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Messages - john122

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1
Patent Filing and Prosecution / Re: Prior Art Question
« on: 02-14-13 at 06:01 am »
A senior associate told me that the Examiner cannot use Reference A under 102(a) based on the priority claim to the JP application.
The senior associate told me that the Examiner should obtain an English translation of the JP application and cite that as prior art under 102(a), while Reference A can only be a valid prior art reference based on it's US publication date.
There are conflicting opinions and which one is correct?

2
Patent Filing and Prosecution / Re: Prior Art Question
« on: 02-13-13 at 05:27 am »
Thanks for confirming my 102(e) analysis, but my true question is whether the the examiner can use reference A as a prior art reference based on the JP priority date. I thought about this question a little more and I believe the examiner can only use reference A as a valid prior art reference only if the JP application was published before the instant application's filing date. Can someone please confirm if I'm correct.

3
Patent Filing and Prosecution / Prior Art Question
« on: 02-12-13 at 08:06 pm »
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.

4
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 01-22-13 at 01:37 pm »
I was just hired as an Examiner at the USPTO and one of the requirements is to complete a Request for Withdrawal as Attorney or Agent.  I'm having some trouble filling-out this form and was wondering if any attorney or agent that was recently hired as an examiner can help me complete this form. 

The Request states: "Please withdraw me as attorney or agent for the above identified patent application, and (1) all the practitioners of record; (2) the practitioners (with registration number) of record listed on the attached paper; or (3) the practitioner of record associated with Customer Number: ___"

First, I'm a patent agent and I've worked on hundreds of cases. Does this mean that I have to fill out the same Request hundreds of time to withdraw from each case I worked on?

Second, I'm not sure which option I'm suppose to be selecting.  I believe option "(2)" is the box I'm suppose to select, as well as attach a sheet with my registration number to withdraw.

Can someone please help me out.  I need to file this form on my start date, which is next Monday.

Thanks.

5
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 01-02-13 at 11:31 am »
Anyone know what is the net, monthly income for a GS-7, Step-10 Examiner?

6
Patent Filing and Prosecution / 35 USC 103(c) after AIA
« on: 12-26-12 at 09:14 am »
Is there any changes to 35 USC 103(c) after the AIA?
I have a publication and application that are commonly assigned to an entity.
Can I disqualify the publication using 35 USC 103(c) post AIA?

7
In addition to my question above, do I need to file a new assignment in my Continuation or Divisional application?  I believe I do not need to file a new assignment.  But what is the procedure to have the assignment of the parent carry over into the Continuation or Divisional application?

8
I just got a notice agreeing with what you said.

Dab2d:  In other words, you just got notice from the USPTO that a new Oath or Declaration needed to be filed even though your Continuation/Divisional application claims priority to a parent application that entered the US via a PCT application that was filed before September 2012 of the AIA?  Please confirm.

Aslo, if it's okay with you, would it be possible to give me the the USPTO serial number of the Continuing application?  I want to see whether the facts of your application is somewhat similar to my application.

Thanks in advance.

9
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.

10
I have an IPRP-Chapter II that issued for a PCT application on January 1, 2012.

My questions are as follows:

1) Do I have to respond to the IPRP-Chapter II?

2) Do I have to respond to the IPRP-Chapter II for the purpose of entering National Phase in various contracting states?

3) What is the deadline for responding to the IPRP-Chapter II?  Is it 6-months from the date the IPRP-Chapter II was issued?


Thanks in advance.

11
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 07-26-12 at 12:17 pm »
Well that sucks for me then, because I told BR that I'm willing to drive to the patent office for an in person interview. I actually had my telephone interview today, and they said 4-6 weeks for a decision. Does anyone know how long after getting a decision the first day of work is?

12
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 07-26-12 at 11:43 am »
Today I got the email containing the candidate questionnaire and OF-306 Declaration for Federal Employment, and invitation for interview. I am trying to decide if I will go in for a in-person interview.

From my experience, they don't give in person interviews, only telephonic, unless the person at HR was lying to me.

13
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 07-14-12 at 06:28 am »
I just received a status update this morning on USA jobs, "Multiple Grades/Status/Agencies – Eligible-Application - Referred to Selecting Official."  I'm assuming this status update means that my application was referred to the hiring-SPE of a particular art unit?

Lastly, the position is for Comp. Sci. Examiner, and the announcement is closing August 10, 2012.  Can I still update my application after receiving this status update?  I'm asking because I haven't submitted my SF-50 form yet.

Thanks.

14
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 07-13-12 at 05:34 pm »
I received this status today:  Multiple Grades/Status/Agencies – Minimum Qualifications Requirements Met.  Does this mean it is the end of the road for me because I did not receieve this status: Multiple Grades/Status/Agencies – Eligible-Application Referred to Selecting Official.  Or am I still waiting on another step of evaulation from HR to see if I am referred to a selecting official. 

Any input would be helpful.

What position did you apply for?

15
Becoming a Patent Agent/Lawyer / Re: Working for the USPTO
« on: 07-13-12 at 05:32 pm »
Has any former Examiners tried to obtain a copy of their SF-50 form?  I've been away from the Office for 2 years, and I can't find my SF-50 form.  I understand that I can write a request to National Personnel Records Center, but it requires my social security number, which I'm reluctant to put in a letter that I'm mailing (I'm affraid it might get lost and someone will use my SS#).  Can I call HR at the Office and ask for a copy?

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