Claim Drafting Exercise

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					                                          Questions
1.      Mr Jones filed a request for reexamination of an issued United States patent. The request
was granted and the Examiner ultimately rejected all of the claims in the patent. In view of this
rejection the Patent Owner requested an interview with the Examiner and a time and date for the
interview in the Examiner’s office was set. The requester filed a request to attend the interview.
Should the Examiner grant the request?



2.      Jones filed a request for reexamination of Smith’s issued United States patent and the
request was promptly granted. Smith’s patent named Smith and Brown as co-inventors and
issued about 10 years prior to the time that Jones filed his request for reexamination. During this
period of 10 years Brown continued to work in the field of the invention and collected numerous
prior art references that were related to the invention. It was Brown’s conclusion that some of
these references more closely related to the claimed invention than the prior art cited during
original prosecution. Should these references be cited to the PTO during the reexamination?



3.       The defendant in a patent infringement suit filed a request for reexamination of the patent
in suit. During the reexamination the patent owner filed a response and affidavit in an attempt to
overcome a rejection. The defendant took the position that some of the assertions made in the
affidavit were not accurate and outlined his reasoning in detail in a letter to the patent owner.
The patent owner was concerned that issues of fraud would be subsequently raised at trial based
upon these assertions if no action was taken. The patent owner decided to submit the letter from
the defendant to the PTO as an attachment to an amendment. Thus, the entire matter would be
presented to the PTO and the potential issues of fraud would be avoided. Was the submission by
the patent owner proper?



4.      All of the claims in an issued patent were finally rejected during a reexamination and the
patent owner was given 2 months to file a response. The patent owner filed an amendment in
response to the rejection on the last day of the 2-month period. The Examiner issued an advisory
action 2 months later. Can the patent owner file a notice of appeal?



5.     All of the claims in an issued patent were rejected during a reexamination and the patent
owner was given 2 months to file a response. The patent owner was semi-retired and was
planning to spend the next 2 months on vacation in remote parts of Africa and accordingly
requested a 2 month extension of time to file a response. Will the request be granted?
6.     During a reexamination the Examiner rejected a dependent claim because it depended
upon a canceled independent claim that was issued in the patent. Was the rejection proper?



7.     During a reexamination the Examiner rejected a dependent claim because it depended
upon a canceled independent claim that was added during the reexamination. Was the rejection
proper?



8.    Does the statutory presumption of validity under 35 U.S.C. 282 apply during
reexamination?



9.      A request for reexamination of a patent was filed 6 months after the patent issued. The
request for reexamination was filed by the patent owner. The request was promptly granted and
less than 1 year from the patent issue date the patent owner filed an amendment that included a
claim that was broader in scope than any claim in the issued patent. Was this amendment
proper?



10.     An issued patent described a new chemical compound and the process used to synthesize
it. However, the issued patent failed to claim the new chemical compound because of a mistake
made by the patent attorney. Six months after the patent issued a reissue application was filed.
The reissue application claimed the new chemical compound and the process for synthesizing it.
The Examiner subjected the claims pending in the reissue application to a restriction requirement
and required the applicant to elect either the claims that were directed to the chemical
composition or the process claims. The restriction requirement indicated that the claims directed
to the chemical composition were patentably distinct from the process claims and that the
composition being claimed was classified in a different art class than the synthesis process.
What are the applicant's options with respect to the restriction requirement?



11.    A request to issue a statutory invention registration was refused on the basis that the
application failed to meet the requirements of 37 C.F.R. §1.293 and the refusal was made final.
The applicant was dissatisfied with the final refusal. What should the applicant do?



12.    At what point in the prosecution of a patent application does the fee required for filing a
request for a statutory invention registration double from $920 to $1840?




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13.    You are in the process of filing a patent application under the Patent Cooperation Treaty
and must select the international search authority. It is your intention to pursue patents in the
United States, Japan, Brazil, Canada, and various countries in Europe. Which search authority
do you believe would be the best and why?



14.     A protest was filed after the claims in a pending patent application were rejected but
before the applicant had filed a response. Does the applicant have a duty to respond to the
protest in addition to the rejection made by the Examiner?



15.    At what point in a protest does the active participation by the protestor end?



16.     A protest based upon prior art documents that clearly anticipated the claims in a pending
patent application was received by the PTO three weeks after the Examiner mailed a notice of
allowance to the applicant. What should the Examiner do with respect to the protest?



17.    During what time period should a protest regarding a reissue application be filed?



18.    Is it necessary to know the serial number of a pending patent application to file a protest
with regard to that application?



19.     Is it permissible for an Examiner to request an applicant to comment on a protest filed
with respect to his patent application?



20.     A protest was filed after the claims in a pending patent application were rejected but
before the applicant had filed a response. The protest cited prior art references that the applicant
concluded might be material to the examination of his pending claims. What should the
applicant do with respect to the protest?




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21.     In the event that a foreign patent which is printed in a foreign language is used as the
basis of a protest is it necessary for the foreign patent to be translated into English in its entirety?




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