep an earlier filing date. Neither is there any requirement that the best mode be designated as such; it is sufficient that it be present.

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The best mode is the one known at the time of the U.S. filing. However, if an inventor discovers a best mode between the time that an application is filed in another country and the time that a corresponding application is filed in the U.S., your MPEP says that the U.S. application can still have the same disclosure as the foreign application. MPEP cites -608.01 (h), 2165 to 2165.03

COMMENTS: This "best mode" concept is no more difficult than it appears. The inventor simply has to tell everything about his or her invention in the application, including the best way (mode) to carry out the invention, known to the inventor. That's it.

CERTIFICATE OF MAILING/EXPRESS MAIL Definition

Papers can be filed in the PTO by either arranging to have them delivered by someone to the PTO in person, or electronically by using the Electronic Filing System (“EFS-Web”), or by mailing them to the U.S. Patent and Trademark Office.

If the papers are delivered by the Postal Service then the PTO will accept as the filing date the date the paper is deposited into a mail box or otherwise given to the Post Office, provided that a Certificate of Mailing is provided with or on the papers. Absent a certificate the papers are given as a filing date the date they are actually received by the PTO. For example:

I hereby certify that this correspondence is being deposited with the U.S. Postal Service as First Class mail in an envelope addressed to: The Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

John M. White Registration No. 32,634

_____________________ Date:________________

_

A Certificate of Mailing can be used for any paper filed in the PTO except the following:

new patent applications; papers filed in an interference which are directed to be filed by hand; agreements settling an interference; and any PCT papers.

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Express mail procedures can be used for filing any paper; Certificate of Mailing procedures

are effective for all those except as noted above. MPEP cites-502, 512, and 513

COMMENTS: One or more questions on when these procedures can be used is a staple.

CLAIMS Definition To get a filing date every patent application must have at least one claim that asserts an invention. The claims may be directed to an apparatus, a method, or a composition. After filing, a claim may be amended. Rather than be amended, a claim can be canceled and replaced by a new renumbered claim having the desired wording and limitations. Claims are either independent, in which case they refer to no other claims and set forth all the limitations and elements of the invention, or dependent, in which case they refer to another claim and incorporate by that reference all the limitations and elements of the claims from which they depend. Multiple dependent claims depend from more than one claim, and follow these rules: 1. A multiple dependent claim cannot depend from another multiple dependent claim. If it does it is improper and is counted in calculating fees as a single dependent claim. 2. A multiple dependent claim can depend from more than one previous claim in the “alternative” form only ("and" is forbidden; "or" is permitted). 3. In calculating the number of claims for calculating fees, each proper multiple dependent claim counts as the number of claims from which it depends, and each improper dependent claim counts as one claim. MPEP cites -608.01 (i), 608.01 (k), 608.01 (n) EXAMPLE: An application is filed with one independent claim and five dependent claims. Claim 1 is independent and claim 2 depends from claim 1. Claim 3 depends from claim 1 or 2. Claim 4 depends from claim 3. Claim 5 depends from claim 1 and 2. Claim 6 depends from claims 1, 2, or 3. Claim 2 is a proper dependent claim. Claim 3 is a proper multiple dependent claim and counts for two claims. Claims 5 and 6 are improper because 6 depends from another multiple dependent claim and 5 uses “and” instead of “or”. Claims 3 and 4 each count for two dependent claims whereas claims 5 and 6 count for one because they are improper. The total number of claims for fee purposes is thus eight.

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COMMENTS: Questions on multiple dependent claims and how to calculate the fee for such claims have been a fashion for some years on the exam. If you understand the above example you should get any question correct.

Definition

112(f) allows claims to be written with a "means plus function." MPEP cite-2181 1. An apparatus for popping popcorn comprising:

a container for containing the corn to be popped with a removable lid;

means within said container for stirring the corn during popping; and

means for applying heat uniformly to the exterior surface of said container to cause the

corn to pop.

The "means" elements are each defined as covering the corresponding element or elements in the specification and its equivalent. Two of the three elements that make up the combination of the claim have been claimed as a "means plus function." The phrase “means” must be present for this section of the statute to apply. If it is not present, it must be explained by the applicant as meaning the same as if it was present. In addition, the applicant may be required to point out the structure in the specification which corresponds to the “means” in the claim. MPEP cite -2129 A Jepson claim is a claim in which the old is set forth in a preamble separated from a recitation of what is new by a clause such as "the improvement comprising." 1. In an apparatus for popping popcorn having a container for containing the corn to be popped with a removable lid, means within said container for stirring the corn during popping, and means for applying heat to the exterior surface of said container to cause the corn to pop, the improvement comprising means for applying heat uniformly to the exterior of the container. Markush groups are used in claims to form a genus where there is no existing classification that creates one. For example, "an element chosen from the group consisting of copper, iron, and silicon." All members of a Markush group must have a common property upon which the claim relies. Consisting and comprising are the two expressions used to define whether a combination of elements is open ended (comprising) or closed (consisting). Comprising means "at least each and every one of the following"; consisting means "each and every one of the following and no more."

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CORRECTION OF INVENTORSHIP Definition

The Patent Office can change the inventorship (the exact combination of individuals listed as inventors) by adding or subtracting inventors either for an issued patent or a pending application. The need to change may arise because an inventor's contribution is no longer being claimed in any claim or was added to a claim for the first time, or because an error was made without deceptive intent at the time the application was executed. An inventor need make a contribution to but one claim to be listed as an inventor so canceling that claim will require the inventorship be changed. When the inventorship as set forth in the oath or declaration is wrong, correction can be done by filing a signed Application Data Sheet listing the new inventors, along with a new oath from each inventor not previously listed, along with a fee. If the application has been filed by owners or others of sufficient proprietary interest using a substitute statement, new substitute statements will be necessary on behalf of those newly listed. See 37 CFR 1.48. MPEP cite-201.03; Rule 1.48.

COMMENTS: Inventorship correction is a likely question.

NOTE: Inventorship can be corrected by the Patent Office even after issue.

CORRECTION OF PATENTS AFTER ISSUANCE Definition

After issuance patents can be corrected by the Patent Office in a number of different ways.

Certificate of Correction: Mistakes of a clerical or typographical nature, whether by the Patent Office or the applicant, can be corrected by a Certificate of Correction. If the mistake is that of the Patent Office the certificate is free. Substantive mistakes cannot be corrected by a Certificate of Correction. (See 37 CFR 1.322 – 1.323)

Reissue: Whenever a patent is deemed wholly or partly inoperative or invalid, the patent owner may seek to have it reissued. The typical grounds are that the claims are too broad or too narrow, that the disclosure contains inaccuracies, that the applicant failed to make a proper claim for foreign priority, or that the applicant failed to make the proper reference to co-pending applications required for domestic priority. A patent that is invalid as not enabling or that does not disclose the best mode cannot be corrected by a reissue. Similarly, subject matter that was deliberately given up during the prosecution of the parent cannot be recovered by reissue. Only the patent owner, not a

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third party, can seek a reissue. If the reissue seeks broader claims, it must be filed within two years of the issue date of the patent.

Reexamination: Anyone, including the patent owner, can seek a reexamination to have a patent reviewed on the basis of a substantial new question of patentability raised by a prior patent or publication. New claims, but not broader claims, can be sought in a reexamination.

Disclaimer: A patent owner may disclaim (give up) any claim that is discovered to be invalid, and the remainder of the claims then remain valid. A disclaimer must be in writing and recorded in the Patent Office.

Inventorship: A patent owner who discovers the inventorship of an issued patent is in error and that the error occurred without deceptive intent can have the Patent Office correct the inventorship by a certificate. (See 37 CFR 1.324) MPEP cite -1400

COMMENTS: The correction procedures are straightforward and always a source of questions.

DESIGN PATENTS Definition

A utility patent covers the way something works, a design patent protects the exterior appearance and can overlap copyright and trademark protection. All design patents have a "D" before the number. EXAMPLE: D435,037 is a design patent; 5,476,264 is a utility patent.

Since design patents cover the appearance, the drawings constitute the disclosure. In addition to

a brief description of the figures, design patents contain only one claim in the form of: The ornamental design for (the article as specified in the Title) as shown, or as shown and described. MPEP cite-1500

COMMENTS: A simple question on design patent usually shows up, typically based on the few differences between design and utility patents.

NOTE: Design patents are subject to all the same rules and requirements applicable to “regular” patents, except as follows.

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DESIGN UTILITY Term is 14 years from grant. Term is 20 years from earliest effective filing

date. No maintenance fees. Maintenance fees at 3 ½ , 7 ½ and 11 ½ years. Only a single formal claim. As many claims as necessary. No PCT possibility. Can be filed under PCT. Six months for foreign priority . One year for foreign priority. No Provisional application. Provisional. Designs have a special expedited treatment procedure available for: a large fee, formal drawings submitted, the results of a prior search, an indication of the field of search, and an IDS submitted based on the search.

DISCLAIMER Definition

A disclaimer is a renunciation or giving up of one or more claims in a patent. If a patent has one or more claims that are invalid without deceptive intent, then those claims, upon payment of a fee, may be disclaimed without the remaining claims being invalid. All disclaimers must be in writing and recorded in the Patent Office.

A terminal disclaimer is a special kind of disclaimer under which the terminal portion of any patent, but not individual claims of a patent, may be given up. For example, if a patent is issued in 1996 and expires in 2005, then a terminal disclaimer could give up that portion of the patent beyond July 4, 1999, or any other date. Terminal disclaimers are used to overcome obviousness type, double-patenting rejections.

A disclaimer of the subject matter of a claim can also arise from the conduct of the applicant, for example from a failure:

1. to make claims suggested for an interference or to copy a claim for the purposes of an interference; and

2. to respond to a rejection, or appeal a rejection of a claim copied for an interference.

MPEP cites - 1490, 706.03(u) NOTE: Only claims in a patent can be disclaimed, claims in an application are canceled.

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DOUBLE PATENTING Definition

Double patenting rejections are based upon the common sense rule that an inventor or set of inventors are entitled to only one U.S. patent on their invention. When another pending application, or another patent, claims the same invention or the claims being rejected are obvious in view of that other patent or application, then a double patenting rejection is proper. The rejection is broader than that simple common sense rule because double patenting rejections are also proper if the inventors are not the same but the other patent or application also has the same ownership or if the other patent or application has one inventor in common. Double patenting rejections are of two typesobviousness and same invention (anticipation). For a same invention type rejection, the claim being rejected is of the same scope as a claim in the other patent. A same type rejection based upon a previous patent cannot be overcome. Obviousness type rejections can be overcome by filing a terminal disclaimer. A terminal disclaimer is a giving up of that part of the patent term, which extends beyond the expiration date of the other patent or application. The terminal disclaimer must also provide that the patent will immediately expire if it ceases to be commonly owned with the other patent. EXAMPLE: Claim 1 of pending application 123,456 filed in the name of inventors Smith and Jones is properly rejected on same invention type double patenting based upon an issued patent to Jones. The rejection cannot be overcome even by the disclaimer of the issued patent.

EXAMPLE: Claim 1 of pending application 123,456 filed in the name of inventors Smith and Jones is properly rejected on an obviousness type double patenting based upon an issued patent to Jones. The rejection can be overcome by filing a terminal disclaimer providing that the patent to issue from the pending application 123,456 will expire on the same day as the issued patent and that the patent will no longer be enforceable if the patents are ever not commonly owned.

MPEP cite-804

COMMENTS: Double patenting is trying to claim the same invention or an obvious variant in two separate applications. A question will likely require you to know that where the inventions are the same, the rejection can be overcome only by canceling the claim or claims from one application. Where they are an obvious variant and the two applications are commonly owned, the rejection can be overcome by filing a terminal disclaimer so that the two patents expire at the same time and expire if they ever cease being commonly owned.

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DUTY OF DISCLOSURE/IDS Definition

"Each person associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability...." So says Rule 56, the basic rule governing what must be disclosed to the Patent Office and how. Information is material if it alone or in combination makes for a good rejection, or is inconsistent with or contrary to an argument or position taken in the Patent Office. Information Disclosure Statements (IDS) are the preferred way to disclose possibly material information to the Patent Office. In order to be considered by the Office, and thus for the duty of disclosure to be discharged, an IDS must be timely filed and have certain minimum content. An IDS is timely filed within three months of filing or before the first action. If filed after the first action, but before the Final Rejection, the IDS must be accompanied by either a fee or a statement. The statement must indicate that nothing being cited originated from a foreign action mailed more than three months ago, and nothing was known to anyone having a duty of disclosure for a period of more than three months. If filed after allowance or Final Action, an IDS requires the same statement and a special processing fee. An IDS is not permitted in a provisional application. No extensions of time for IDSs are allowed and they cannot be filed after issue fee has been paid. MPEP cites-609, 2000

COMMENTS: The duty of disclosure is a fertile area for questions and the basic rules should be memorized. In particular memorize the requirements for filing IDSs within three months from the application filing, after this but before final, and after final or a Notice of Allowance.

NOTE: The duty extends not only to the attorney and the inventor but everyone else associated with prosecution. This, for example, might include the owner of the patent or an expert retained to do research in conjunction with responding to an official action. NOTE: Information required to be disclosed extends to all 102 acts, not just patents and printed publications.

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ETHICS Definition

A registered agent or attorney who violates the canons and disciplinary rules of the Patent Office may be disciplined by the Patent Office. Basically the Rules boil down to two principles:

1. Don't lie, cheat, or steal. 2. Don't take on any work you don't feel competent to handle and do the best you can for your client within the Patent Office rules.

Dividing fees with another practitioner who is not a partner or associate is forbidden unless

there is full disclosure to the client, the total fee is reasonable, and the division is in proportion to the services performed by each.

Once an attorney/client relationship is formed, the attorney or agent must maintain confidentiality of any information disclosed. Information disclosed without such a relationship may be disclosed and under some circumstances there may be an obligation to disclose.

An agent or attorney may not acquire an interest in a litigation or proceeding, but may

contract for a reasonable contingent fee, or take an interest in a patent or application as part of the fee.

Other facts tested include:

1. each practitioner possessing unprivileged knowledge of a violation of a disciplinary rule must report that violation to the Patent Office;

2. registered agents and attorneys may advertise but the advertising must include the name of the agent or attorney; and

3. a separate bank account for funds belonging in whole or part to a client must be maintained. Commingling client funds with the agent's or attorney's personal funds is forbidden.

Patent Office Rules Parts 10 and 11 (back of MPEP) and particularly 11.18(b). COMMENTS: Two or three questions on ethics will be included. The answers will be obvious once the issues are separated from the surrounding circumstances, which often suggest that an unethical course of action is the more reasonable one.

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EXTENSIONS OF TIME Definition

Two distinct procedures exist for extending due dates—automatic extensions (Rule 136(a)) and extensions for cause (Rule 136(b)). Resort can be had to extensions for cause only if an automatic extension is unavailable. The basic rules are: 1. Automatic extensions are available for one month, two months, three months, four months and five months. A total automatic extension greater than five months is not possible. 2. The six-month statutory time limit requirement for all responses to Official Actions cannot be extended. A response to every Official Action must be filed within six months to avoid abandonment. The six month rule does not apply to appeal deadlines, such as for filing appeal briefs. 3. Extensions of time are frequently necessary to make an application which is to be abandoned co-pending with its continuation or division to maintain the effective filing date. MPEP cite-710.02(e); Rule 1.136

NOTE: Due dates for IDSs cannot be extended. Any due date set by statute, such as the six-month absolute deadline for replying to Official Actions or the date for paying the Issue Fee, cannot be extended. The Issue Fee can, by statute, be paid late upon a proper showing, but it cannot be extended.

COMMENTS: Nothing is more important to the average patent attorney than extensions and nothing is tested more. Know the rules inside and outside and easy points will follow. This is not material to look up but to have absolutely cold.

FILING DATE Definition

Every application has a filing date, which is the date that application was actually filed, and an effective filing date, which may be the same or may be different. If an application is entitled to domestic priority (35 USC § 120) because it is a proper continuation, continuation-in-part, or a divisional application of one or more parent applications, then the effective filing date is the earlier date the parent was filed. The determination is on a claim by claim basis so different claims can have different effective filing dates. MPEP cites-201.11 (Generally on application continuity), 706.02 (Filing date sets availability of prior art), 708 (Filing dates effect order of examination by PTO)

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EXAMPLE: An application is a proper continuation of a parent filed in 2003, which is in turn a proper continuation-in-part of an application filed in 2000. Claim 1 is supported by the disclosure of the 2000 application and claim 2 is supported only by the disclosure of the 2003 application. The effective filing date of claim 1 is 2000, and the effective filing date of claim 2 is 2003. Each claim in an application is entitled to the filing date of the earliest parent application that supports it.

Note: Any break in the chain of co-pendency precludes an earlier effective filing date. EXAMPLE: An application is a proper continuation-in-part of an application filed in 2003. It purports to also be a continuation-in-part of an application filed in 2000. However, the 2000 application was in fact abandoned a month before the 2003 application was filed because a two-month extension of time was required and only a one-month extension was obtained. The earliest effective date any claim can have is 2003.

NOTE: Domestic priority (continuations, continuations-in-part, and divisions) moves back the date both for determining whether something else is prior art and also the date that the application has for itself to qualify as prior art under . Foreign priority moves back the date for determining whether something else is prior art, i.e., it is used to fend off prior art. It can, also, however become prior art under new 102 if a US application eventually publishes or a US patent issues.

COMMENTS: The exam will have questions which require determining the effective date both as prior art and whether something else is prior art. Memorize and understand. You will see the word "proper" early and often on the exam. It always means that the paper has everything that is necessary, and if you answer based upon an opposite assumption, you will not get any points.

FINAL REJECTIONS Definition Any second or subsequent rejection by an Examiner can be made final, limiting the applicant's response. A second action can always be made final even though a new rejection is advanced by the Examiner, provided that the new rejection was necessitated by some action of the applicant such as amending the claims. The period for response set by a Final Rejection can be met by either putting the application in condition for allowance or filing a Notice of Appeal. A response that does not place the application in condition for allowance does not end the requirement to respond, nor does an Advisory Action indicating the status of the claims. As an alternative to responding, a continuation can be filed and the parent abandoned.

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As of June 8, 1995, for applications that have been pending more than two years before that date, an applicant may submit a response to a final rejection as a matter of right upon payment of a fee (37 CFR 1.129). After Final Rejection amendments may cancel claims or comply with requirements as to form. Amendments presenting claims in better form for appeal or consideration may also be admitted. Amendments that are refused entry are maintained in the file but are not considered in any subsequent proceedings, including appeal. MPEP cites -706.07, 714.12 NOTE: There is no right to an interview after final. NOTE: Any second or Final Rejection can be appealed, but no first action can be appealed, except in a continuation application. In such a circumstance, if the rejection is the same as made in the parent, the first action can be made final and can then be appealed.

Comments: Knowing the rules about what you can do after final is absolutely required. Parts are tricky and non-intuitive so careful study and memorization is the plan.

FOREIGN FILING LICENSES Definition

If an invention is made in the United States, a Foreign Filing License is required before an application covering that invention can be filed in another country, no matter whether the technology has any conceivable relation to national security. Every application includes an implicit request for a foreign filing license. A Foreign Filing License can be acquired in one of three ways: 1. passage of six months following the filing of the application including a provisional application; 2. by being granted on the filing receipt; or 3. by the granting of a petition asking for one. If the invention is made in another country, even by an American, no Foreign Filing License is required. A Foreign Filing License can be obtained retroactively by a petition with the facts showing that the illegal filing was not intentionally made without a foreign filing license, i.e., the

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requirement for a license was known, but ignored. If a Foreign Filing License is not obtained and a U.S. application issues as a patent, then that patent is invalid. MPEP cite-140

COMMENTS: The Exam has almost always included a question on Foreign Filing Licenses. Look for any fact pattern that includes a desire or act of filing a patent application in a foreign country and you will likely have found a question on Foreign Filing Licenses.

FOREIGN PRIORITY Definition Several international treaties provide an applicant who files applications on a given invention the benefit of the first filing date in a foreign country which is signatory to the treaty if the second filings are within a year of the first. The first application must be enabling, and a claim for priority must be made in the second application. The benefit of foreign priority is that it moves back the date a reference or act by another must have to be prior art. It does not alter the requirement of 102 that an applicant file in the United States within one year of the first use, publication, or offer for sale (i.e., disclosure). MPEP cite-201.13 EXAMPLE: Abba Company, located in Amsterdam, files an application first in the Netherlands in 2004, and then files an application in the European Patent Office in 2005 and in the United States in 2006. Abba can claim no priority because the filing in Holland was more than a year ago and the filing in the EPO was not the first filing.

EXAMPLE: Takai Corporation files an application in Japan and nine months later files an application covering and disclosing the same invention in the United States. The Examiner rejects the claims under 102 citing a publication of a third party which occurred between the time of the Japanese filing and the U.S. filing. The publication can be removed as prior art upon a proper claim of priority. While a translation is not required to claim priority, it is required to remove a reference as prior art.

EXAMPLE: Oleg Osshinsky filed an application in Poland in 2004 and then filed an application in the United States within one year thereafter, properly claiming foreign priority. The patent issued in 2006. Its effective date as far as being prior art under pre-AIA 102(e) is the U.S. filing date, not the date of filing in Poland.

EXAMPLE: Nancy Draw filed an application in the United States which was replaced by a proper continuation which was in turn followed by a proper divisional which issued. The date of the patent as a prior art reference under 102(e) is the filing date of the first U.S. application. The effective filing date of the divisional is the U.S. filing date of that first application.

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COMMENTS: Confusing as they are, the different effects of domestic priority under 35 USC § 120 and foreign priority under 35 USC § 119 have tripped up many an exam taker. Favorite tricks are that an application can be reissued to properly claim foreign priority, and that a translation is only required to remove an intervening reference.

IN THIS COUNTRY Definition

The location of an act in the United States or elsewhere is significant in several situations. First, to be prior art under pre-AIA 102(g), an invention must be made in this country (USA).

However, an applicant for a patent can now establish a date of invention by acts in a NAFTA country (Canada or Mexico) after December 8, 1993, or in a WTO country after January 1, 1996. The purpose of this date is to establish the applicant's own right to a patent and does not move back the date of the applicant's invention as prior art to others under 102(g) except in an interference proceeding.

Similarly, as to prior art under pre-AIA 102(b), prior sales or public uses must be in this country (USA). To be prior art under pre-AIA 102(a) the use or knowledge must be in this country. But, for post-AIA 102, acts and publications worldwide count as prior art.

Inventions made in the United States, whether by Americans or others, must be granted a Foreign Filing License before a patent application can be filed in any other country. MPEP cite-2138.02 EXAMPLE: Mary Brit makes an invention in the U.K. on January 2, 1996, and reduces it to practice on the same day. She files a U.S. application on June 1, 1996. John Roe makes the same invention and reduces it to practice on May 1, 1996. Mary Brit will prevail in an interference under 102(g).

EXAMPLE: Mary Brit makes an invention and reduces it to practice in the U.K. on January 2, 1996. John Bull makes an improvement on Mary's invention on February 3, 1996 without knowing of her invention in the U.K. Bull files an application in the United States on March 3 and Mary Brit files her application on April 3. Mary's prior invention is not prior art to Bull's application under 102(g) even though her invention was made in a WTO country post 1/1/96 because an interference has not been declared.

COMMENTS: Foreign Filing License questions are a part of every Exam. Questions that refer to an invention or acts outside the United States sometime depend for their answer on these facts and sometimes these facts are red herrings.

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INCOMPLETE APPLICATION Definition

An incomplete application is a nonprovisional application that is too informal to be given a filing date. When the incompleteness is corrected the filing date is awarded. To be complete (and get a filing date) the papers submitted must include:

1. a specification containing a description; 2. at least one claim, and; 3. any required drawings.

The filing fee, a translation into English and the oath or declaration or substitute statement can be submitted later together with the required fee for doing so MPEP cites-506, 608.01

COMMENTS: An exam without a question of what is required for an application to be complete and what you do when an application is filed with missing pages or a missing drawing would be a rarity. To make the game interesting the exam usually concocts a complex fact pattern and words the question to lead the inattentive astray.

INCORPORATION BY REFERENCE Definition

An application may incorporate "essential" material by reference to (1) an issued U.S. patent, or (2) a U.S. patent application publication. Essential material cannot be incorporated from (1) a foreign patent or application; (2) a non-patent publication; or (3) a U.S. patent that itself incorporates by reference the essential material from another patent.

Nonessential subject matter, typically background material, may be incorporated from publications or foreign patents.

Material is essential if it is necessary to comply with statutory requirements of disclosure; it is nonessential if it is not so required.

Only specific wording indicating a clear intent to incorporate will work, i.e. “incorporate by reference.” EXAMPLE: The details of the plunger valve are set forth in column 3, lines 42-54 of U.S. Patent 4,276,496, the disclosure of which is incorporated herein by reference.

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MPEP cite -608.01 (p)

COMMENTS: The PTO has occasionally asked questions requiring a general knowledge of incorporation by reference, more particularly the distinction between essential and nonessential and the permitted source for each.

INTERFERENCE Definition

Although interferences are, strictly speaking, being discontinued for applications filed on or after March 16, 2013, it is still a possibility for any application filed before that date, or even having at least one claim with a priority benefit from before March 16, 2013. We can expect a question on interference to be a possibility for another 20 years or so.

An interference is a proceeding in the Patent Office between two applications or an

application (including a reissue application), and a patent (but never between two patents) to determine which inventive entity is entitled to obtain claims covering an invention both seek to patent. The party prevails that establishes the earliest date among the filing date of the application and its patents and foreign priority applications, the dates of reduction to practice, if any, and dates of conception coupled with diligence. The procedure resembles a law suit with motions, discovery, briefs, a hearing, and an appeal. The interference is fought over a claim that must be present or copied into each application called the count and that is awarded to the winning party. MPEP cite-2300

COMMENTS: The Rules governing interferences are so complex that a number of patent attorneys have created a specialty doing nothing else. For whatever reason the gory details of interference practice have never been tested, except in a very general way, and except as it impinges upon other areas. Our recommendation is not to attempt to learn interference practice. If a question should occur, defer it to the end and look up what you can. There will be one or two questions on the exam that you just won't be able to get. There is no trophy for the best score, or even any recognition.

NOTE: One important point that has been tested is that whenever a claim from another patent or application is copied as a claim in your application, the patent or application from which that claim was copied must be identified by patent number or serial number and filing date.

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INTERVIEWS Definition

The personal appearance of an applicant, attorney, or agent before the Examiner or in a telephone conversation with the Examiner is an interview. The following applies: 1. An interview before filing is never permitted. An interview before a first action is ordinarily granted in continuing and substitute applications because the continuation was likely filed because the Final Rejection was not overcome. An interview after first action is normally granted. Interviews after Final Rejection are at the discretion of the Examiner. Interviews after an appeal brief has been filed are not normally granted. 2. An interview does not change the obligation to respond in writing to Official Actions. 3. It is the responsibility of the attorney to make sure that the substance of the interview is recorded, unless the Examiner indicates he or she will do so. 4. Nondangerous models and exhibits may be demonstrated. 5. The attorney must present proposals and arguments. 6. Interviews are not granted to anyone who lacks authority in the form of written power of attorney in the Patent Office file or does not have in his or her possession a copy of the application file. 7. Interviews must be held at the Patent Office. MPEP cite – 713

COMMENTS: A question or two on interviews is on every exam. The most frequently tested point is the requirement that the substance of every interview, including telephone interviews, be recorded by either the Examiner or the attorney.

INVENTORSHIP Definition

In the United States only human beings can be inventors and the ownership of each and every invention and patent application begins with the inventors. (ET phone home, no inventorship for you on this planet.) The inventors may be obligated by the terms of an employment or other agreement to assign their rights, but the rights first come by law to the inventors. Inventorship is determined on a claim by claim basis. If an individual has made a patentable contribution to one

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claim, that person is a joint inventor of not only that claim, but of the patent. The inventors need not work together or make contributions of equal number or value. To be a joint inventor of a claim the person must have contributed to conception. MPEP cite-605 EXAMPLE: Gladys Frank working for Aves Corporation in England hears of some research done by John Smith in Canada and conceives of an improvement that is an invention. Smith and Frank can be co-inventors even though they have never met or worked together.

EXAMPLE: Susan Brown makes a contribution of one feature of one claim out of one hundred claims in a patent application. All of the other concepts come from Alan Dow. Dow and Brown are co-inventors.

COMMENTS: The PTO is fond of asking questions in which the person who demonstrated that the invention would work, the one who carried out the tests that reduced it to practice, made no contribution to the conception, and therefore cannot be an inventor. A question is usually asked which requires you to know that each joint inventor need not make a contribution to each claim and that joint inventors need not work physically together.

MAINTENANCE FEES Definition

The United States requires that maintenance fees be paid at 3 1/2, 7 1/2, and 11 l/2 years after issue in order for patents filed on or after December 12, 1980, to remain in effect. Payment may be made up to six months before or on the day due or may be paid within a six-month grace period thereafter, together with a surcharge. If the payment is not made by the end of the grace period, the patent expires at the end of the grace period. NOTE: Design and plant patents do not have maintenance fees and design patents have a fourteen year term. A patent that has expired for failure to pay the maintenance fee can be revived within twenty-four months following the six-month grace period, i.e., up to six years, ten years, and fourteen years respectively after issue provided the failure to pay was either unintentional or unavoidable. However, the period between expiration and late acceptance of the fee is subject to intervening rights. Intervening rights protect anyone who makes, uses, sells, or offers to sell what would otherwise be an infringement or who makes preparation to do so, whether or not that person actually knew of the expiration. EXAMPLE: The patent owner fails to pay the maintenance fee prior to the three and one-half year term of the patent. The fee is paid just prior to the end of the fourth year. A surcharge must be paid but there can be no intervening rights.

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EXAMPLE: The patent owner decides not to pay the fee because the patent isn't being practiced. Five years after issuance the patent owner finds someone else practicing the invention of the patent. The maintenance fee cannot still be paid because the failure to pay was not unintentional.

MPEP cite-2500

COMMENTS: No questions on maintenance fee payments have been asked. A question that requires you to know the times due or the delayed payment procedure is a real possibility. Also, you should know that maintenance fees for a reissue or a reexamination are based upon the schedule for the original utility application. Another potential question is based upon the fact that the unintentional nonpayment must extend throughout the period of late payment.

NEW MATTER Definition Question: What do you call someone who answers an exam question on the assumption that new matter can be added to an application? Answer: I don't know, but you sure don't call him a patent agent! New matter is subject matter not supported by the original disclosure and can include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step where the disclosure as a whole indicates the step is an essential part of the invention. In determining whether the addition of something is new matter the specification, claims, and drawings must all be examined to see if the disclosure is anywhere present. An amendment adding new matter to an application will normally be entered. The Examiner will then object to the specification and/or reject the claims and require the new matter be canceled. Contrariwise, drawings seeking to add new matter will not be entered. It is no longer possible to add new matter to an application by an amendment filed with a continuation-in-part application. MPEP cites-608.04, 706.03(o)

COMMENTS: Every exam contains one or more questions or answers that try to get you to conclude that new matter can be added. Be vigilant and you will be rewarded. Questions based upon applications filed with missing specification pages are a favorite and often turn on the precise wording of the question.

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OATH/DECLARATION Definition Every application must have an oath or declaration. An oath is sworn to be true before a notary or its equivalent. A declaration is a statement with a warning that willful false statements are punishable by law and may jeopardize the validity of any patent that may issue. Either one may be submitted and there are no situations in the Patent Office that preclude use of one and bar use of the other. Each application must include an original oath or declaration by the inventor(s) that they believe themselves to be an inventor and that the application has been filed with their approval/permission. Prior to signing the oath, the inventor must have reviewed and understood the contents of the application, and acknowledged their duty to disclose all information known to be material to patentability. The oath or declaration need not be in English but must be in a language understood by the applicant. It can be filed after the application has received a filing date, of course with the inevitable fee. Note: The application may also be filed by the owners, obligatory assignee, or person (or other entity) of proprietary interest, by submitting a substitute statement in lieu of an oath. The inventors do, however, still have to be identified on an Application Data Sheet. A substitute oath is one that is submitted where the original oath or declaration is defective. MPEP cite-602 EXAMPLE: An application is filed without a declaration. The Patent Office sends a Notice of Missing Parts but grants a filing date to the application as to the date it was filed sans declaration or oath. The applicant files an oath that is defective because it fails to set forth the correctly spelled names of the inventors. In the first action the Examiner requires that a new oath be filed. A substitute oath or declaration is submitted in response to the requirement.

COMMENTS: Questions on original oaths and substitute ones are a staple.

OBVIOUSNESS Definition All obviousness rejections are based upon 35 USC 103. In almost every instance the Examiner asserts that a person of ordinary skill in the art would find it obvious to modify what is taught by one reference (anything specified in 102) in light of what is taught by another reference.

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There is no limit to the number of references that can be combined. Only two basic arguments can be made against such a rejection: 1. a person of ordinary skill in the art would not make the combination suggested by the Examiner as obvious; and/or 2. the resulting combination is not the claimed invention. MPEP cites-706.02, 706.02j), 2141-2146 EXAMPLE: Herman French made an invention relating to a rocking chair, and filed an application covering his invention. The Examiner rejects the application citing a patent to Smith and a patent to Jones. Neither of the references teaches one critical feature of the invention. The rejection can be successfully traversed by pointing out to the Examiner that the resulting combination is not the claimed invention.

EXAMPLE: Herman French made an invention relating to a rocking chair, and filed an application covering his invention. The Examiner rejects the application citing a patent to Smith and a patent to Jones. One of the references states that the rocker it describes cannot be modified as taught by the other reference. The rejection can be successfully traversed by pointing out to the Examiner that the resulting combination would not be made by one of ordinary skill in the art.

A proper rejection under 102 or 103 can alternatively be overcome by amending the rejected claim or claims to include a limitation, element, or step that is not taught by the prior art and that would not be obvious. That limitation, element, or step must be fully supported by the application as initially filed, i.e., cannot be new matter.

COMMENTS: Many of the exam questions will contain unintended ambiguities. When encountering such questions accept the obvious interpretation. If in fact the Patent Office had a subtler interpretation in mind then the question will likely be thrown out in grading and all answers given credit.

OWNERSHIP CONTRASTED WITH INVENTORSHIP Definition At the time the invention comes into existence it is owned by the inventors. This is true even if they have the obligation by law or contract to assign their rights to their employer or someone else. Inventorship is a legal determination: It cannot be changed by agreement.

OWNERSHIP INVENTORSHIP A patent can be bought, sold, or transferred like any other piece of property.

The patent must be applied for in the name of the true inventors.

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Cannot affect validity but can determine enforceability.

If inventorship is wrong, the patent is invalid unless correctable and corrected diligently.

Owner can control patent and prosecution and exclude inventor.

Inventor can be excluded from participation if assigned and owner requests.

Patent Office cannot determine – only courts. Patent Office can determine (through interference or derivation).

Can be any legal entity such as partnership or corporation.

Must be a human being or human beings.

PATENT Definition A U.S. patent is the right to prevent others from making, using, selling or offering for sale, or importing, within the United States, its territories, and possessions what is covered by one or more claims of the patent for a limited period or importing into the United States products made abroad using a method covered by a patent. Until June 8, 1995, that term was 17 years from the issue date of the patent, not the filing date, but the issue date. However, today determining the term is more complicated, and the following rules apply: 1. Patents that expired before June 8, 1995, remain expired. 2. All patents that were in force on that date, or that will issue on an application which was filed before June 8, 1995, will automatically have a term that is the greater of 20 years from the effective filing date, or 17 years from date of issue, whichever is greater.

3. All patents that issue from applications filed after June 8, 1995, will expire 20 years from the earliest effective filing date.

4. All patents filed on or after June 8, 1995 but before May 29, 2000 can have their term

extended for certain delays if requested via Patent Term Extension (PTE).

5. All patents filed on or after May 29, 2000, are subject to automatic Patent Term Adjustment (PTA).

The right: A patent is not self-executing. It is not a crime to infringe a patent in the United States, but rather infringement is a tort, like libel or negligence. It is up to the patent owner to decide when and if he, she, or it wants to enforce the patent, and to pay for the associated costs including the fees charged by a litigating attorney. If successful the patent litigant is entitled to an injunction and to damages to compensate for the infringement. To exclude: A patent does not give its owner the right to himself, herself, or itself to practice (do) what is described in the patent or the claims; it gives the owner the right to exclude others, and logically the system must be structured this way.

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Human invention is always built upon what others have done in the past. An inventor sees what is now being done and how to improve it. If by obtaining a patent on an improvement an inventor could be free of any rights of an earlier patented invention on which he has made an improvement, and transfer those rights to others, then no patent would have much value. Making, using or selling, importing into the United States, or offering for sale: In order to infringe, one of these acts must be carried out. A person who sells or offers to sell something covered by the claims of a valid patent is an infringer; a company that didn't buy the device but used it, whether to make money or not, is an infringer; a manufacturer is an infringer. On the other hand someone who merely obtained a patent or published an article describing something falling within the scope of a patent is not an infringer, nor is one who buys rights to an invention but doesn't use it. Within the United States, its territories, and possessions: At least one of the acts of making, using or selling, offering for sale, or importing must occur within the United States. For a period of time: After the patent expires anyone is free to use the teachings that are set forth and claimed in the patent, free from this particular patent right. The claims: To infringe a patent the infringing act must encompass each and every one of the limitations of at least one claim. More than one claim can be infringed but at least one must be. Provisional Rights – Once a patent issues from a published application, the owner has a right to a reasonable royalty from any infringer of the published application claims if those claims are substantially the same as those claims eventually granted in the patent and the infringer was put on notice regarding the published application.

COMMENTS: Obviously if you don't know what a patent is you won't pass. In addition you should have cold the post June 1995 rules on patent terms. Remember that whether a patent is expired or not has no effect on when and whether it is prior art.

PATENT COOPERATION TREATY Definition

PCT provides a mechanism whereby an applicant can file one application, "an international application," in a standardized format in one language at one receiving office, and have that filing acknowledged as a regular national filing in as many member countries as the applicant elects. The U.S. Patent Office is such a receiving office where an international application can be filed in English. PCT does not replace regular filings in the respective countries. Rather, a PCT application extends the time to file national applications to 30 months from the original priority filing date.

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Since PCT is expensive and complex, national filings remain the norm. Because PCT allows preservation of rights in a large number of countries, it serves mainly as a way to preserve rights when a last minute decision is made to file abroad. Also, because PCT costs are more spread out than national filings, it allows an applicant to file in more countries at a lower initial cost, but greater total costs if all the countries are pursued to patenting.

COMMENTS: PCT has its own complex set of rules and procedures which could be a fertile area for questions and which would significantly reduce the passing rate. Sadly the trend has been to test the PCT rules and procedures more heavily and in more detail.

PETITIONS TO MAKE SPECIAL Definition

The basic rule is that applications are considered in the order that they are filed, i.e., oldest first. However, applications can be taken up earlier if they are given a special status. That special status may be assigned by the Patent Office or may be assigned at the request of the applicant if the application falls within one of the categories that can be made special. In each instance the special status must be requested by filing a petition. Some categories are free while others require payment of a fee. There is no charge for the following categories if the application has a filing date before 8/25/06: 1. Illness - Special status can be granted if a certificate from a doctor is also filed showing the inventor to be seriously ill;

2. Environment - Inventions that have some alleged positive impact on the environment can be made special;

3. Energy - If the patent application will somehow improve the availability of energy it

qualifies; 4. Age - Inventors over 65; 5. Superconductivity (free by Presidential mandate); and, 6. Combating terrorism

A fee is required for petitions for the following reasons:

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1. Prospective manufacture - The petition must allege that the inventor or owner or licensee has sufficient capital to begin manufacture as soon as the patent is issued and must also report the results of a patentability search. 2. Infringement - The petition must allege that the patent is needed to stop infringement.

3. Safer DNA - The invention must relate to a method or device that will make procedures involving DNA safer.

4. For the asking - Any application can be made special upon request provided that claims to a single invention are presented or the inventor agrees to accept any restriction requirement given by the Office, the results of a patentability search are presented, a copy of each reference located and submitted, and a detailed discussion of those references is provided.

5. HIV/AIDS and Cancer - This is the latest reason. Why a fee is required for cancer and

AIDS and not superconductivity is a true mystery. 6. Biotech – Invention by small entities.

MPEP cite-708.02

For applications having filing dates on or after August 25, 2006, the requirements for Accelerating Examination are limited. Only those applications falling within the Age, Illness, and Patent Prosecution Highway programs can avoid the following Accelerated Examination Requirements:

To qualify for the new accelerated examination program, applicant must:

1. Submit the petition and fee (where appropriate) 2. File the request with respect to a newly application filed under 35 USC 111(a) 3. File the application via the EFS or EFS-Web; also all follow-on submissions 4. File a complete application complying with 37 CFR 1.51 5. File 3 or fewer independent claims and no more than 20 claims total 6. File an application for a single invention or agree to elect without traverse a single

invention for examination 7. Agree to an interview with the examiner to discuss any outstanding issues arising in the

examination process 8. Conduct a pre-examination search 9. Provide an accelerated examination support document.

By virtue of the AIA, we can now add Prioritized Examination (or “Track 1”) to the special list. Basically, you pay an extra large fee ($ 4800 for Large Entity) on top of the normal fees and, with some formal requirements met (no more than 30 claims, of which no more than 4 are independent), you can jump to the head of the line.

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COMMENTS: Questions on Petitions to Make Special (and its successor, Accelerated Examination) are always included and one to two questions is the norm. The questions have focused on the particular grounds for asking that an application be made special and what reasons require a fee and which are free.

PLANT PATENTS Definition

All plants are patentable except (1) bacteria and (2) tuber propagated. Tuber propagated plants are potatoes and Jerusalem artichokes, i.e., plants where the part that propagates is what you eat. The plant must either have been invented or discovered in a cultivated state and asexually reproduced. EXAMPLE: Mary Greenthumb discovers a new variety of pumpkin in her pumpkin patch and asexually reproduces it. She is entitled to a plant patent if the new pumpkin is new and unobvious.

EXAMPLE: Mary Greenthumb discovers a new rose growing wild by the railroad track. She is not entitled to a plant patent.

Only one copy of the specification must be submitted, two copies of color photos or drawings must be included as the drawings if “color” is a part of the features of the plant, along with a good reproducible black and white copy of the drawings. MPEP cite-1600

COMMENTS: The MPEP among its thousands of pages has ten pages on plant patents. A superficial question on plant patents appears every few years. Usually the question is whether a certain kind of plant is patentable or the conditions for patentability.

NOTE: To obtain a plant patent it must be asexually reproduced by the inventor, i.e., reproduced other than from seeds. NOTE: While the plant must have been asexually reproduced to be patentable, the fact that it thereafter is reproduced by seeds does not make it unpatentable.

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PRIMA FACIE SHOWING OF OBVIOUSNESS Definition

In order to reject a claim under 103 as obvious because the claimed invention is taught in two or more references or pieces of prior art (102 defining that prior art), the Examiner must establish a prima facie (i.e., self evident) showing. Three basic criteria must be met in most rejections either by evidence or reasoned and supported rationale or arguments advanced by the Examiner:

1. first, there must be some suggestion or motivation or other rationale, either in the references or in the knowledge available to a person of ordinary skill, to modify the reference or combine reference teachings; 2. second, there must be a reasonable expectation that the combination of modification will be successful; and 3. third, the prior references must teach or suggest all the claim limitations (i.e., nothing claimed can be left out).

The foregoing short list has been greatly expanded and made far more subtle by the Supreme Court Decision in KSR. The KSR guidelines for 103 as set forth in Chapter 2100 of your MPEP are required reading as a part of your exam preparation. A prima facie showing of obviousness may be rebutted by proof of Secondary Considerations.

MPEP cite -2143

COMMENTS: The Exam has occasionally asked that the student evaluate an argument against obviousness under 103.

PROTEST Definition

Any member of the public can file a Protest against the issuance of any application. A Protest specifically identifying an application will be entered in the file if: 1. it is timely submitted (before Final Rejection or Allowance); and 2. it is served upon the applicant.

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The Protest will be considered by the Examiner if, in addition, copies of references, a listing, translations of non-English papers, and a concise explanation of relevance is provided. Amazingly, no fee is required.

The protestor cannot participate in the prosecution and further submissions are limited to additional prior art or new issues which could not have been earlier presented.

Protest can be based upon any section of 102 or any other statutory requirement that is alleged not to be satisfied. MPEP cite –1900; Rule 1.291.

COMMENTS: Past questions have focused upon the details of how a protest is made and the nonparticipation of the applicant after it is received.

PROVISIONAL APPLICATION Definition

A provisional application is a way to obtain an effective filing date while deferring for up to a year the need to file a utility application. While a Provisional Application must have a specification satisfying 112(a), and any necessary drawing, no claims or oath is required. An application containing claims and identified as a provisional application will be treated as a provisional application. Provisional applications are not examined and information disclosure statements (IDS) are not permitted. If a complete application is filed within one year thereafter, then that subsequent utility application has as its effective filing date the date that the provisional was filed. The provisional application is automatically abandoned one year from the date of its filing and cannot be revived. A provisional application cannot itself be entitled to any earlier effective date. MPEP cite-601 EXAMPLE: Your client has completed her invention and wants you to do whatever you can at the least expense to preserve her rights while she seeks funds to market the invention. A provisional application can be filed and then replaced within a year by a complete application.

NOTE: A provisional application cannot be filed for a design application.

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RECORD Definition

Assignments and other transfers of interest in patents and patent applications such as security interests can be recorded in the Patent Office. Recording is voluntary, but works like real estate recording statutes to protect a buyer who records against subsequent good faith assignments for consideration. To be recordable a document must: 1. be in English or accompanied by an English translation; 2. identify patents by number and applications by number; or, in the case of assignments filed with an application, by date of execution, name of each inventor, and title; or, in the case of provisional applications, by title and name of each inventor; 3. be accompanied by the correct fee; 4. be legible; 5. be an original or true copy; and 6. be accompanied by a cover sheet. MPEP cites—302, 302.02, 302.03 NOTE: The term “record” is also used in connection with interviews where the applicant has the duty to record the substance of the interview.

REDUCTION TO PRACTICE Definition

A reduction to practice may be actual or constructive. Actual reduction to practice is usually making the claimed product or using the claimed method.

A constructive reduction to practice is the filing of a patent application. An actual reduction

to practice requires a showing that the invention has been sufficiently tested to demonstrate it will work for its intended purpose, or that the invention is sufficiently simple that no testing is required. Reductions to practice are used to establish a date of invention prior to the filing date of an application, and are significant in an interference to determine who prevails and in prosecution to swear behind the date of a reference. MPEP cites -715.07, 2138.05

COMMENTS:

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The three ways an applicant can establish an earlier date of invention are: 1. reduction to practice prior to the effective date of a reference or another application in an interference; or 2. conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to a subsequent actual reduction; or 3. conception of the invention prior to the effective date of the reference coupled with diligence from prior to the reference date to the filing date of the application that is the constructive reduction to practice.

NOTE: The exam will not ask you to make a close call on what facts are necessary to establish conception, diligence, or an actual reduction to practice. NOTE: An actual reduction to practice, conception, and diligence must be established by submitting proof of facts by affidavit and documents. NOTE: The tricky bit is that to swear back of a reference an applicant need only show diligence from prior to the reference date to the reduction to practice, not from conception to reduction.

REISSUE Definition

A patent that is deemed by the owner wholly or partially inoperative or invalid, through error, free of deceptive intention, may be reissued.

A reissue application can be filed correcting the error(s) and is examined like a new

application. The claims can be rejected upon new grounds or even the same grounds overcome in the parent application. A reissue oath or declaration signed by the assignee where no broadened claims are submitted or by all the inventors where the claims are broadened, and stating at least one error relied upon, must be filed together with the written assent of any assignee to the reissue. An offer must be made to surrender the original patent, and an order for a title report or a certified copy of an abstract of title must be submitted. A reissue application like any other application can be abandoned, in contrast to a reexamination, which cannot. The term of the patent is not changed by the reissue. MPEP cites -1401-1460 NOTE: A reissue application is a public file and is accessible to the public while it is pending. A reexamination is also public.

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NOTE: A reissue application that seeks to broaden claims in any respect must be filed within two years of the issue date of the original patent and must evidence within two years the intent to broaden the claims.

COMMENTS: A question or two contrasting the differences between reexamination and reissue can be expected.

REISSUE REEXAMINATION Limited to patent owner. Anyone can file. Any prior art can be considered. Limited to patents and printed publications. Broadening claims allowed in first two years. No broadening claims. Automatic extensions. No automatic extensions. Original patent must be surrendered. Original patent not surrendered. Can be abandoned. Certificate will Always Issue.

REJECTION/OBJECTION Definition

The refusal to grant claims because the subject matter as claimed is considered unpatentable is a rejection. If the form of the claim, specification, or drawing (as distinguished from its substance) is improper, an objection is made.

To have a rejection tested, first the Examiner must be asked to reconsider his decision, and then an appeal must be filed to the Board of Patent Appeals and Interferences. To have an objection tested, the Examiner must first be asked for reconsideration, and then a petition filed to the Commissioner. Most rejections are based upon 35 USC 102 (anticipation), 103 (obviousness), 112(a) (written description, enablement, and best mode), 112(b) (particularly pointing out and distinctly claiming), and 101 (patentable subject matter, lack of utility). MPEP cite-706.01 NOTE: In responding to any action, each and every rejection and objection must be addressed. Otherwise the response is incomplete. NOTE: A restriction requirement cannot be appealed, but must be petitioned to the Commissioner.

COMMENTS: One exam question always suggests that you can respond to some rejections or objections, and defer others until some future time. That may be reasonable, but is not

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allowed except for objections made that drawings do not conform to the rules governing drawings.

REPLY BRIEF Definition An appeal to the Board of Patent Appeals and Interferences begins with the applicant filing a Notice of Appeal and paying the required fee. An appeal can be filed to any second rejection and to any Final Rejection. Within two months of filing this notice, or an extended time, the applicant must file a brief setting forth the reasons why the Examiner is in error. The Examiner will then file an Examiner's Answer. The appellant then may within two months file a Reply Brief, which period cannot be automatically extended (Rule 1.136(a)) but can be extended for cause (Rule 1.136(b)). MPEP cite-1208.03

COMMENTS: One simple question on Reply Briefs is almost always included.

REPRESENTATION Definition

An applicant (the inventor or inventors) can represent himself or herself pro se before the Patent Office or, in the case of a joint inventor, can select one of themselves to represent all of them. Otherwise only a registered patent agent or attorney can represent parties before the Patent Office. The formal appointment is made by the party executing a Power of Attorney. Only individuals, not firms, can be given a Power of Attorney.

Every paper filed by an agent or attorney must be personally signed by the practitioner except those required to be signed by the applicant. The party may revoke the Power of Attorney at any time. The assignee may likewise revoke the power given by the original applicant, but merely recording an assignment does not revoke the power. The signature of any agent or attorney is a representation that:

1. The paper is not being presented for any improper purpose; 2. The claims and contentions are warranted; 3. The allegations and contentions have evidentiary support; and 4. Denials have evidentiary support.

Withdrawing from representation must be by a petition to the Commissioner and is not normally granted unless there is at least one month remaining before the last possible date for response to an outstanding action.

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MPEP cite- Rule 11.18

COMMENTS: Beware of questions that paint a reasonable picture but that suggest you should break one of the rules for signing a paper.

RESTRICTION Definition

Two types of restriction are possible: restriction of species and restriction of invention.

If two or more independent or distinct inventions are claimed in the same application, the Examiner will issue a restriction requirement, and the applicant must elect one invention for prosecution. The nonelected invention may then be pursued in a divisional application, which cannot be rejected on the basis of double patenting over the parent application. Where the application has a generic claim and other claims to each of more than one species, the Examiner will also require the applicant to elect one species for search. If the generic claim is allowed all the species will automatically be allowed as well. If only a species is allowed then the claims are limited to the elected species and other species must be pursued in divisional applications. With respect to those patent applications that were pending as of June 8, 1992, the applicant may avoid a restriction requirement by payment of a fee (37 CFR 1.129). MPEP cite-800

COMMENTS: An understanding of the distinction between species election and invention election is crucial.

REVIVAL Definition

An application that becomes abandoned (dies) because of failure to timely pay the issue fee or respond to a Patent Office deadline may, under certain circumstances, be revived (brought back to life). Similarly, a patent which has lapsed because the maintenance fee was not timely paid, can be brought back to life. Alternatively, if the holding of abandonment resulted from some mistake on the part of the Patent Office, a petition to withdraw the holding is the correct procedure.

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Two routes exist for reviving an application—unavoidable and unintentional. Both require filing at the same time a proposed response or the filing of a continuation, and of course the inevitable fee. The fee for unintentional is a monster fee compared with unavoidable reflecting that fault is admitted on the part of the applicant.

For both unavoidable and unintentional revival there is no time limit, but the applicant must state that the entire delay between abandonment and the filing of the revival petition was unavoidable or unintentional. However, for design patents and seventeen years from issue of plant and utility patents (those patents based on applications filed prior to June 8, 1995), a terminal disclaimer must be filed equal to the time that the application was abandoned. MPEP cites ; Rule 1.137 NOTE: Decisions on revival are petitionable, not appealable.

COMMENTS: Be prepared to look up the differences between unintentional and unavoidable, or have them memorized.

SECONDARY CONSIDERATIONS Definition

The Supreme Court in the famous case of Graham v John Deere Co. established how obviousness is to be determined. In that case, the Supreme Court coined the phrase "Secondary Considerations," which describes objective indications that the invention is not obvious. These are indications that the real world puts a high value on the invention, and include unexpected results, commercial success, failure of others, copying by others, licensing, and skepticism of experts. Proof that one or more of these Secondary Considerations apply can be submitted to overcome a prima facie rejection under 103. MPEP cite-2141

EXAMPLE: The Examiner rejects the claims in your client's application under 35 USC 103. The rejection is a proper prima facie rejection. You can prove that the invention was very successful commercially because of its merits, and that it has won many scientific prizes. You should submit this evidence to overcome the prima facie rejection.

COMMENTS: Use of evidence of Secondary Considerations has become more important in recent years and the area has been under tested. A good bet for a question in the next year or two.

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SERIAL NUMBER/FILING RECEIPT Definition

When an application is given a filing date it is also given an application number which consists of a series code and a serial number that identifies it until issuance, at which time it is given a separate patent number. Once an application is given a filing date the application cannot normally be returned to the applicant but it can be abandoned, in which instance it is not available to the public except under unusual circumstances. In order to obtain a filing date, the following must be present at a minimum: a specification; a claim; and a drawing, where appropriate. The filing fees, an English translation, and an oath or substitute statement can be submitted after the filing date with a fee. If any of these elements are missing, the applicant will be notified by a Notice of Missing Parts and given two months to submit the missing part. If not corrected, the application becomes abandoned.

The final/corrected filing receipt is not issued until the fee and oath or declaration have been received. The filing receipt may or may not grant a Foreign Filing License, and that is one of three ways a Foreign Filing License may be obtained. MPEP cite-503

COMMENTS: Knowing the minimum requirements to get a filing date is a must, together with the three ways a Foreign Filing License can be obtained.

SMALL ENTITY/LARGE ENTITY Definition Small guys get half off. Small entity status can be obtained if the owner or owners of the patent application or patent are limited to: 1. an independent inventor who has not assigned, granted, conveyed, or licensed, or is not under an obligation by law to do so, any rights to someone who is not a small entity. If one of several inventors does so, all stop being small entities;

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2. a nonprofit organization recognized as such by the IRS or an accredited university; and 3. a small business concern that employs, together with its affiliates, no more than 500 people. To claim small entity status a simple statement to that effect must be filed at the PTO. If no statement is made, correct payment of a small entity filing fee will do. If you don't claim small entity status you are a large entity. Refunds can be obtained up to three months after a full fee is paid by filing a proper statement. A license to the federal government or one of its agencies does not preclude small entity status. If the applicant has a duty to assign or license the application to a large entity, the applicant does not qualify as a small entity. MPEP cite-509.02

COMMENTS: With its nicely complex rules, this is a fertile ground for questions. Memorize some of the tricky bits and be prepared to look up anything that requires detail.

NOTES: If status changes during prosecution or during the patent term, no repayment is required; rather, future payments are calculated under the new status

STATUTORY INVENTION REGISTRATION (SIR) Definition

SIRs have been discontinued as of March 16, 2013, but nonetheless exist as prior art, etc. So, you may see them mentioned in a fact pattern here and there.

SIRs are a strange hybrid between a patent and a publication. An SIR is prior art under

102(e), so it takes effect as prior art as of the filing date, but it does not confer any rights to exclude. An SIR application can be in an interference to defeat an attempt by another to obtain a patent. MPEP cite -1100

SUBSTITUTE/CONTINUING Definition

Substitute applications are those that have the same disclosure as an earlier application and that, by mistake or on purpose, are not co-pending with an earlier application. Co-pending simply means that the applications were both alive at the patent office for at least one overlapping day. Continuing applications are those that are co-pending and include continuations, continuations-in-part, and divisional applications.

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A continuation is an application that has the same disclosure but that is co-pending A

division is an application that has the same disclosure but that claims a different Invention, typically claims that were restricted out of the parent. A continuation-in-part is an application that has disclosure from the parent and additional subject matter as well, so different claims may have different effective filing dates. EXAMPLE: An application is deliberately abandoned. A year later the applicant changes her mind and wants to get a patent. There are no statutory bars. The application cannot be revived because the abandonment was intentional. However, a substitute application can be filed which will not be co-pending with the parent. Because it is not co-pending it is not a continuing application.

MPEP cite-201.1 1

COMMENTS: A question like the example is almost always asked. Several questions will require knowledge of the differences between these types of applications. Remember that a substitute application is by definition not co-pending with the earlier application; a continuation, divisional, or continuation-in part is by definition co-pending.

SWEARING BACK Definition

Pre-AIA 102(a) and 102(e) in particular bar patentability where the 102(a) acts or the 102(e) patent's filing date are before the date of the invention. Since the Examiner has no idea when the date of invention of a given application might be, the Examiner in his or her initial rejection has to assume that the filing date is the invention date and rejects on that basis. If the applicant can and so desires a 102(e), and 102(a), rejection can be removed by "swearing back," establishing an earlier date of invention.

A prior art patent cannot be removed as prior art if it claims the invention because then there is an interference. The showing of facts must be declared or sworn and must show either a reduction to practice or a conception coupled with diligence prior to the effective date of the reference. Swearing back is also referred to as an affidavit or declaration under 37 CFR 1.131.

Where the reference in question is from the same inventors then only the identity needs to be shown to remove the reference as prior art under pre-AIA 102(a). MPEP cite – 715

COMMENTS: An understanding of the term is required.

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WITHDRAWAL Definition

Withdrawal occurs with respect to five situations pertinent to the exam:

1. Withdrawal of Claims to Nonelected Species or Invention - When an election of invention or species is made by the applicant in response to a restriction requirement, the nonelected claims are not canceled by the Patent Office (of course the applicant could cancel them), but are withdrawn from consideration. Should the restriction requirement be reversed by a successful petition or allowable claims found to a genus, that withdrawal may end in whole or part.

2. Withdrawal of Final Rejection - If the finality of a rejection is improper, typically because a new ground of rejection was not necessitated by an action of the applicant, then the applicant can petition the Examiner to have it withdrawn.

3. Withdrawal of Holding of Abandonment - If the Patent Office holds an application abandoned and it became abandoned because of a mistake by the applicant the remedy is revival. If the Patent Office holds an application abandoned and the Patent Office, not the applicant, made a mistake calculating the due date or otherwise the remedy is a petition to withdraw the holding of abandonment.

4 Withdrawal of Power of Attorney - An attorney who wants to cease representing a client who has not revoked the Power of Attorney cannot merely do nothing, he or she must petition the Commissioner to withdraw. Such petitions are normally granted only where the client is deemed to have sufficient time to find a new attorney and/or respond on their own.

5. Withdrawal from Issue - After a Notice of Allowance has been transmitted, either the patent must issue, be abandoned, or withdrawn by petition from issue. MPEP cites – 402.06, 821.01, 706.07(e), 711 .03(c), 1308, 2223

COMMENTS: A question or two on one of these withdrawal issues is likely, particularly on withdrawal of the Power of Attorney. All withdrawals are in the nature of petitions and hence are not appealable. The grounds for withdrawal from issue should be memorized.