The Intellectual Property Forum

Hypothetically, I have an application that was filed on January 1, 2000.
The Examiner issues an Office Action, citing Reference A.
Reference A was filed on February 1, 2000, but claims foreign priority to a Japanese application that was filed on February 1, 1999.
Can the Examiner rely on the foreign priority date of Reference A (i.e., February 1, 1999) to reject my claims under 35 USC 102?

I understand that, under 35 USC 102(e), the Examiner cannot rely on the foreign priority date of Reference A.
However, does the foreign priorty date claimed by Reference A qualify as a valid prior art reference under 102 (a) or (b)?

Thanks.

I have a non-provisional, parent application that entered the US under 35 USC 371 from a PCT application, which claims priority to a foreign application.

The non-provisional, parent application was filed before September 16, 2012 of the AIA, and I just paid for the issue and publication fees for this non-provisional, parent application .

However, before the parent application issues into a patent, my client would like to file a Continuation and a Divisional application.  My question is: 

Do I need to have the inventors sign a new Oath or Declaration for the Continuation and Divisional applications? Or can I simply use the Oath or Declaration that was previously filed for the parent application?

My  understanding is that I need to file a new Oath or Declaration for the continuing applications since the Oath or Declaration filed for the parent application does not contain certain language that is now required bythe AIA.

Any help would be appreciated.

Who can sign a petition to revive under unintentional?
I know the attorney of record can, but can the foreign inventor sign the petition?

Thanks.

I have an application that was filed with claims 1-10.

In the examiner's first office action, he rejects all the claims (i.e., claims 1-10) under 112, first paragraph for failing to satisfy the written description requirement.

In the same office action, the examiner only rejects some of the claims (i.e., claims 1, 4, 8 and 10) as being obvious in light of reference A and reference B.

What about claims 2, 3, 5-7, and 9?

The examiner makes no comments as to whether the limitations of claims 2, 3, 5-7, and 9 are obvious in light of the cited references.

I thought there was a section in the MPEP where it states that the examiner must address each claim under 102 or 103 even though a 112 rejection was issued.

Please correct me if I'm wrong.

I have an application that was filed on August 2008 under 35 USC 1.111 and claims priority to a foreign application that was filed on August 2007.

The Examiner rejected the claims under 35 USC 103(a) using the following two references:

-  Reference X was filed in the US on August 2006 and subsequently published on Jan 2007.

-  Reference Y was filed in the US on November 2006 under 35 USC 1.111, and claims priority to a Chinese application (in Chinese language) filed on March 2006.

Based on the prior art dates of Reference X and Reference Y, can they be combined under 35 USC 103 (a)?

Thanks

I was wondering if an examiner will loose 0.25 counts (i.e., for issuing a final office action) if an Advisory Action indicates that prosecution will be reopened in light of the applicant's after-final amendment.

Our firm handles many European applications that enter the United States, either from PCT or Paris Convention.

I've noticed a pattern in how the European foreign counsels would like to prosecute their U.S. applications.

One pattern I've noticed is that the European foreign counsel's seem to avoid requesting for a Pre-Appeal Brief for Review of the U.S. application, even though the Examiner's final

rejection is weak and the European foreign counsels have a convincing argument.

Most of the time, the European foreign counsels would rather file a Request for Continued Examination (RCE) instead of a Pre-Appeal Brief for Review of the U.S. application.

Is there are reason why they would take such a course of action?

Also, is it true that when the European Board of Appeals affirms the Examiner's final rejection, the applicant would need to file a European Divisional application to put the invention back into prosecution?

Thanks.

US application at issue:
(1) US application claims priority to PCT application filed on April 20, 2007, which in turn claims foreign priority to a foreign application filed on April 21, 2006.
(2) the US application names two inventors, inventor Smith and inventor Doe.
(3) the US application is assigned to Company X.

Prior art reference:
(1) International application that was filed on July 21, 2005, and subsequently published as a WIPO publication on January 26, 2006.
(2) the International application claims foreign priority to a foreign application filed on July 21, 2004.
(3) the International application names four inventors, two of which are inventor Smith and inventor Doe.
(4) the international application is also assigned to Company X.

Question:
The Examiner cites the WIPO publication, in combination with another reference, under 35 USC 103(a) to reject the US application at issue.
Is the WIPO publication a 35 USC 102(b) reference?
Can I use 35 USC 103(c) to disqualify the WIPO publication as a prior art reference since the WIPO publication cannot be be considered a prior art reference under 35 USC 102(b)?

Thanks.