KNOW THIS STUFF

Contrasted With Objections

"Rejections" of claims must be contrasted with "objections." The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a rejection. The term "rejected" must be applied to such claims in the examiner's office action. If the form of the claim (as distinguished from its substance) is improper, an "objection" is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. For example, if independent claim 1 is rejected because it is not novel, but the additional limitations in dependent claim 2, which depends on the rejected independent claim 1, create the required novelty, claim 2 should be objected to by the examiner, not rejected. This is because claim 2 is merely improper in form, not substance. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Board of Patent Appeals and Interferences (the "Board"), while an objection, if persisted, may be reviewed only by way of petition.

Rejections Under 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale

35 U.S.C. § 102(b) also sets forth the "on-sale" and "public use" statutory bars. Both of these bars relate to activity occurring more than one year prior to the effective filing date of the patent application, and both bars require that the activity occur in the United States (i.e., "in this country"). Several policy justifications exist for the on-sale and public use statutory bars. First, they encourage widespread disclosure of new inventions to the public through the patenting process. Second, they prevent the inventor from commercially exploiting the exclusivity of the invention substantially beyond the statutorily authorized period. Lastly, the on-sale and public use statutory bars discourage the removal of inventions from the public domain which the public justifiably comes to believe are freely available. If the activity occurs within one year of the application's effective filing date, a rejection based on prior use or knowledge must be made under 35 U.S.C. § 102(a). However, no rejection under Section 102(a) should be made if the knowledge or use is derived from the applicant himself. This is because of the "by others" requirement in the provision. The applicant is free to disclose and commercially exploit his invention within a year prior to filing for a patent application. This is another often tested concept appearing on the registration examination. An inventor has a one year "grace period" before he is required to seek patent protection. During this year, he may, among other things, commercially exploit his invention, disclose it to others, and publish articles describing his invention. Although some of these activities may affect the inventor's ability to obtain patent protection in a foreign country, his patent prospects in the United States are unaffected by such activity. Remember, the inventor must file a patent application covering his invention within one year, or his activities may count as prior art. Where the last day of the year dated from the date of the activity falls on a Saturday, Sunday or Federal holiday, the activity may not be used to reject the applicant's claims if the application was filed on the following business day.

Rejection on Prior Art

35 U.S.C. §§ 102,103 are the most frequent grounds for rejection of claims. These provisions set forth the conditions upon which a claim will be rejected based on the presence of "prior art." Generally speaking, prior art is information available to the public before the effective filing date of a patent application. If the prior art teaches, suggests, or implies the invention as defined by the claims of a pending patent application, the examiner will reject the claims. 35 U.S.C. § 102 defines the novelty standard (also referred to as "anticipation"), while 35 U.S.C. § 103 defines the non-obviousness standard. The Leahy-Smith America Invents Act ("AIA") drastically changed Section 102. However, because Section 102 under the AIA only applies to applications with effective filing dates on or after March 16, 2013, the former Section 102 will still be applied to applications with effective filing dates before March 16, 2013. Therefore, it is important to first determine whether an application will be examined under the former Section 102 or under the new Section 102, as found in the AIA. The later part of this chapter details the AIA and the pertinent changes to Section 102. Prior art does not need to be in the English language. In fact, prior art uncovered by the examiner in searching the claimed subject matter of a patent application often includes English language abstracts of underlying documents, such as technical literature or foreign patent documents which may not be in the English language. When an abstract is used to support a rejection, however, the evidence relied upon must be the teachings contained in the abstract (not additional facts that may be contained in the underlying full text document). Citation of and reliance upon an abstract without citation of and reliance upon the underlying scientific document is generally inappropriate where both the abstract and the underlying document are prior art. Thus, the Examiner should request a translation of the underlying, foreign language document to determine if the underlying document is also prior art. Moreover, a statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would not otherwise qualify as prior art. The distinction between rejections based on 35 U.S.C. § 102 and those based on 35 U.S.C. § 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. § 102, the prior art must teach every aspect of the claimed invention explicitly. Any feature not directly taught must be inherently present. Whereas in a rejection based on 35 U.S.C. § 103, the prior art's teachings must somehow be modified in order to cover the claims. The modification must be one which would have been obvious to a person of ordinary skill in the art ("POSITA") at the time the invention was made. For example, consider the following - Prior Art Reference #1 Teaches element A, B, C, and D Prior Art Reference #2 Teaches element A and E Claim 1. A system comprising A, B, and C. Claim 2. The system of claim 1 further comprising element E. In the example above, Claim 1 is anticipated by prior art reference #1 under 35 U.S.C. § 102 because all elements of claim one (A, B, and C) are disclosed in the publication. Dependent Claim 2 is rendered obvious by the combination of prior art references #1 and #2 under 35 U.S.C. § 103, if the combination would be obvious to a POSITA, because all elements of dependent claim 2 are taught by the combination of prior art references #1 and #2. Although a single prior art reference may form the basis for a rejection under 35 U.S.C. § 103, the typical case is where multiple references must be combined, as in the example above. Remember, art constitutes "prior art" only if it was publicly accessible before the effective filing date of the patent application. The effective filing date may or may not be the same as the actual date on which the application was filed with the Patent Office. This is because a valid priority claim entitles the application in which the priority claim was asserted to the filing date of the earlier application. The following rules determine the effective filing date of a patent application - 1 If the application is a continuation or divisional of one or more earlier applications (including international applications), the effective filing date is the same as the earliest filing date in the line of continuation or divisional applications. 2 If the application is a continuation-in-part ("CIP") of an earlier application (including international applications), any claim in the new application not supported by the specification of the parent application has an effective filing date equal to the actual filing date of the CIP application. Any claim which is fully supported by the earlier parent application has an effective filing date of the earlier parent application. Thus, the claims in a CIP may have different effective filing dates! 3 If the application claims priority to an earlier foreign or provisional application, the effective filing date is the filing date of earlier application, if the U.S. application was filed within 12 months of the earlier application. Otherwise, the effective filing date is the actual filing date of the U.S. application. Thus, as a general rule, the effective filing date of an application is the actual filing date of the earliest patent application to which it properly claims priority. Remember that for continuing applications, the priority claim must generally be made before the patenting or abandonment of the earlier application to be effective. For priority claims to provisional and foreign applications, the claim must be made within 12 months of the foreign or provisional application's actual filing date to be effective.

Disclaimers

A disclaimer is a statement filed by an owner (the original inventor(s) or the assignee) of a patent or of a patent application, in which the owner relinquishes legal rights to the patent. There are two types of disclaimers - (1) a statutory disclaimer and (2) a terminal disclaimer. The owner of the patent or application can sign a disclaimer, as well as a person empowered by the owner to sign the disclaimer. However, a registered practitioner acting in a representative capacity but not of record (i.e., no power of attorney on file) is not permitted to sign the disclaimer. A statutory disclaimer is a statement in which a patent owner relinquishes legal rights to one or more claims of a patent. This may result from a lawsuit or because he or she has reason to believe that the claim or claims are too broad or otherwise invalid. In contrast to a statutory disclaimer, a terminal disclaimer disclaims or dedicates to the public the entire term or any terminal portion of the term of a patent. For example, a patent owner may terminally disclaim the last five years of a patent's term. A terminal disclaimer is often used to overcome a non-statutory double patenting rejection. A terminal disclaimer filed to obviate a non-statutory double patenting rejection is effective only with respect to the application identified in the disclaimer unless by its terms it clearly extends to continuing applications. For example, a terminal disclaimer filed in a parent application normally has no effect on a continuing application claiming priority to the parent application. However, if applicant files a Request for Continued Examination ("RCE") of an application, any terminal disclaimer present will continue to operate because a new application has not been filed, but rather prosecution has been continued in the existing application. Thus, it is important to remember that a terminal disclaimer only affects the applications or patents specifically referenced in the disclaimer.

Licenses and Assignments

A key distinction is between an assignment of patent rights and a mere license of rights. An assignment is the transfer to another of a party's entire ownership interest in a patent. In contrast to an assignment, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest (e.g., rights that may be limited as to time, geographical area, or field of use). A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, sells, or imports the claimed invention, as long as the licensee fulfills his or her obligations and operates within the bounds delineated by the license agreement. Each individual inventor may only assign the interest he or she holds. Thus, assignment by one joint inventor renders the assignee only a partial assignee. A partial assignee likewise may only assign the interest it holds. Thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any ownership interest in a patent or patent application must act together as a composite entity in all matters before the Patent Office (e.g., to take over prosecution of an application).

Non-Provisional Patent Applications

A non-provisional patent application does receive substantive examination by the Patent Office and does afford legal protection if issued into a patent. Unless otherwise stated, you should assume that when a question simply references "patent application" it is referring to a non-provisional patent application. In addition to the requirements for a provisional patent application, a non-provisional application includes "claims," which define the legal boundaries of protection provided by the patent that issues from the application. Once a non-provisional application is allowed by the Patent Office, the invention is considered "patented" and legal remedies to prevent infringement of the invention arise. The Patent Office will assign a filing date to all non-provisional applications that contain a specification and any required drawing. The specification must also contain at least one claim. Lack of the required oath and fee do not prevent a non-provisional application from obtaining a filing date. The fee and oath may be submitted after filing. Unlike a provisional application, a non-provisional application may claim priority to an earlier application (i.e. through a conditional or a divisional application). In addition, although rarely used, a non-provisional application may be converted into a provisional application provided a request for conversion is submitted along with a fee. Although international applications filed under the Patent Cooperation Treaty ("PCT") will be discussed later in this study guide, for now you should understand that the PCT sets forth rules that must be complied with for all international applications invoking the PCT. Generally, to receive an international filing date, an international application must contain a specification, any required drawings, at least one claim, and designate at least one Contracting State.

Signature

A peculiarity to the appeal process is that the notice of appeal, unlike most other papers, does not need to be signed. It should be noted that the elimination of the requirement to sign a notice of appeal does not affect the requirements for other papers, such as an amendment submitted with the notice, or for other actions contained within the notice, for example, an authorization to charge fees to a deposit account or to a credit card.

Chapter 1800 - Patent Cooperation Treaty

A person seeking patent protection in several countries has several options. First, the applicant may file separate patent applications directly with the desired countries. Second, an applicant may file a patent application in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property) and then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving the applicant the benefit in all those countries of the filing date of the first application. Lastly, the applicant may file an application under the Patent Cooperation Treaty ("PCT"), which is simpler, easier, and more cost effective than either of the other two options. The PCT is an international treaty, administered by the World Intellectual Property Organization ("WIPO"), between more than 142 Paris Convention countries, including the United States. Generally speaking, the PCT enables a United Stated applicant to file one application (called an "international application") with the United States Patent Office (called the "Receiving Office") and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant "designates" or "elects." In a similar manner, the PCT enables foreign applicants to file an international application designating the United States of America in their home language in their home Receiving Office and have the application acknowledged as a regular United States national filing. The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of international applications are provided for in the optional PCT Chapter II. Chapter II is optional and should be thought of as an independent proceeding. An applicant may choose to use the PCT under Chapter I for filing, search and publication procedures and leave examination solely up to the patent office of each elected country.

Product-by-Process Claims

A product by process claims is an authorized claim type written in the form of a product but with process limitations. For example, claim 1 below is a product-by-process claim type relating to a lightemitting diode (LED) wafer prepared by a liquid phase epitaxy (LPE) process. Claim 1. A wafer for production of an LED prepared by a process comprising the steps of - (a) providing an n-GaAs single crystalline substrate; (b) contacting the substrate with a melt comprising GaAs and Si in an amount of from 0.1 to 0.5 wt% at a temperature of from 900 to 950EC; (c) cooling the melt while maintaining contact with the substrate at a rate of 5E/min to form a Si-doped GaAs epitaxial layer on the substrate comprising a pn junction; and (d) separating the substrate from the melt. Patentability of a product-by-process claim is based on the product itself and does not depend on its method of production. In other words, if the product in the product-by-process claim is the same as or obvious from a prior art product, the claim is unpatentable even though the prior art product was made by a different process. As with inherency, once the examiner issues a rejection based on a product appearing to be substantially identical, the burden shifts to the applicant to show a non-obvious difference.

Chapter 1900 - Protest Under 37 C.F.R. § 1.291

A protest is a procedure in which a third-party files information with the Patent Office that in the protestor's opinion would make the grant of a patent improper. A protest is a rarely used procedure because of its timing requirements. A protest must be submitted prior to the date the application was published or the mailing of a notice of allowance, whichever occurs first. Thus, a protest cannot be used to attack the validity of an issued patent, nor applications that have been published, which as you should recall, usually occurs 18 months after an application's effective filing date. A protest can, however, be filed in a reissue application throughout the pendency of the reissue application up to the mailing of a notice of allowance. Third parties may also submit patents and publications in compliance with the Patent Office's Third Party Submissions procedure under Rule 99. Under Rule 99, third parties may submit only patents and publications relevant to the published application, with no further comment or explanation. In addition, a submission under Rule 99 must be filed within two months from the date of publication of the application, or prior to the mailing of a notice of allowance, whichever is earlier. Thus, the Third Party Submission procedure differs from a protest in three core ways. First, the type of information capable of being submitted differs. During a protest, any information that the protester deems relevant to patentability may be submitted. For third party submissions, only patents and publications may be submitted. Second, during a protest, an applicant may provide an explanation of why the protestor believes the submitted information is relevant. For third party submissions, no explanation is permitted. Finally, the timing for a third party submission differs slightly from a protest. Rule 99 third party submission may be filed within two months after publication, whereas a protest must occur before publication.

Provisional Patent Applications

A provisional patent application does not, in and of itself, afford legal protection to its holder, nor does it receive substantive examination by the Patent Office. Once filed with the Patent Office, however, a provisional patent application prevents all others who conceive of the invention after the filing date of the provisional patent application from obtaining patent protection. Thus, a provisional patent application effectively locks in the filing date and excludes those who may conceive of the invention after the filing date of the provisional application. A provisional patent application is also the quickest way for entrepreneurs and companies to secure "patent-pending" status for their inventions. To obtain legal protection for the subject matter disclosed in a provisional patent, a non-provisional application must be filed within one year of the provisional application's filing date and claim priority to the provisional application. Alternatively, a provisional application can be converted into a nonprovisional application. Filing a provisional patent application, therefore, allows an inventor to wait up to one year to determine if a more costly non-provisional patent application is needed. The Patent Office will assign a filing date to all provisional applications that contain a specification and any required drawing. The specification may, but does not need to, contain patent claims. Lack of the required fee does not prevent a provisional application from obtaining a filing date. The fee may be paid after filing. A provisional application will automatically be abandoned 12 months after its filing date (unless converted into a non-provisional application) and cannot be revived. Unlike a non-provisional application, a provisional application is not entitled to claim priority to an earlier filed application. If an applicant attempts to claim priority to an earlier U.S. or foreign application, the filing receipt will not reflect the improper priority claim. Moreover, if a non-provisional application claims to a provisional application and further states that the provisional application relies upon the filing date of an earlier application, the claim for benefit earlier than the filing date of the provisional application will be disregarded. Finally, a provisional application may be converted into a non-provisional application provided a request for conversion is submitted along with a fee. The request and fee must be submitted prior to the abandonment of the provisional application (i.e., within 12 months from filing).

Rejections Under 35 U.S.C. 102(f)

A rejection under Section 102(f) is proper where the applicant did not invent the subject matter sought to be patented. This requirement is an offshoot of Section 101, which states that "[w]hoever invents...may obtain a patent." The examiner must presume that an applicant is the proper inventor unless there is proof that another made the invention and that applicant derived the invention from the true inventor. Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation. Section 102(f) is yet another favorite topic tested on the registration examination.

Section 1101 - Request for Statutory Invention Registration

A statutory invention registration ("SIR") is a defensive publication used to prevent others from seeking patent protection for the disclosed subject matter. For example, some inventors may not want to go through the effort and expense of obtaining a patent on their invention. The inventors may want to prevent someone else, however, from later obtaining a patent on the invention or an obvious variation of the invention. In such a case, the inventors may register a statutory invention and have it published. Once published, the subject matter disclosed cannot be claimed in a patent application by another person because the publication would constitute prior art. Under Rule 293, an applicant for an original patent may request, at any time during the pendency of the applicant's pending complete application, that the specifications and drawings be published as a SIR. Any such request must be signed by (1) the applicant and any assignee of record or (2) an attorney or agent of record in the application. The request for publication must also include a waiver of the applicant's right to receive a patent on the invention claimed effective upon the date of publication of the statutory invention registration.

Brief

After filing the notice of appeal, the appellate must file a brief explaining the alleged error in the examiner's reasoning within two months from the date of filing the notice of appeal. An appellant's brief must be responsive to every ground of rejection stated by the examiner that the appellant is presenting for review in the appeal. If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board.

Confidential Nature of International Applications

After publication of an application, the Patent Office will provide the public with copies of, and provide access to, the complete application file wrapper. After publication of an international application designating the U.S. under the Patent Cooperation Treaty ("PCT"), the Patent Office will also make available copies of, and allow access to, those international application files which are kept in the Patent Office. Copies of English language translations of international applications, which were published in a non-English language and which designated the U.S. will also be available to the public.

Chapter 2500 - Maintenance Fees

After the Patent Office issues a patent and the issue fee is paid, what must a patentee do to maintain patent protection throughout the term of the patent? Generally, all that is needed is to pay the three maintenance fees for the patent, if maintenance fees are even required. Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, excluding plant patents and design patents. The Patent Office gives the patentee a 6-month grace period for the payment of each maintenance fee. The grace periods are (1) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment; (2) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment; and (3) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. A maintenance fee paid on the last day of a grace period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted. For example, a patent that issued on January 15, 2009 would have from January 15, 2012 until July 15, 2012 to pay the first maintenance fee without penalty. Maintenance fees for a reissue patent are due based upon the schedule established for the original patent. The filing of a request for ex parte or inter partes reexamination and/or the publication of a reexamination certificate does not alter the schedule of maintenance fee payments of the original patent. In addition, the patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee without filing in the Patent Office evidence of authorization by the patentee to pay maintenance fees. Several questions on the registration examination inquire into the propriety of a third-party paying maintenance fees without the applicant's permission. These payments are always proper. If a patent expires because the maintenance fee and any necessary surcharges have not been paid, the patentee may petition the Director to accept an unavoidably or unintentionally delayed payment.

Chapter 1400 - Correction of Patents: Introduction

After the Patent Office issues a patent, the patent may be corrected in one of the four following ways - (1) by reissue; (2) by issuance of a certificate of correction, which becomes part of the patent; (3) by disclaimer, and (4) by reexamination. The first three ways are discussed in turn in this Chapter, while the fourth way (reexamination) is discussed in Chapter 2200 for ex parte reexamination (initiated by members of the public, but once the members submit their request, they no longer actively participate in the proceedings) and Chapter 2600 for inter partes reexamination (initiated by members of the public and the initiator continues to participate in the proceedings).

New Matter

All amendments to an application must find descriptive basis in the original disclosure (i.e., the disclosure as originally filed, including the original claims and drawings). If the applicant attempts to add a claim not supported in the application as filed, or directly attempts to add subject matter not previously disclosed through an amendment to another part of the specification, the Examiner will issue a rejection or objection based on the introduction of "new matter." In essence, the restriction against adding new matter prevents an applicant from changing the invention from that which was originally disclosed. The Patent Office ensures that the filing date assigned to a particular application includes only material the applicant submitted as of the filing date. When new matter is introduced into the specification, the amendment is objected to under 35 U.S.C. § 132, and a requirement is made to cancel the new matter. If the new matter has been entered into the claims or affects the scope of the claims, the claims affected are rejected under 35 U.S.C. § 112 because the new matter is not described in the application as originally filed.

Handling of Applications and Other Papers Bearing Security Markings

All applications or papers in the Patent Office bearing words such as "Secret" or "Confidential" must be promptly referred to the appropriate Technology Center ("TC") Working Group for clarification or security treatment. Under no circumstances may any such application, drawing, exhibit, or other paper be placed in public records, such as the patented files, until all security markings have been considered and declassified or otherwise explained. In addition, authorized security markings may be placed on the patent application drawings when filed provided that such markings are outside the illustrations and that they are removed when the material is declassified.

Review of Applications for National Security and Property Rights Issues

All applications sent to the Patent Office are reviewed for subject matter that, if disclosed, might impact national security. If the screening reveals that an application may impact national security, the application is referred to the appropriate agencies for consideration of restrictions on disclosure of the application. Provisional applications filed in a foreign language are also screened under these provisions. The Patent Office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language abstract of the information for screening purposes.

Power of Attorney; Acting in a Representative Capacity

Although many practitioners become "of record" in a patent application by having the inventors execute a power of attorney, the Rules do not require a practitioner to submit one. When a registered practitioner (either a patent agent or attorney) signs a paper before the Patent Office in a patent case, the signature constitutes a representation that the practitioner is authorized to act on behalf of the inventors. An applicant may give a power of attorney to one or more patent practitioners, in which case the practitioner becomes "of record." Powers of attorney naming firms of attorneys or agents are not recognized by the Patent Office. A practitioner of record desiring to withdraw from representation must file a petition to withdraw from representation. Finally, it is important to remember that the Patent Office does not communicate with attorneys or agents who have been suspended or excluded from practice. The registration examination contains several questions dealing with the propriety of Patent Office communications with suspended practitioners. Generally, the Patent Office will not communicate with a suspended practitioner unless the suspended practitioner has an ownership interest in the application (e.g., is also a named inventor).

Chapter 1500 - Design Patents Distinction Between Design and Utility Patents

Although rarely tested on the registration examination, you should be aware of three important points about design patents. First, the rules governing utility patents are generally applicable to design patents, as indicated in Rule 151. Second, design patent applications are not included in the Patent Cooperation Treaty ("PCT"), and the procedures followed for PCT international applications are therefore not applicable for design patent applications. Finally, you should be aware of the distinction between utility application and design applications. In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture, and not the article itself. The design for an article consists of the visual characteristics embodied in or applied to an article. Thus, whereas a utility application protects functionality, design applications protect only visual characteristics. In addition, the following differences exist between a design and utility patent application: 1. The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the filing date of the earliest U.S. application to which the patent properly claims priority (excluding provisional applications), while the term of a design patent is 14 years measured from the date of issuance. 2. Maintenance fees are required for utility patents, while no maintenance fees are required for design patents. 3. Design patent applications include only a single claim, while utility patent applications can have multiple claims. 4. Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications, while it is mandatory in design patent applications. 5. An international application naming various countries may be filed for utility patents under the Patent Cooperation Treaty ("PCT"), while no such provision exists for design patents. 6. Foreign priority can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications. 7. Utility patent applications may claim the benefit of a provisional application whereas design patent applications may not. There is no such thing as a provisional design patent application. 8. A Request for Continued Examination ("RCE") may only be filed in utility and plant applications on or after June 8, 1995, while RCE is not available for design applications. 9. Effective July 14, 2003, continued prosecution application ("CPA") practice is only available for design applications. Prior to July 14, 2003, CPA practice was available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000. 10. Utility patent applications filed on or after November 29, 2000 are subject to application publication, whereas design applications are not subject to application publication.

Chapter 1200 - Appeal Introduction

An appeal is a process in which an applicant, patent owner, or third-party seeks review of a Patent Office decision. A preliminary issue is whether the disagreement between the parties is even capable of being appealed. Remember, the line of demarcation between appealable matters for the Board of Patent Appeals and Interferences ("Board") and petitionable matters for the Director should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition, and conversely the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board. Recall the general rule - rejections are appealable and objections are petitionable.

Notice of Appeal

An applicant for a patent dissatisfied with the primary examiner's decision in the second rejection of his or her claims may appeal to the Board for review of the examiner's rejection by filing a notice of appeal and the required fee within the time period provided. A notice of appeal may be filed for an application after any of the claims has been twice rejected, regardless of whether a final rejection was issued. Moreover, the limitation of twice rejected does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then the applicant may file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. This is an often tested fact pattern for questions appearing on the registration examination.

Admissions as Prior Art

An applicant's statement in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art. Thus, prosecutors should be careful when labeling subject material as "prior art" because such as admission may be used against the applicant either by the examiner during prosecution or in litigation. It is important to note that merely listing a reference in an information disclosure statement ("IDS") is not an admission that the reference is prior art against the claims. Remember, the filing of an IDS only means that the applicant believes that the information submitted in the IDS is material to patentability - no inference is drawn as to its applicability as prior art.

Section 711 - Abandonment of Patent Application

An application becomes abandoned if applicant fails to reply to an Office Action within the maximum statutory period (i.e., 6 months). If a shortened statutory period for reply is provided, the application is not abandoned until the time allowed for an extension has elapsed (i.e., 6 months from the action). Abandonment may result from either failure to reply within the statutory period or insufficiency of reply. Recall that an applicant must specifically address each of the examiner's rejections and objections in order for a reply to be classified as sufficient. When a reply is a good faith attempt to advance prosecution of the application, the applicant may be given a new time period for reply to supply the omission. When an amendment is filed after the expiration of the statutory period, the application is abandoned and the remedy is to petition to revive it. A petition to revive may be appropriate if applicant's failure to reply was either unavoidable or unintentional.

Assignment of Record

An assignment can be made of record in the Patent Office in two different ways, for two different purposes. First, an assignment can be recorded in the assignment records of the Patent Office. Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording the assignment is merely a ministerial act - the Patent Office is simply recording what is provided and not determining the validity of the assignment or ownership of the patent. Second, an assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step is necessary to permit the assignee to "take over" prosecution in the application, patent, or other patent proceeding. For example, an assignee of a pending patent application may desire to take over the prosecution of the application and grant a new practitioner power to prosecute the application because of dissatisfaction with the previous practitioner. This may occur before the application is published. Not wanting the assignment to be a public record, the assignee may make the assignment of record in the file of application as opposed to recording the assignment. Thus, the assignment is of record, and the assignee may take over prosecution.

Chapter 2100 - Patentability: Patent Subject Matter Eligibility

An invention cannot be patented unless is falls within one of the statutory classes as enumerated in Section 101. Accordingly, only processes, machines, manufacturers, and compositions of matter may be patented. The Patent Office is not authorized to issue patents on inventions falling outside of these statutory classes of subject matter. Although the Supreme Court once stated that the expansive language of Section 101 encompasses "anything under the sun that is made by man," some inventions clearly fall outside statutory subject matter. For example, abstract ideas, laws of nature, natural phenomena, scientific truths, and mathematical expressions are not patentable. However, a system embodying such subject matter may indeed be patentable. For example, Newton's Theory of Universal Gravitation states that two objects will attract each other with a force proportional to their masses and inversely proportional to the square of distance between them. Although a claim directed solely to this equation will not be patentable, a machine that applies this formula in a novel, non-obvious, and useful way, may very well be patentable. This is because machines are statutory subject matter and can be patented. Thus, a law of nature or a mathematic equation cannot be directly patented, but methods and products utilizing abstract ideas, natural phenomena, and laws of nature to perform a real-world function may very well be patentable. A recent topic of interest has been the patentability of business methods. Business methods patents are a class of patents which disclose and claim methods of doing business. Generally, business methods relate to industries that utilize technology to automate a process, such as the e-commerce, insurance, banking, finance, and tax compliance industries. In 2008, the Court of Appeal for the Federal Circuit reiterated that the "machine-or-transformation test" is the appropriate test for patent-eligible subject matter for business methods. Under this test, a business method is patentable if it (1) is tied to a particular machine or apparatus or (2) transforms a particular article into a different state or thing. In other words, if a method is either tied to a particular machine or transforms some object, it is patentable.

General Principles Governing Utility Rejections

An invention must be novel, useful, and non-obvious before the Patent Office will issue a patent covering the invention. Utility addresses this second requirement of usefulness. Claims are rejected under Section 101 for failing to comply with the utility requirement in two general circumstances. First, if the applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent, the examiner may issue a rejection based on lack of utility. The second type of deficiency arises in the rare case where an applicant's assertion of specific and substantial utility for an invention is not credible. Inventions held to lack utility because it is not believable include (1) an invention asserted to change the taste of food using a magnetic field, (2) a perpetual motion machine, (3) a cold fusion process for producing energy, (4) a method for increasing the energy output of fossil fuels upon combustion through exposure to a magnetic field; (5) uncharacterized compositions for curing a wide array of cancers; and (6) a method of controlling and reversing the aging process. Although this list is by no means exhaustive, a common theme is present in each of these purported inventions - experts in the relevant subject matter have repeatedly shown the claimed utility to be unobtainable. These inventions therefore do not satisfy the utility requirement because they are not credible. The utility requirement can be divided into three component parts - specific, substantial, and credible. In other words, an applicant satisfies the utility requirement of section 101 if the applicant puts forth a specific, substantial, and credible use for the invention, or a specific, substantial, and credible is readily apparent from the patent application's disclosure. It is important to note that an applicant does not need to explicitly set forth a utility in the patent application if one of ordinary skill in the art would readily recognize a utility. It is also important to note that a rejection based on lack of utility under Section 101 also creates a deficiency under Section 112 for failure to enable the invention. This should make sense because if an invention is in fact useless, an applicant's specification cannot teach one how to use it. As such, a rejection properly imposed under Section 101 for lack of utility should be accompanied with a rejection under Section 112 for failure to enable the invention. This does not necessary work the other way around. That is, a rejection under Section 112 for lack of enablement does not necessarily mean the invention lacks utility. For example, if an applicant has claimed a process of treating a certain disease with a certain compound and provided a credible basis for asserting that the compound is useful in that regard, but to actually practice the invention as claimed a person skilled in the relevant art would have to engage in undue experimentation, the claim may be defective under Section 112, but not under Section 101.

Reissue

An issued patent may be corrected or amended in any of the following four ways - (1) by reissue; (2) by the issuance of a certificate of correction, which becomes a part of the patent; (3) by disclaimer; and (4) by reexamination. A reissue application is filed to correct an error in the patent which was made without deceptive intent, and as a result of the error, the patent is wholly or partly invalid. Again, there must be at least one error in an issued patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be reissued. The most common reasons for filing a reissue application are - A. The claims are too narrow or too broad; B. The disclosure contains inaccuracies; C. The applicant failed to or incorrectly claimed foreign priority; and D. The applicant failed to make reference to or incorrectly made reference to prior co-pending applications. An applicant's failure to timely file a divisional application covering a non-elected invention following a restriction requirement is not considered an error that renders a patent wholly or partly invalid. Thus, failure to timely file a divisional application is not correctable through the reissue process. 35 U.S.C. § 251 forbids the granting of a reissue "enlarging the scope of the claims of the original patent" unless the reissue is applied for within 2 years from the grant of the original patent. This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Any impermissibly broadened claim may be rejected under Section 251. The applicant may broaden claims after 2 years from the grant of the original patent only if intent to broaden the claims is conveyed before the 2 year deadline. For example, if the applicant applied for a reissue application within two years from the grant of the original patent and indicated in the declaration that the scope of the claims are too narrow and need to be broadened, the applicant is allowed to broaden the claims even after the two year deadline because he effectively conveyed his intent to broaden before the deadline. This is an often tested concept, as indicated in the list of recently tested questions provided at the end of this guide.

Examination of Secrecy Order Cases

Applications under a secrecy order are examined for patentability (as in other cases), but these applications may not be passed to issue, nor will an interference be declared. In case of a final rejection, while such action must be properly replied to, and an appeal, if filed, must be completed by the applicant to prevent abandonment, such appeal will not be set for hearing by the Board of Patent Appeals and Interferences ("Board") until the secrecy order is removed. When an application under a secrecy order is in condition for allowance, a Notice of Allowability is issued, thus closing the prosecution. Any amendments received thereafter are not entered or responded to until such time as the secrecy order is rescinded. At such time, amendments which are free from objection will be entered. Otherwise, the amendments are denied entry. Thus, it is important to note that applications under a secrecy order will not be published, issued, or reviewed by the Board for the purposes of an interference or an appeal.

Chapter 1600 - Plant Patents: Introduction

As with design patents, plant patents are also infrequently tested on the registration examination. Patent protection is entitled for patents only if the plant is asexually reproduced. Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, and inarching. Plants capable of sexual reproduction are not excluded from consideration if they have also been asexually reproduced. Conversely, a plant that has not been asexually reproduced cannot be patented. As with design application, plant application are generally subject to the same rules as utility applications. In addition, a plant patent issuing from an application filed on or after June 8, 1995 has the same term as a utility patent (20 years after the filing date of the earliest U.S. application to which the patent properly claims priority, excluding provisional applications).

The International Searching Authority

By 13 months from the priority date of an international application, the Receiving Office prepares and transmits a copy of the international application (called the "search copy") to the International Searching Authority ("ISA") and forwards the original application (called the "record copy") to the International Bureau ("IB"). A second copy of the international application (called the "home copy") remains in the Receiving Office. Once the Receiving Office has transmitted copies of the application, the ISA becomes the focus of international processing. The basic functions of the ISA are to conduct a prior art search of inventions claimed in international applications. For most applications filed with the United States Receiving Office, the applicant may choose the U.S. Patent Office, the European Patent Office, or the Korean Intellectual Property Office to act as the ISA for the international application. The ISA normally issues an international search report ("ISR") and a written opinion within 3 months from the receipt of the search copy, which is usually about 16 months after the priority date of the application. Once the international search report and written opinion are created, the ISA transmits a copy of each to the applicant and the IB, at which time the focus of international processing shifts to the IB.

Section 715 - Swearing Back of Reference - Affidavit or Declaration Under 37

C.F.R. § 1.131 A Rule 131 affidavit or declaration is used with the "swearing back" procedure. A careful reading of Sections 102 and 103 reveal that the applicant's invention date is in certain circumstances the relevant date for novelty and non-obviousness purposes. Because most applicants do not file an application on the date of their invention (and the patent laws do not require such diligence), a Rule 131 affidavit or declaration allows an applicant to swear behind prior art activity that occurs after the applicant's invention date but before the filing date assigned to an application. Understanding when a Rule 131 affidavits or declarations can be used is an important concept often tested on the registration examination. Generally, a Rule 131 affidavit or declaration may be used in the following two circumstances - 1 To antedate a reference or activity that qualifies as prior art under Section 102(a) but not under 35 U.S.C. 102(b) or 102(d). For example, where the prior art is less than 1 year prior to applicant's effective filing date, a Section 131 affidavit may be proper. If the prior art reference is a United States patent or patent application publication, the reference may not be antedated if it claims the same patentable invention. Under such a case, an interference or double patenting rejection may be appropriate, depending on whether the prior art reference is from the same applicant (where a double patenting rejection may be appropriate) or another applicant (where an interference may be declared). 2 To antedate a reference that qualifies as prior art under Section 102(e), where the reference has a prior art date under Section 102(e) prior to applicant's effective filing date, and teaches but does not claim the same patentable invention. There are therefore many circumstances when a Rule 131 affidavit or declaration is inappropriate. For example, where the prior art publication is more than 1 year prior to applicant's or patent owner's effective filing date, thereby constituting a "statutory bar" under Section 102(b), a Rule 131 affidavit or declaration is inappropriate. Or where the reference is a foreign patent for the same invention to the same applicant issued prior to the filing date of the domestic application on an application filed more than 12 months prior to the filing date of the domestic application (a Section 102(d) bar). In addition, where an applicant has clearly admitted on the record that subject matter relied on in the reference is prior art, Section 131 is inappropriate. Thus, the circumstances where a Rule 131 affidavit is appropriate are vastly outweighed by the situations where the affidavit is inappropriate. Again, Rule 131 cannot be used to overcome a statutory bar (i.e., Section 102(b) or 102(d)), nor can it be used to overcome a patent reference claiming the same invention (i.e., where an interference or double patenting rejection is appropriate). Because the Leahy-Smith America Invents Act ("AIA") switched the U.S. to a first to file system, Rule 131 cannot be used to swear behind a prior art reference for those applications subject to the AIA's first to file provisions. Please see Chapter 28 for additional information on the AIA.

Section 714 - Amendments, Applicant's Action

Depending upon when an applicant amends a pending application, different requirements are in effect. Generally, all amendments may be grouped into the following three categories - 1. Amendments made before a first Office Action (also called a "preliminary amendment") and before or after any subsequent Office Action not containing a final rejection; 2. Amendments made after a final rejection; and 3. Amendments made after the date of filing a notice of appeal. The standard amendment occurs under the first category - before and after a non-final rejection. All amendments must be in writing, signed by the applicant or his representative, and address every rejection and objection stated by the examiner. If a reply to an Office Action fails to address an objection or rejection, the reply is improper. As you should recall, a reply to an Office Action is due within six months from the date of the Office Action, or any shortened statutory period contained in the Office Action. After a final rejection has been entered, the applicant has three choices. First, the applicant may abandon the application. Second, the applicant may submit a request for continued examination ("RCE") which reopens prosecution, effectively turning a final rejection into a non-final rejection upon payment of the fee. Lastly, the applicant may appeal the examiner's decision to the Board of Patent Appeals and Interferences. Amendments will only be accepted after final rejection in three limited circumstances. First, an amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office Action. Second, an amendment presenting rejected claims in better form for consideration on appeal may be admitted. Third, an amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented. Absent these limited circumstances, an amendment after a final rejection is improper. Be aware of these three exceptions to the general rule that prohibits amendments after a final rejection. To file an amendment, the applicant submits a document containing several sections. Each section of the amendment document (e.g., Specification Amendments, Claim Amendments, Drawing Amendments, and Remarks) must begin on a separate sheet to facilitate separate indexing and electronic scanning. The Patent Office is also authorized to make amendments (with the applicant's consent) to the specification, including the claims, of any pending application by examiner's amendments in the interest of expediting prosecution.

Statutory Double Patenting

Double patenting may occur between an issued patent and one or more applications or between copending applications. For example, the examiner may become aware of two co-pending applications that were filed by the same inventive entity, or by different inventive entities having a common inventor or assignee, that would raise an issue of double patenting if one of the applications became a patent. Where this issue can be addressed without violating the confidential status of applications, the examiner may issue a "provisional" rejection on the ground of double patenting. A provisional double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in the applications or the rejection is the only rejection remaining in at least one of the applications. The examiner may then allow one of the applications, which would turn the provisional double patenting rejection into a statutory double patenting rejection.

Avoiding A Double Patenting Rejection

Double patenting rejections can be classified as either statutory or non-statutory (obviousness-type). A rejection based on the statutory type of double patenting can be avoided by amending the conflicting claims so that they are not co-extensive in scope. Where the conflicting claims are in one or more pending applications and a patent, a rejection based on statutory type double patenting can also be avoided by canceling the conflicting claims in all the pending applications. Where the conflicting claims are in two or more pending applications, a provisional rejection based on statutory type double patenting can also be avoided by canceling the conflicting claims in all but one of the pending applications. A terminal disclaimer is not effective in overcoming a statutory double patenting rejection. A rejection based on a non-statutory type of double patenting can be avoided by filing a terminal disclaimer in the application or proceeding in which the rejection is made. A terminal disclaimer is a statement filed by an owner of a patent or a patent application that is used to disclaim or dedicate a portion of the entire term of all the claims of a patent. Terminal disclaimers are more fully discussed in later sections of this guide. Remember, the "swearing back" procedure of Section 131 cannot be used to overcome any type of double patenting rejection because the rejection involves a patent reference where the same invention is involved. For the non-statutory type of double patenting, a terminal disclaimer will overcome the rejection. For statutory double patenting, the applicant must amend or cancel the conflicting claims.

Claim Interpretation; Broadest Reasonable Interpretation

During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." This broad standard helps ensures that a claim, once issued, will not be interpreted more broadly than is justified. The standard used by courts to interpret issued claims is notably different. Courts construe an issued claim as one of ordinary skill in the art would construe the claim at the effective filing date of the patent and in light of the specification and other evidence. Thus, the Patent Office uses a notably broader standard when examining patent claims than courts use to construe issued claims. Although seemingly inconsistent, if one keeps in mind the roles of the Patent Office and the courts, this apparent inconsistency is easily resolved. During prosecution before the Patent Office, an applicant has ample opportunity to amend the claims and precisely set forth what is and is not protected. During litigation, a court is determining what the now fixed claims mean to one of ordinary skill in skill the art. Remember, patent protection is granted to an applicant in exchange for a full and complete disclosure of the invention to the public. Therefore, in essence, a court is simply trying to ascertain what the patent realistically discloses to the public. Two additional features of claim construction are also important. First an applicant is entitled to be his or her own "lexicographer" by clearly setting forth a definition of a term that is different from its ordinary and customary meaning. For example, if an applicant specifically sets forth a definition for the term "vacuum," the claims should be construed with the applicant's specified definition of "vacuum." Second, although courts and the Patent Office construe a claim in light of the specification, it is improper to import limitations from the specification into the claims, thereby narrowing the scope of the claims. Claim 1. A system comprising A, B, and C. It would be improper for a court, or the Patent Office for that matter, to construe claim 1 as requiring A, B, C, and D, even if D is sometimes described in conjunction with elements A, B, and C in the specification. On the other hand, if the specification always states that element D must be used with elements A, B, and C, and the only embodiment contemplated by the application contains element D, then it would be permissible to construe the claim as requiring all four elements. A tougher case occurs when the specification sometimes includes element D and all of the drawings appear to require element D. In such a case, it is unclear whether one of ordinary skill in the art would understand that element D is required in claim 1. In such a case, other evidence, such as the prosecution history and testimony by experts in the field, will likely determine if element D is construed to be part of claim 1.

Chapter 2200 - Citation of Prior Art and Ex Parte Reexamination of Patents: Introduction

Ex parte reexamination of patents became available in 1981. As you should recall, there are two general types of reexamination - ex parte and inter partes. Ex parte reexamination is initiated by a member of the public, but once the requestor submits her request, she no longer actively participates in the proceedings. Inter partes reexamination is also initiated by members of the public, but unlike ex parte reexaminations, the initiator continues to participate in the proceedings. Reexamination can be used by the applicant to correct defects in an issued patent or by others who wish to have a patent reexamined in light of written prior art. To request a reexamination, the requestor submits a request and pays the required fee. The request includes a prior art citation that concisely describes the alleged defects in the patent. Pursuant to Section 301, prior art citations in reexaminations are limited to written prior art consisting of patents or printed publications. It is therefore important to note that allegations of prior use, inequitable conduct, and other information not based on written prior art is not a valid grounds for reexamination. In addition to a listing of relevant prior art, an explanation is required of how the person submitting the prior art considers it to be pertinent to the patent, as well as an explanation of why it is believed that the prior art has a bearing on the patentability on the claims of the patent. The prior art citation must therefore, at a minimum, contain some broad statement of the pertinence and applicability of the art submitted to the patentability of the claims of the patent for which the prior art citation is submitted. The reexamination statute and rules permit any person to file a request for an ex parte reexamination if the request satisfies the above conditions and the applicable fee is paid. Pursuant to Section 303, the Patent Office initially determines if a substantial new question of patentability is presented by prior art in the reexamination request. If this is so, reexamination moves forward in an expedited fashion. Once initiated, the reexamination process is very similar to regular examination procedures in patent applications. The basic characteristics of ex parte reexamination are as follows: Anyone can request reexamination at any time during the period of enforceability of the patent; Prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of Sections 102 and 103; A substantial new question of patentability must be presented for reexamination to be ordered; If ordered, the actual reexamination proceeding is ex parte in nature; Decision on the request must be made no later than 3 months from its filing, and the remainder of proceedings must proceed with "special dispatch" within the Office; If ordered, a reexamination proceeding will be conducted to its conclusion, at which time the Patent Office will issue a reexamination certificate; The scope of a claim cannot be enlarged by amendment during reexamination; and 8. All reexamination and patent files are open to the public.

Rejections Under 35 U.S.C. § 102(a)

Finally, if 35 U.S.C. § 102(e) is inapplicable, the examiner should consider a rejection under 35 U.S.C. § 102(a). For 35 U.S.C. § 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant's own work, or derived from the applicant's own work. This section discusses 102 rejections based solely on printed publications. As you can probably tell from a quick reading of Section 102, various other types of prior art are implicated. For example, in addition to printed publications, Section 102(b) also deals with "public use" and "sale." These other types of Section 102 rejections are discussed more fully in later sections of this guide. Again, please note that the Leahy-Smith America Invents Act ("AIA") drastically changed Section 102. However, because Section 102 under the AIA only applies to applications with effective filing dates on or after March 16, 2013, the former Section 102 (as provided above) still applies to applications with effective filing dates before March 16, 2013. Therefore, it is important to first determine whether an application will be examined under the former Section 102 or under the new Section 102, as found in the AIA. These changes are covered in the last part of Section 706.02.

Applicable Time Limits for Priority Claims

For applications claiming priority to an earlier-filed U.S. application, the application must be "copending" with the earlier-filed application to be entitled to priority. This co-pendency requirement essentially means that a second application must be filed before the abandoning or patenting of the first application to which it seeks to claim priority. For example, a non-provisional application that claims priority to a provisional application must be filed before the provisional application becomes abandoned, which is 12 months after the filing date of the provisional application. For applications claiming priority to a chain of earlier filed applications, the co-pendency requirement is satisfied it at least one of the applications in the chain is still pending. For example, if application X is a continuation of application Y, which is a continuation of parent application Z, the co-pendency requirement is satisfied if application X is filed while application Y is still pending, regardless of whether application Z has gone abandoned or been patented. As long as one application in the priority chain is still pending, the copendency requirement is satisfied. The co-pendency requirement is a "hard" deadline. If the second application is not filed within the applicable time limit, the later-filed application will not receive priority. This is in contrast to the requirement for a specific reference (just the referencing text in the application, not the filing itself) to the first application, which is a "soft" deadline. The Patent Office will allow an application to claim priority to an earlier filed application even if the specific reference to the earlier-filed application is made after the applicable time limits. In such a case, the applicant files a petition for an unintentionally delayed priority claim that, if granted, allows the application to receive the benefit of the earlier filing date. Finally, priority claims to foreign application are treated like claims to provisional applications. To be eligible for priority, the application claiming priority must be filed with the Patent Office within 12 months of the earlier filed foreign application.

Final Rejection

Generally speaking, an examiner may issue two types of rejections - (1) non-final and (2) final rejections. A second or any subsequent action on the merits shall be "final," except where the examiner introduces a new ground of rejection. Even where the examiner issues a new ground of rejection, if the rejection is necessitated by applicant's amendment of the claims, or based on information submitted in an information disclosure statement ("IDS"), the rejection may be made final. In other words, a final rejection is proper when applicant's amendment is the cause of the new ground of rejection or the new rejection is based on information submitted by the applicant in an IDS. The claims of a new application may be finally rejected in the first Office Action in those situations where the new application is a continuing application of, or a substitute for, an earlier application and all claims of the new application are drawn to the same invention claimed in the earlier application. Several questions in the registration examination test bank are directed at the permissibility of issuing a final Office Action when it is the first Office Action in a continuing application. The answer to these questions is generally that a final rejection is allowed because the claims could have been finally rejected if entered in the parent application. Any question as to the premature nature of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the substance of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Board of Patent Appeals and Interferences. It is reviewable by petition only.

Dependent Claims

Generally, claims come in two forms - (1) independent claims and (2) dependent claims. An independent claim does not refer to any other claim. For example, a claim beginning with "A system for manufacturing a tent pole, comprising" would be an independent claim. Conversely, a claim beginning with "The system of claim 1 further comprising" would be a dependent claim. By definition, a dependent claim must refer back to and further limit another claim. Claim 1. A system for manufacturing a tent pole comprising - A, B, and C. Claim 2. The system of claim 1 further comprising D and E. In the preceding example, claim 1 is an independent claim, and claim 2 is a dependent claim. Claim 1 comprises elements A, B, and C. Claim 2 comprises elements A, B, C, D, and E because it is dependent on claim 1, and thus contains all the elements of claim 1. Although infrequently used in practice, a multiple dependent claim is a dependent claim which refers back (in the alternative) to more than one preceding independent or dependent claim. For example, the following is an example of a multiple dependent claim - Claim 3. A system according to claims 1 or 2, further comprising F and G. A multiple dependent claim must refer to more than one claim in the alternative. If the claim does not refer to other claims in the alternative, the claim is improper. For example, the following claim is improper - Claim 4. A system according to claims 1 and 2, further comprising F and G. Because claim 4 does not refer to other claims in the alternative, it is improper and will be objected to by the Examiner. Similarly, claim 5 below is also improper. Claim 5. A system according to claims 1-2 further comprising F and G. Claim 5 also does not refer to claims 1 and 2 in the alternative. However, if the claim was phrased as follows, it would be proper - Claim 6. A system as in one of claims 1-2, further comprising F and G. As with claim 3, claim 6 refers to multiple claims in the alternative, and is therefore a proper multiple dependent claim. Remember, the key when evaluating the propriety of a multiple dependent claim is whether the claim refers back to other claims in the alternative (i.e., one at a time).

Correspondence - With Whom Held

Generally, only the patent practitioner of record, a patent practitioner acting in a representative capacity, or all of the applicants (all co-inventors must act together) may file papers with the Patent Office. An assignee may also file papers if he has taken over the prosecution of the application. Remember, an assignee of the entire interest in the application may take over prosecution if the assignee is "of record," which requires either recordation of the assignment with the Patent Office or submission of the assignment in the application file. In addition, a partial assignee may also take over prosecution if agreed to by the inventors who have not assigned their rights in the application or all other partial assignees.

Completeness of Original Application

If a non-provisional application does not include a specification describing the invention with at least one claim and a drawing, if necessary, or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Initial Patent Examination (OIPE) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected. The component parts of a non-provisional application necessary to obtain a filing date are - (1) an adequate specification describing the invention; (2) at least one claim; and (3) drawings, if necessary. Drawings are required if necessary for the understanding of the subject matter sought to be patented. Generally, if a drawing is referenced in the application papers but not included, the Patent Office will not assign a filing date to the application and require the applicant to submit the missing drawings before a filing date is assigned. The component parts of a provisional application necessary to obtain a filing date are - (1) an adequate specification and (2) drawings, if necessary. As with non-provisional applications, drawings are required if necessary to understand the subject matter sought to be patented. For both non-provisional and provisional applications, if any of the required components are missing, the Patent Office will notify the applicant and the filing date will be the date of receipt of the missing part(s). If an oath or declaration was executed and filed with the incomplete application, a supplemental oath or declaration by the inventor is required in some circumstances. The supplemental declaration must identify the missing item and indicate, as appropriate, that it accurately claims, describes, or illustrates applicant's invention. Lastly, if unsatisfied with the Patent Office's decision regarding a filing date, the applicant may file a petition (with the appropriate fee) for review of the Patent Office's refusal to assign a filing date.

Death, Legal Incapacity, or Unavailability of Inventor

If an inventor is dead, insane, legally incapacitated, refuses to execute an application, or cannot be found, an application may be made by someone other than the inventor. The commonly tested fact pattern on the registration examination is when one joint inventor cannot locate the other joint inventor. In such a case, an application may be made by the one joint inventor on behalf of the other joint inventor if a petition and fee are included, along with the last known address of the missing inventor. A minor inventor (an inventor under the age of 18) may execute an oath or declaration as long as the minor is competent to sign (i.e., understands the document that he or she is signing). A legal representative is not required to execute an oath or declaration on the minor's behalf. This is another commonly tested fact pattern on the registration examination. Finally, employees of the Patent Office who are inventors are not permitted to sign an oath or declaration for a patent application during the period of their employment with the Patent Office and one year thereafter. These Office employee-inventors will be treated as being unavailable to sign the oath or declaration.

Notice of Allowance

If the Examiner's believes that the claims and application are in a condition suitable for issuance as a patent, a notice of allowance ("NOA") is issued. The NOA indicates that the application has been examined and meets the requirements for patenting. The NOA is not a grant of patent rights. Rights accrue only after the patent is officially issued, which generally occurs three months from the NOA if all fees have been paid. Where an amendment, even though prepared by applicant prior to allowance, does not reach the Patent Office until after the NOA has been mailed, the Patent Office has complete discretion as to whether or not to enter the amendment. After an applicant has been notified that the claims are all allowable, further prosecution of the merits of the application is a matter of grace and not of right. The issue fee must be submitted within three months of the NOA. If any payment required is not timely made but is submitted with the fee for delayed payment, and the delay in payment is shown to have been unavoidable, it may be accepted by the Director as though no abandonment or lapse had ever occurred. Intentional failure to pay the issue fee within the 3 months does not amount to unavoidable or unintentional delay in making payment. The Director has no authority to extend the time for paying the issue fee for an intentional failure. If the issue fee is due on a weekend or holiday, the deadline is the next business day. Payment of the issue fee will be accepted only from the applicant, assignee, or a registered attorney or agent. This is in contrast to maintenance fees, which are accepted from any member of the public. Maintenance fees are discussed later in this guide. Applications may be withdrawn from issue for further action at the initiative of the Patent Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition including a fee and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary.

Chapter II Examination

If the applicant desires the optional Chapter II examination, the applicant must make a "Demand" for international preliminary examination, which must be filed within 22 months of the international application's priority date with the appropriate International Preliminary Examining Authority ("IPEA"). The candidates for IPEA are the same as those discussed for the ISA. For example, for applications filed with the United States Receiving Office, the applicant may choose the U.S. Patent Office, the European Patent Office, or the Korean Intellectual Property Office to act as the IPEA for the international application. The IPEA also forwards a copy of the Demand to the IB. The IB then notifies the various designated countries that the application has entered Chapter II. The IPEA normally starts the examination process when it is in possession of - (1) the demand; (2) the fee due; (3) a translation of the application and other papers, if required; (4) the ISA's international search report; and (5) the ISA's written opinion. The IPEA utilizes the ISR and written opinion and also conducts further examination of the application before issuing an "International Preliminary Report on Patentability," which presents the IPEA examiner's final position as to whether each claim is "novel," involves "inventive step," and is "industrially applicable." The International Preliminary Report on Patentability is generally issued from the IPEA by 28 months from the priority date. A copy of the international preliminary examination report is then sent to the applicant and to the IB. The International Bureau sends a copy of the international preliminary examination report to each Designated Office, which concludes the PCT process. During the PCT process, an applicant may amend his application in one of two ways. Under Article 19, an applicant is entitled to one opportunity to amend the claims of the international application in the international phase. Any amendment to the claims under Article 19 must be filed with the International Bureau (not with the Receiving Office or the ISA). The amendments must also be in the language in which the international application was filed (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish), which is also the language in which the application will be published by the International Bureau at the WIPO. The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (that is, the date of mailing) of that report and opinion, whichever expires later. If an applicant files a demand for international preliminary examination, thereby requesting Chapter II examination, the applicant has a second chance to amend his international application under Article 34. The Article 34 amendment should accompany the chapter II demand. It is important to note that an applicant may only amend the claims under Article 19. Under Article 34, the applicant may amend the claims, description, and the drawings. After the PCT procedure concludes, the applicant may pursue patent protection directly before the national (or regional) patent offices of the countries that were designated. This procedure is called entering the "national stage." Remember, Chapter II is optional. Most applicants choose to proceed directly from Chapter I to the national stage. In such a case, the designated countries will only receive the ISR and written opinion. For applicants that elect Chapters II, the international preliminary examination report is also provided to the designated countries upon entering the national stage. The applicant must then complete the requirements for entering the national stage for each designated country by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application. However, patent offices in some countries provide a longer period to complete the requirements. Do not worry if this process seems confusing. Take your time and re-read this section if you are unfamiliar with the PCT process. The registration examination will typically include several questions related to PCT procedures. Therefore, it is important to have a basic understanding of the PCT procedure.

35 U.S.C. § 102(e)

If the publication date of the reference is too recent for 35 U.S.C. § 102(b) to apply, then the examiner considers 35 U.S.C. § 102(e). Section 102(e) applies to only patent references (i.e., patent publications and issued patents). To reject a claim under 35 U.S.C. § 102(e), the inventive entity of the application must be different than that of the patent reference. Where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under 35 U.S.C. § 102(e) is applicable even if there are some inventors in common between the application and the reference.

Preissuance Submissions by Third Parties

In accordance with the Leahy-Smith America Invents Act ("AIA"), the Patent Office has revised its rules regarding the submission of prior art by third parties before issuance of a patent. Recall that before the AIA, third-parties were only able to submit prior art to the Patent Office in accordance with Rule 99 or via the protest procedure. The new preissuance submission provision under the AIA provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Patent Office, for consideration and inclusion in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application. A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted, and must be submitted within a certain statutorily specified time period. The third party must also submit a fee as prescribed by the Director, and a statement that the submission complies with the statutory provision. The Patent Office has also revised the rules of patent practice to make related aspects of the existing protest rule more consistent with the new rule implementing the preissuance submissions by third parties provision. Further, the Patent Office has eliminated the provision providing for public use proceedings. Preissuance submissions of patents, published patent applications, or other printed publications must be made in patent applications before the earlier of - (a) the date a notice of allowance is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published by the Patent Office, or (ii) the date of the first rejection of any claim by the Examiner during the examination of the application. It is important to remember that only printed publications may be submitted to the Patent Office under this new procedure, which became effective on September 16, 2012 and applies to all applications whenever filed (as long as the submission is made within the time limits discussed above). This new procedure replaces Rule 99, which did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever was earlier.

AIA Changes to Inventor's Oath or Declaration

In accordance with the Leahy-Smith America Invents Act ("AIA"), the Patent Office has revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention (the "assignee") to file and prosecute an application for patent as the applicant. The new rules also permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor. Formerly, a person to whom the inventor had assigned an invention could file and prosecute an application for patent, but the inventor was considered the applicant. The Patent Office has also revised the rules of practice to permit applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Under the new rules, an applicant may submit the inventor's oath or declaration on filing of the application or may postpone submission of the inventor's oath or declaration until the Patent Office issues a Notice of Allowability, provided that the applicant has filed a signed application data sheet identifying the inventive entity. In addition, the Patent Office has revised the rules of practice to provide for the filing of a substitute statement in lieu of an oath or declaration by an inventor if the inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort, or is under an obligation to assign the invention but has refused to execute an oath or declaration. Finally, the Patent Office has also revised the rules of practice to remove the provisions which set forth "without any deceptive intention" requirements. The Patent Office has further revised the rules pertaining to reissue practice to eliminate the requirement for a supplemental reissue oath or declaration, and to require that the inventor's oath or declaration identify a claim that the application seeks to broaden if the reissue application seeks to enlarge the scope of the claims of the patent. Please note that the new inventor's oath and declaration provision in the AIA only applies to applications actually filed on or after September 16, 2012.

Rejections Not Based on Prior Art

In addition to rejections based on prior art under 35 U.S.C. §§ 102 and 103, the examiner may reject a claim based on various other provisions, most commonly 35 U.S.C. §§ 101 and 112. Section 101 defines what type of subject matter may be patented. For example, certain types of inventions, such as mathematical principles that are divorced from any tangible structure are not directed to statutory subject matter, as defined by Section 101. Section 101 also contains a utility requirement (i.e., an invention must be useful in order to be patentable). The scope of patentable subject matter and the utility requirement are discussed in Section 706.03(a) below. Section 112 contains three separate requirements - (1) best mode, (2) enablement, and (3) written description. An examiner may also reject a claim for failing to comply with these three requirements, which are discussed in Section 706.03(c).

Non-Statutory Double Patenting

In addition, a non-statutory, double patenting rejection is appropriate where the conflicting claims are not identical, but obvious in light of each other. Such a rejection is sometimes referred to as "obviousness-type double patenting." As will be discussed later in this study guide, filing a terminal disclaimer does not obviate a statutory double patenting rejection, but does obviate a non-statutory double patenting rejection. Claims in commonly owned applications of different inventive entities may also be rejected on the grounds of double patenting. Applications or patents are commonly owned if they were wholly or entirely owned by the same person or organization at the time the claimed invention was made.

Disclosure

In return for a patent, the inventor is required to make a complete disclosure of the invention to the public. This disclosure is referred to as the quid pro quo (from Latin meaning "something for something") of patent protection. The first paragraph of Section 112 contains several distinct requirements for the specification that must be satisfied before the Patent Office will grant a patent. These requirements include (1) the written description requirement; (2) the enablement requirement; and (3) the best mode requirement. Each of these requirements will be discussed more fully later in this guide. For now, you should understand that the disclosure submitted to the Patent Office must meet several hurdles before the Patent Office may issue a patent. The disclosure generally comprises (A) the specification and (B) the drawings. The specification generally contains the following sections - (1) title of the invention; (2) cross-reference to related applications; (3) background of the invention; (4) brief summary of the invention; (5) brief description of the drawing; (6) detailed description of the invention; (7) one or more claims; and (8) an abstract of the disclosure.

Chapter 2300 - Interference Proceedings

Introduction An interference is a proceeding before the Board of Patent Appeals and Interferences (the "Board") to determine priority of invention (i.e., which party first invented the commonly claimed invention). An interference begins when either (1) an applicant "suggests" an interference or (2) the examiner requires the applicant to provoke an interference by adding a claim that will conflict with another's patent or application. Once a patent or application becomes involved in an interference, the Board has jurisdiction over the application or patent file. The examiner may not act on an involved patent or application except as the Board may authorize. The Board retains jurisdiction over the interference until the interference is terminated, which only occurs two months after a final Board judgment in the interference. Priority of invention is determined by the following two rules: The first to conceive and reduce to practice the invention always wins. The first to conceive and the last to reduce to practice wins only if he worked on the invention with reasonable diligence from a date just prior to the other party's conception to the date of his own reduction to practice. During an interference, the party who first files a patent application covering the invention is called the "senior" party, while all other applicants are called "junior" parties. Reduction to practice may be "actual" or "constructive." Constructive reduction to practice occurs when an applicant files a patent application covering the invention. Thus, once an applicant files a patent application covering the invention, he has conceived and reduced to practice his invention. Actual reduction to practice occurs when (1) the party constructed a physical embodiment of the invention or performed the inventive process, and (2) the embodiment or process operated for its intended purpose. The same evidence sufficient for a constructive reduction to practice may be insufficient to establish an actual reduction to practice, which requires that the invention has been sufficiently tested to demonstrate that it will work for its intended purpose. Applicant Suggestion One of the ways to initiate an interference between conflicting claims is for the applicant to suggest an interference. When an applicant suggests an interference, the examiner only reviews the suggestion for formal sufficiency. If the requirements have been met, the matter proceeds to the Board for a determination of priority. Patentee Suggestion Unlike an applicant who has a pending patent application before the Patent Office, a patent holder cannot suggest an interference. A patentee who learns of claims that may potentially conflict with his issued patent may alert the examiner through other means. In particular, the patentee alerts the examiner either through a third-party submission under Rule 99 or a protest under Rule 291, both of which have already been discussed in this guide. In a perfect world, the examiner would uncover the issued patent during his examination of the application. This, however, is not always the case, and the patentee may alert the examiner to one or more issued patents that cover potentially conflicting subject matter. Examiner Suggestion The final way an interference may be initiated is by the examiner. The examiner may require an applicant to provoke an interference by adding a claim that will conflict with another application or patent. This usually occurs when the examiner realizes that another application he is examining is directed towards the same patentable invention, or an obvious variation thereof. Generally, if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then an interference may be proper. If the filing dates are outside of this timeframe, the examiner may issue a provisional Section 102(e) rejection of the claims in the application with the later filing date because the earlier filed application will become prior art under when it is published.

Chapter 2600 - Optional Inter Partes Reexamination

Introduction Reexamination is one of the ways for a patentee to correct a defective patent. In addition, reexamination is also one of the way for a third party to submit prior art for consideration by the Patent Office. As you should recall, there are two general types of reexamination - ex parte and inter partes. Ex parte reexamination is initiated by members of the public, but once the members submit their request, they no longer actively participate in the proceedings. Inter partes reexamination is also initiated by members of the public, but unlike ex parte reexaminations, the initiator continues to participate in the proceedings. Inter partes reexamination provides third party requesters with a greater opportunity to participate in reexamination proceedings than ex parte reexamination, while maintaining most of the features which make reexamination a desirable alternative to litigation, such as its low cost and expedited procedure. In addition, inter partes reexamination also provides third party requesters with appeal rights to appeal to the Board of Patent Appeals and Interferences ("Board") and to participate in the patent owner's appeal to the Board, if the patent owner does so. In addition, the third party requester also has appeal rights to appeal to the Court of Appeals for the Federal Circuit and may participate in the patent owner's appeal to the Federal Circuit. A core difference between ex parte and inter parte reexamination is the estoppel effect the proceeding has on a third-party requestor. In contrast to ex parte reexamination, a third-party requesting inter partes reexamination must identify itself and is estopped from later challenging the patent in a court proceeding or another inter parte reexamination. More specifically, the third-party requestor of an inter partes reexamination is prohibited from asserting invalidity in a civil action or another inter parte reexamination proceeding on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. Therefore, estoppel only applies to validity argument based on prior art publications and not to other defenses, such as invalidity based on public use, erroneous inventorship, or inequitable conduct. Again, the third-party requestor is stopped from asserting invalidity of the patent on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This estoppel makes filing an inter parte reexamination somewhat risky. If the requestor fails to achieve his desired results in inter parte reexamination, he is generally prevented from re-challenging the patent in court or in another inter parte reexamination proceeding. Post-AIA Inter Partes Reexamination In accordance with the Leahy-Smith America Invents Act ("AIA"), the Patent Office changed the standard for granting an inter partes reexamination for any inter partes reexamination request filed on or after September 16, 2011. Under the new rule, any request for inter partes reexamination filed on or after September 16, 2011, will not be granted unless the information presented in the request establishes that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. This new "reasonable likelihood" standard replaces the prior standard for granting a request for inter partes reexamination that required a substantial new question of patentability ("SNQ") affecting any claim of the patent raised by the request. Note that the AIA replaces inter partes reexamination with inter partes review starting on September 16, 2012. Therefore, this revised standard for inter partes reexamination is only applicable to requests made between September 16, 2011 and September 16, 2012. If a request for inter partes reexamination is made after September 16, 2012, it will be denied because the procedure will no longer be available.

Inventorship

Inventorship is a common issue for patent prosecutors when filing a patent application. Before filing an application, the prosecutor must ascertain the party or parties that will be named as inventors of the subject matter claimed in the application. This presents an important concept regarding inventorship. The named inventors are the inventors of the claimed subject matter. If someone merely invents some collateral subject matter than will not be claimed in the application, that person should not be listed as an inventor. For example, if inventors A and B invented subject matter D, and inventor C invented subject matter E, it is proper to name A, B, and C in the parent application with claims directed towards inventions D and E, but if a restriction requirement is issued and subject matter D is elected and E canceled, inventor C is no longer the inventor of any claim, and therefore he should be removed as a named inventor. The Patent Office provides a simple procedure for precisely this case. Thus, it is important to understand that inventorship relates to the claimed subject matter, not necessarily the subject matter disclosed in the application. Another important concept is who constitutes an inventor. The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. Merely reducing to practice an invention is not enough. For example, if Able creates a detailed schematic of a product and gives it to Bob to build to specifications, only Able is the inventor. Because Bob merely reduced the invention contained in the schematic to practice, he had no part in the conception of the invention, and therefore is not the inventor. If the schematic was lacking with respect to sub-components of the product, and Bob created a new, useful, and non-obvious sub-component for the product, then Bob may very well be an inventor of the subcomponent. In this case, it will come down to whether or not the novel aspects of the sub-component are actually claimed. If so, Bob conceived of them and therefore is an inventor in the eyes of the law. Thus, it is important to remember that inventorship comes down to conception of the claimed subject matter.

Statutory Authority of Director of the USPTO

Most questions appearing on the registration examination that involve the power of the Director will deal with the effect of filing a petition to the Director for review of a matter. There are several things to keep in mind. First, the mere filing of a petition will not stay the period for replying to an examiner's action which may be running against an application, nor act as a stay of other proceedings. For example, if a petition to vacate a final rejection as premature is filed within 2 months from the date of the final rejection, the period for reply to the final rejection is not extended even if the petition is not reached for decision within that period. If the petition is granted, however, and the applicant has filed an otherwise full reply to the rejection within the period for reply, the case is not abandoned. Second, as a general rule, a petition must be filed within two (2) months of the mailing date of the action or notice from which relief is requested. Any petition received after this timeframe is considered untimely.

Claiming the Benefit of an Earlier Filing Date

Non-provisional applications may claim priority to an earlier filed non-provisional, provisional, or foreign application. 35 U.S.C. § 120 addresses priority for continuing applications (i.e., continuations, divisionals, and continuations-in-part); 35 U.S.C. § 119(a) addresses priority based on an earlier foreign application; and 35 U.S.C. § 119(e) addresses priority based on an earlier provisional application. The following three requirements are generally required for a second application to claim priority to a first application - (1) there must be an overlap in inventorship (i.e., at least one common inventor named in the first and second applications); (2) the second application must contain, or be amended to contain, a specific reference to the first application (or chains of applications) with an indication of the relationship between the applications; and (3) the priority claim must be made within the applicable time limits.

Ownership/Assignability of Patents and Applications

Normally, for a patent to issue to an assignee, a request for issuance of the application in the name of the assignee must be filed with the Patent Office before the issue fee is paid. Any request must indicate that the assignment has been previously recorded in the Patent Office. If the assignment has not been previously recorded in the Patent Office, the request must state that the document has been filed for recordation. If a request for issuance to an assignee is submitted after the day on which the issue fee is paid, the request must include a request for a certificate of correction and a processing fee. Irrespective of whether the assignee participates in the prosecution of the application, the patent issues to the assignee if so indicated on the Issue Fee(s) Transmittal form. Unless an assignee's name and address are identified in the Issue Fee(s) Transmittal form, the patent will issue to the applicant (i.e., the named inventors).

Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent

Once the Examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner must determine whether a rejection should be made under 35 U.S.C. §§ 102(a), (b), or (e). To determine which section of 35 U.S.C. § 102 applies, the effective filing date of the application must be determined and compared with the date of the reference.

New Matter

Once the Patent Office assigns an application a filing date, the applicant cannot add "new matter" to the application. Although a simple principle, the prohibition against new matter comes up in several contexts and is often tested on the registration examination. The need for a bar against new matter is clear - if an applicant could add new matter to a pending application while retaining his filing date, the applicant could effectively circumvent the priority rules. Only one person is entitled to patent protection for any given invention. Under the patent rules, priority is given to the first to file an application covering the invention, unless another reduced the invention to practice before the other's filing date and did not abandon, suppress, or conceal the invention. There are situations where adding new matter is permitted. For example, when an applicant files a continuation-in-part ("CIP") application, new matter is permitted. As you may recall, however, any claim directed toward the new subject matter added in the application is not entitled to the filing date of the parent. The priority rules are therefore upheld when filing a CIP. The prohibition against adding new matter can be thought of as a way to ensure the patent priority rules are honored. If a question indicates that an applicant has received, or is attempting to receive, a priority date before the applicant actually invented the subject matter, a violation of the new matter principle has likely occurred.

Chapter 1700 - Office Personnel Not To Express Opinion on Validity, Patentability, or Enforceability of Patent

Once the Patent Office issues a patent, each and every claim of the patent is presumed valid. The question of validity or invalidity of an issued patent is generally a matter to be determined by a court of law. The only times where it is appropriate for a Patent Office employee to comment on the validity, patentability, or enforceability of an issued patent is when (1) the patent is being reissued; (2) the patent is being reexamined, or (3) the patent is involved in an interference proceeding.

Election and Reply

Ordinarily, after receiving a restriction requirement, an applicant will elect one invention and continue the prosecution of the elected invention in the current application and then file divisional applications covering the non-elected inventions. Once an election is made and an Office Action issued, the Patent Office does not allow an applicant to shift and claim one of the non-elected inventions. The applicant must continue prosecution of the elected invention to its termination, either by abandonment or patenting. If an applicant disagrees with the restriction requirement, the applicant may traverse the requirement. If traversing, the applicant must distinctly and specifically point out the supposed errors in the restriction requirement. In addition, even if the applicant is traversing the restriction requirement, the applicant must provisionally elect one of the inventions, as required by the second sentence of Rule 143.

Petition To Make Special

Ordinarily, the Patent Office examines new applications in the order of their effective filing date. The Patent Office, however, does make exceptions to this general rule in special cases. To receive expedited examination, an applicant must file a petition to "make special." The petition, which sometimes requires a fee, indicates the reasons why the applicant believes he or she is entitled to expedited examination. Any statement made in support of a petition to make special must be based on a good-faith belief that the invention in fact qualifies for special status. Petition Based on Age The two commonly tested situations are petitions to make special based on an applicant's age and health. For age, an application may be made special upon filing a petition that includes evidence showing that the applicant is 65 years of age or older. The Patent Office considers an applicant's statement or a statement from a registered practitioner that the applicant is 65 years of age or older as acceptable evidence to support a petition to make special. Petition Based on Health With respect to health, an application may be made special upon filing a petition accompanied by evidence showing that due to the applicant's poor health, the applicant may not be available to assist in the prosecution of the application. The Patent Office considers a doctor's or medical certificate as acceptable evidence of an applicant's poor health. Petitions to make special based on age or health do not require a petition fee. The lack of a fee for a petition to make special based on age or health is a commonly tested examination topic.

Ownership/Assignability of Patents and Applications

Ownership of a patent gives the patent owner the right to exclude others from making, using, selling, or importing into the United States the invention claimed in the patent. Ownership of the patent, however, does not furnish the owner with the right to perform these acts because there may be other legal hurdles preventing the owner from exercising his rights. For example, there may be a second patent that "dominates" a first patent. This occurs when every claim of the first patent is narrower than the second patent. Thus, to practice the invention of the first patent, one must necessarily infringe the rights of the second patent owner. In addition, there may be additional government hurdles to overcome before practicing the invention. For example, after gaining patent protection, a patent owner may still need FDA approval before selling chemical inventions. Without FDA approval, sales would be illegal even though patent protection has been secured. The ownership of a patent initially vests in the named inventors of the patent. The invention, however, may be assigned or licensed by the owners at any time. For example, many employment agreements require an employee to assign all of his or her rights in any invention made during the course of the employment to the employer. Such agreements are generally enforceable, if in writing.

Suspended or Excluded Practitioner Cannot Inspect

Patent Office employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the Patent Office regarding an application unless it is one in which the attorney or agent is the applicant. Power to inspect given to a suspended or excluded attorney or agent will also not be accepted.

Chapter 2700 - Patent Terms and Extensions

Patent Term Utility patents have a twenty-year term, measured from the filing date of the earliest U.S. application to which priority is properly claimed (excluding provisional applications). Design patents have a fourteen year term, measured from the date of patent grant. Term Extensions or Adjustments When the Patent Office issues a Notice of Allowance for an application, the notice will include notification of any patent term adjustment. An applicant that believes that the term adjustment provided by the Patent Office is incorrect may request reconsideration after the Patent Office issues the Notice of Allowance. Such a request must be filed within two months of the date the patent issued. Thus the window for requesting reconsideration of the Patent Office's term adjustment award is narrow. It must occur after Notice of Allowance but within two months of issuance. Alternatively, an applicant dissatisfied with a the Patent Office's patent term adjustment calculation may file a civil action against the Director in the United States District Court for the Eastern District of Virginia within 180 days after the grant of the patent. Generally, the term of a patent is adjusted to account for Patent Office delays in (1) issuing an Office Action or response; (2) total pendency exceeding three years; and (3) other delays related to interferences and appeals. If you keep in mind the rule for determining the term of patent protection (i.e., twenty years from filing), it should become apparent why the term is adjusted to account for specific types of Patent Office delays. In particular, the term of a patent is adjusted if - 1 The Patent Office fails to initially act on an application within fourteen months of its filing date; 2 The Patent Office fails to respond to a reply or appeal by applicant within four months of the reply or appeal; 3 The Patent Office fails to act on an application within four months of a Board of Patent Appeals and Interferences ("Board") or court decision in an application containing allowable claims; 4 The Patent Office fails to issue a patent within four months of the date the issue fee was paid; 5 The Patent Office fails to issue a patent within three years of its filing date; 6 If issuance of a patent was delayed due to imposition of a secrecy order; 7 If issuance of a patent was delayed due to an interference proceeding; and 8 If issuance of a patent was delayed due to successful appellate review.

"Printed Publications" as Prior Art

Printed publications constitute prior art as of the date the publication was publicly accessible. Therefore, a reference is proven to be a printed publication upon a satisfactory showing that such reference has been disseminated or otherwise made available to the extent that persons interested in the subject matter, exercising reasonable diligence, can locate it. Similarly, an electronic publication, including an on-line database or Internet publication, is considered to be a printed publication provided the publication was accessible to persons concerned with the art to which the document relates. Remember, a publication is not effective as a prior art reference until it is publicly accessible. For example, a magazine or technical journal is effective as of the date when first person receives it, not the date it was mailed or sent to the publisher. Commonly tested examples 1. A doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a printed publication. 2. A paper which is orally presented in a forum open to all interested persons constitutes a printed publication if written copies are disseminated without restriction. 3. Documents and items only distributed internally within an organization which are intended to remain confidential are not printed publications no matter how many copies are distributed. There must be an existing policy of confidentiality or agreement to remain confidential within the organization. 4. A publicly displayed document where persons of ordinary skill in the art could see it and are not precluded from copying it can constitute a printed publication, even if it is not disseminated by the distribution of reproductions or copies and/or indexed in a library or database.

Prior Art

Prior art constitutes all information that has been made available to the public in any form before a particular date that might be relevant to a patent's claims of novelty or non-obviousness. In contrast, information kept secret, for instance as a trade secret, is not usually prior art provided that employees and others with access to the information are under a non-disclosure obligation. Prior art may consist of books, magazines, newspaper articles, technical journals, scholarly theses, and any other information reasonably accessible to the public, such as an abandoned patent application that was previously published. Public accessibility is the dividing line between what does and does not constitute prior art. Remember that pending patent applications that have not been published are generally preserved in confidence, and therefore are not available as prior art references. Also keep in mind that a prior art reference does not have to be in the English language. Although the Patent Office may require translations of some applicant-submitted foreign references, these references are just as viable as prior art as their English counterparts.

Requirements of Rejection Based on Inherency; Burden of Proof

Recall that prior art is good for all that it teaches to one of ordinary skill in the art. The express or inherent teachings of a prior art reference may be relied upon in the rejection of claims under Section 102. Although what is expressly disclosed is relatively easy to ascertain from simply reading the reference, the inherent teachings of a prior art reference is a question of fact that arises both in the context of anticipation and obviousness. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. To establish inherency, the missing matter must necessarily be present in the thing described in the reference. When relying on inherency, the examiner must provide a basis in fact or technical reasoning to support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the prior art. Once the examiner issues a rejection based on a prior art reference that teaches a product appearing to be substantially identical and provides some evidence tending to show inherency of whatever elements are not expressly disclosed, the burden shifts to the applicant to show a non-obvious difference.

Reduction To Practice

Reduction to practice may be an "actual" or "constructive." Constructive reduction to practice occurs when an applicant filed a patent application covering the invention. Actual reduction to practice occurs when (1) the party constructed a physical embodiment of the invention or performed the inventive process, and (2) the embodiment or process operated for its intended purpose. Therefore, the same evidence sufficient for a constructive reduction to practice may be insufficient to establish an actual reduction to practice, which requires that the invention be sufficiently tested to demonstrate that it will work for its intended purpose.

Rejections Based on "Public Use" or "On Sale"

Section 102(b) is a statutory bar to the patentability of an invention. In other words, if Section 102(b) properly applies, the applicant cannot overcome the rejection and generally must amend or cancel the rejected claims. In addition to rejections based on printed publication, Section 102(b) sets forth both the "public use" and "on-sale" statutory bars. Both of these bars relate to activity occurring more than one year prior to the effective date of the patent application, and both bars require that the activity occur in the United States (i.e., "in this country"). The Leahy-Smith America Invents Act ("AIA") drastically changed Section 102. However, because Section 102 under the AIA only applies to applications with effective filing dates on or after March 16, 2013, the former Section 102 (as provided above) still applies to applications with effective filing dates before March 16, 2013. Therefore, it is important to first determine whether an application will be examined under the former Section 102 or under the new Sections 102, as contained in the AIA. Chapter 28 of this guide details the AIA and the pertinent changes to Section 102. Public Use Bar A public use will act as a bar if the use was (1) accessible to the public or (2) commercially exploited. Remember that mere knowledge of the invention by the public does not warrant a rejection under Section 102(b). Section 102(b) bars public use, not public knowledge. For example, if the inventor puts the invention on display, there is a public use within the meaning of Section 102(b), even if the invention is completely hidden from view as part of a larger machine or article. As long as the invention is used in its natural and intended way and is accessible to the public, a public use has occurred. On the other hand, an inventor's private use of his invention, for example for his or her own enjoyment, is not a public use because the invention was not accessible to the public. On-Sale Bar The on-sale bar of Section 102(b) is triggered if the invention is both (1) the subject of a commercial offer for sale, which means the sale is not primarily for experimental purposes and (2) the invention was ready for patenting at the time of the sale. Even a single sale or offer to sell the invention may bar patentability under Section 102(b). Remember, however, an assignment or sale of the patent rights in an invention does not constitute a sale within the ambits of Section 102(b). In order to trigger the on-sale bar, the applicant or a third-party must sell an embodiment of the invention to another. Usually this entails transferring a physical embodiment from a seller to a buyer. Thus, selling the patent rights in an invention would not trigger the on-sale bar because no transfer of ownership of an embodiment of the invention is occurring. Experimental Use An often tested exception to both the public use and on-sale bars occurs with experimental use. If the use or sale was experimental, there is no bar under Section 102(b). A use or sale is experimental if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose. If any commercial exploitation occurs, it must merely be incidental to the primary purpose of the experimentation to perfect the invention. It is therefore important to keep in mind that not all sales or public use activity within the United States more than a year before the effective filing date of an application will trigger the public use and on-sale statutory bars.

Rejections Under 35 U.S.C. 102(d)

Section 102(d) establishes four conditions which, if present, create a statutory bar against the patenting of an invention in the United States. 1 A foreign application must be filed more than 12 months before the effective filing date of the United States application. 2 The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns. 3 The foreign application must have actually issued as a patent or inventor's certificate (e.g., granted by sealing of the papers in Great Britain) before the filing in the United States. It need not be published, but the patent rights granted must be enforceable; and 4 The same invention must be involved. Unless all four of the above conditions are present, a rejection under Section 102(d) is improper. As with 102(b) rejections, if the one year deadline falls on a Saturday, Sunday or Federal holiday, the deadline is extended to the following business day. When considering whether a Section 102(d) is proper, be sure not to overlook any of the requirements. Section 102(d) is very narrow and will only apply in a particular case. Moreover, remember that a foreign priority claim must be made within 12 months of the foreign application's filing date. Thus, a Section 102(d) bar only occurs when the applicant is outside of the timeframe for claiming priority to the foreign application, which should raise a red flag in any question that tests this concept. Generally, an applicant that files a foreign application before filing a U.S. application will ensure that a U.S. application is filed within 12 months to ensure the validity of a foreign priority claim. The most often tested aspect of Section 102(d) relates to the fact that a rejection is only proper if the foreign application has actually issued into a patent. A foreign patent publication does not trigger Section 102(d). Several current questions on the registration examination indicate that all the conditions for a Section 102(d) bar have been satisfied, except that the foreign patent application has yet to be patented. Sometimes the question will indicate that the foreign application has already been published. In these situations, a Section 102(d) rejection is improper because publication is insufficient to trigger a Section 102(d) rejection.

Rejections Under 35 U.S.C. 102(e)

Section 102(e) authorizes an Examiner to reject claims based on subject matter disclosed in United States patents, United States patent publications, and World Intellectual Property Organization ("WIPO") publications of international applications as of their effective filing date. This provision is mostly utilized when the publication or issue date is too recent for the reference to be applied under Section 102(a) or (b). In order to apply a reference under Section 102(e), the inventive entity of the application must be different than that of the reference. Where there are joint inventors, only one inventor needs to be different for the inventive entities to be different. Thus, a rejection under Section 102(e) is applicable even if there are some (but not all) inventors in common between the application and the reference.

Rejections Under 35 U.S.C. 102(g)

Section 102(g) bars the issuance of a patent where another made the invention in the United States before the applicant and had not abandoned, suppressed, or concealed it.

Interference

Section 102(g)(1) forms the basis for a Patent Office proceeding termed an "interference." An interference is a Patent Office proceeding between two or more applicants to determine which of the applicants is entitled to priority (and consequently, a patent protecting the invention). The party who first filed an application covering the invention is called the "senior" party, while all other applicants are called "junior" parties. During an interference, the Board of Patent Appeals and Interferences ("Board") acquires jurisdiction over any involved patent file. Other Patent Office proceedings involving the file are generally suspended. The Board retains jurisdiction over the interference until the interference is terminated. The Director has defined termination to occur after a final Board judgment in the interference and the period for seeking judicial review has expired (which generally is two months from the date of the decision), or if judicial review is sought, after completion of judicial review including any further action by the Board. Thus, the Board generally retains jurisdiction over the application until two months after its decision. During these two months, it would be improper for an examiner to continue substantive prosecution of an application because jurisdiction remains with the Board. Interferences will be discussed more fully later in this guide. Please note that interference proceedings have been eliminated by the America Invents Act ("AIA") for applications filed under the first-to-file regime. See Chapter 28 for a discussion of important changes to patent law in accordance with the AIA. During examination, the examiner may also issue a rejection of claims under 102(g)(2) if evidence indicates that (1) the subject matter at issue has been actually reduced to practice by another before the applicant's invention; and (2) there has been no abandonment, suppression or concealment by the other party.

Contents of a 35 U.S.C. 103 Rejection

Section 103 defines the non-obvious requirement for patent protection. Section 103 authorizes a rejection when the claimed invention is obvious in light of one or more prior art references. When issuing a rejection under Section 103, the following factual inquiries must be considered by the examiner - 1 The scope and content of the prior art; 2 The differences between the claimed invention and the prior art 3 The level of ordinary skill in the pertinent art; and 4 Any secondary indicia of non-obviousness, such as commercial success, long-felt need, and failure by others. To support the conclusion that the claimed invention is directed to obvious subject matter, the references must expressly or implicitly suggest the claimed invention, and the examiner must present convincing reasoning as to why a skilled artisan would have found the claimed invention to have been obvious in light of the references. Under Section 103, the teachings of a prior art reference is evaluated from the perspective of one of ordinary skill in the art. This person of ordinary skill in the art (sometimes referred to as a "POSITA") is a theoretical person of normal skill in the art related to the invention. For example, when considering a semi-conductor patent application, a POSITA would likely consist of an electrical engineer with a fair amount of semiconductor related work experience. In addition to Section 103, the POSITA is also used in other contexts in patent law, including whether a claim satisfies the enablement requirement (i.e., whether a POSITA could make or use the invention without undue experimentation).

AIA Changes to Sections 102 and 103 under MPEP E9

Section 3 of the Leahy-Smith America Invents Act ("AIA") amends the patent laws to - (1) convert the United States patent system from a "first to invent" system to a "first inventor to file" system; (2) eliminate the requirement that a prior public use or sale activity be "in this country" to be a prior art activity; (3) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the U.S. or in another country; and (4) treat commonly owned patents and patent application publications, or those resulting from a joint research agreement, as being by the same inventive entity for purposes of Sections 102 and 103. The changes in section 3 of the AIA took effect on March 16, 2013. Specifically, the new provisions apply to any patent application that contains or contained at any time - (1) a claimed invention that has an effective filing date that is on or after March 16, 2013; or (2) a designation as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claimed invention that has an effective filing date that is on or after March 16, 2013. For applications filed before this date, the first to invent provisions (as discussed 706.02 a-j) apply. Section 102 under the AIA provides that - (1) a person is not entitled to a patent if the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; and (2) a person is not entitled to a patent if the claimed invention was described in a patent, or in an application for patent published, in which the patent or application, as the case may be, names another inventor, and was effectively filed before the effective filing date of the claimed invention. The AIA defines the term "claimed invention" as the subject matter defined by a claim in a patent or an application for a patent. The AIA defines the term "effective filing date" for a claimed invention as meaning the earliest of - (1) the actual filing date of the patent or the application for the patent containing a claim to the claimed invention (claimed invention); or (2) the filing date of the earliest provisional, nonprovisional, international (PCT), or foreign patent application to which the patent or application is entitled to benefit or priority as to such claimed invention. This guide has already used the term "effective filing date" with this exact meaning, so you should already be familiar with how to determine an application's effective filing date. As already discussed, before the AIA, knowledge or use of the invention (under former Section 102(a)) and public use or sale of the invention (under former Section 102(b)) was required to be in the United States to qualify as a prior art activity. Under the AIA, a prior public use, sale activity, or other disclosure has no geographic requirement (that is, need not be in the United States) to qualify as prior art. The first inventor to file provisions of the AIA also eliminate the provisions in former Section 102(c) regarding abandonment of the invention, former Section 102(d) regarding premature foreign patenting, former Section 102(f) regarding derivation, and former Section 102(g) regarding prior invention by another. Under the new Section 102, abandonment of the invention or premature foreign patenting is not relevant to patentability. Prior invention by another is also not relevant to patentability unless there is a prior disclosure or filing of an application by another. The situation in which an application names a person who is not the actual inventor as the inventor (former Section 102(f)) will be handled in a derivation proceeding (discussed below), or by a correction of inventorship under 37 CFR 1.48 to name the actual inventor. The AIA also changes the grace period under U.S. patent law. Under new Section 102, a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art with respect to the claimed invention if - (1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Thus, Section 102 under the AIA provides a one-year grace period after a first disclosure of an invention within which to file a patent application. Specifically, new Section 102 permits an applicant to disqualify a disclosure of the invention made not more than one year before the effective filing date of the claimed invention that would otherwise be prior art if - (1) the disclosure to be disqualified was by an inventor or by a party who obtained the disclosed subject matter from an inventor; or (2) an inventor or a party who obtained the disclosed subject matter from an inventor had publicly disclosed the subject matter before the date of the reference disclosure to be disqualified. The one-year grace period in new Section 102 is measured from the earliest U.S. or foreign patent application to which the patent or application is entitled to benefit or priority as to such invention, whereas the one-year grace period in former Section 102 is measured from only the earliest application filed in the United States. A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar under the AIA. Under the AIA, a new administrative proceeding called a "derivation proceedings" ensures that the first person to file an application is a true inventor. This new proceeding will ensure that a person will not be able to obtain a patent for an invention that he did not actually invent. If a dispute arises as to which of two applicants is a true inventor (as opposed to who invented it first), it will be resolved through a derivation proceeding conducted by the Board. Derivation proceedings under the first to file system replace interferences under the former, first to invent regime. It is also important to note that the date of invention is not relevant under new Section 102. A prior art disclosure cannot be disqualified or antedated by showing that the inventor invented the claimed invention prior to the effective date of the prior art disclosure of the subject matter. Therefore, an applicant is no longer permitted to "swear behind" a prior art reference in accordance with Rule 131 for applications that are examined under the AIA's first to file system.

Chapter 2400 - Biotechnology

The Deposit Rules As you have already learned, Section 112 requires every patent to contain a written description of the invention that is sufficient to enable a person skilled in the art to make and use the invention. Where the invention involves biological material and words alone cannot sufficiently describe how to make and use the invention, access to the biological material may be necessary for the satisfaction of the statutory requirements for patentability under Section 112. In such cases, an applicant may supplement his written application with the deposit of biological material. Although the Patent Office strongly encourages all applicants to deposit biological material before or simultaneously with the filing of the application, the deposit may be made at any time during the pendency of the application. The deposit of biological material is rarely tested on the registration examination. A general understanding of Rule 802 is all that is necessary for examination purposes. Nucleotide and/or Amino Acid Sequence Disclosures in Patent Applications In applications directed toward compositions of matter in the form of nucleotide or amino acid sequences, the format of the sequence listing submitted in the application must confirm to a variety of Rules. All patent applications which contain disclosure of nucleotide or amino acid sequences, must conform with these requirements. In general, patent applications which contain disclosures of nucleotide or amino acid sequences must contain, as a separate part of the disclosure, a paper or compact disc copy disclosing the nucleotide and/or amino acid sequences using the symbols and format provides by the Rules. If submitted on paper, a copy of the sequence listing must also be submitted in computer readable form. The Rules related to sequence listings were developed to combat the problems associated with the lack of uniformity in the submission of sequence data to the Patent Office and the impracticality of properly searching and examining sequences submitted in paper form. The Rules establish a standardized format for descriptions of nucleotide and amino acid sequence data submitted as a part of patent applications. If an applicant fails to properly disclose the sequence listing or submit a computer readable format of the listing, a Notice to Comply will be issued. Upon detection of damage of the computer readable listing or another deficiency, a notice will be sent to the applicant detailing the damage or deficiency and setting at least a 30-day period for reply.

Best Mode Requirement

The Leahy-Smith America Invents Act ("AIA") changed the circumstances under which a patent may be invalidated for failure to comply with the best mode requirement. In accordance with the AIA, failure to comply with the best mode requirement cannot be used to attack the validity of an issued patent in any infringement or validity lawsuit during civil litigation. Therefore, although the best mode requirement still exists under the AIA, failure to comply with the best mode requirement cannot be used as a basis to invalidate a patent in a court of law. The inability to challenge the validity of a patent for failure to comply with the best mode requirement applies to all court proceedings filed on or after September 16, 2011. Note that this modification to the best mode requirement only applies in civil litigation and does not change the best mode requirement for examination purposes.

Prioritized Examination

The Leahy-Smith America Invents Act ("AIA") included a provision for prioritized examination (also called "Track I" examination). Pre-AIA, unless a petition to make special is granted (or the application is in reissue or reexamination), the order in which patent applications are examined is based on their effective filing date. That is, applications are examined in the order in which they are filed. Those applications with the oldest effective filing dates are given priority over applications with more recent effective filing dates. Under prioritized examination, an applicant desiring to have an application's examination expedited may submit a request for expedited examination and pay a fee, which will accord special status to the application. All non-provisional applications for an original utility or plant patent qualify for expedited examination if they are actually filed on or after September 26, 2011. However, no application for which prioritized examination is requested may contain or be amended to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim. Submission of an amendment resulting in more than four independent claims, more than thirty total claims, or a multiple dependent claim is not prohibited, but simply terminates the prioritized examination. Similarly, if an applicant files a petition for an extension of time to file a reply or a request for a suspension of action, the prioritized examination of the application will be terminated. On December 19, 2011, the Patent Office extended the prioritized examination procedure to apply to a request for continued examination in an existing plant or utility application. The special examination status continues throughout the application's course of prosecution before the Examiner until a final disposition is reached in the application. The goal for handling applications under prioritized examination is to on average provide a final disposition within twelve months of prioritized status being granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted one of the following will occur - (1) mailing of a notice of allowance; (2) mailing of a final office action; (3) filing of a notice of appeal; (4) filing of a request for continued examination; or (5) abandonment of the application.

Chapter 2800 - Supplemental Examination

The Leahy-Smith America Invents Act ("AIA") provides that a patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent. The supplemental examination will determine whether the information presented in the request raises a substantial new question of patentability. If the information presented in the request raises a substantial new question of patentability, the Patent Office will order ex parte reexamination of the patent. The AIA provides that, with certain exceptions, a patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent IF the information was considered, reconsidered, or corrected during a supplemental examination of the patent. Thus, a patent owner may cure a claim of inequitable conduct by submitting the allegedly withheld information to the Patent Office during supplemental examination. A request for supplemental examination must contain - (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length. In addition, substantial fees must be submitted with the request. The information that may be presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under Sections 101 and 112. This is in direct contrast to third party preissuance submissions previously discussed. Please keep in mind that supplemental examination can only be requested by the patent owner, and not third parties. Within three months of the receipt of a request for supplemental examination, the Patent Office shall conduct supplemental examination and shall conclude the examination (i.e., determine whether there is a substantial new question of patentability) by the issuance of a supplemental examination certificate. The supplemental examination certificate shall indicate whether the items of information presented in the request raise a substantial new question of patentability. If the supplemental examination certificate indicates that a substantial new question of patentability is raised by one or more items of information in the request for supplemental examination, the supplemental examination certificate will indicate that ex parte reexamination will be ordered by the Patent Office. The resulting ex parte reexamination proceeding will be conducted according to ex parte reexamination procedures, except that the patent owner does not have the right to file an additional statement before reexamination begins and the basis of the ex parte reexamination is not limited to patents and printed publications. Each substantial new question of patentability identified during the supplemental examination proceeding will be addressed by the Patent Office during the resulting ex parte reexamination proceeding. Please note the supplemental examination became effective on September 16, 2012, and is available for all patents, regardless of issue date. The registration examination is currently based on the Manual of Patent Examining Procedure ("MPEP"), Edition 9. Several changes to patent law recently implemented as part of the Leahy-Smith America Invents Act ("AIA") were incorporated into the MPEP as a result of this edition update. The AIA switches the U.S. patent system from a "first to invent" to a "first to file" system, thereby eliminating interference proceedings. The AIA also creates a post-grant opposition proceeding that is similar to current opposition practice in Europe. Please note that each of the AIA's provisions has an effective date, and therefore may only apply to applications filed on or after a particular date. For example, the first to file provisions contained in the AIA, which modify (among other things) Sections 102 and 103, apply only to patent applications that have an effective filing date that is on or after March 16, 2013. Therefore, applications with an effective filing date before March 16, 2013 are analyzed under the former, first to invent regime, as detailed in previous sections of this guide.

Information as to Status of an Application

The Patent Office generally holds all patent applications in confidence until published. Only (1) the inventor, (2) an attorney or agent of record in the application, (3) an assignee of record in the application, or (4) a person with written authority from (1)-(3) can obtain status information regarding a pending patent application. Status information includes (A) whether the application is pending, abandoned, or patented; (B) whether the application has been published; (C) the application number, serial number, or filing date of the application; and (D) whether another application claims priority to this application. If the requester is not one of the above, and the application is identified by application number (or serial number and filing date) in a published patent document, or an application claiming the benefit of the filing date of an application identified by application number (or serial number and filing date) in a published patent document, then a written request including a copy of a published patent document which refers to the specific application must be provided when requesting status information for the application. In such a case, status information will be provided to the requestor. This procedure therefore allows a requester to obtain status information for a patent application that would normally be preserved in confidence but for the fact that the application is referenced in another application that is not subject to confidentiality.

Chapter 2000 - Duty of Disclosure, Candor, and Good Faith

The Patent Office imposes a duty of candor and good faith on every individual associated with the filing and prosecution of a patent application. This duty extends to the patent applicant and his representatives, such as attorneys and patent agents that assist in the prosecution or preparation of the patent. A breach of this duty constitutes inequitable conduct when an affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information couples with intent to deceive or mislead the Patent Office. A finding of inequitable conduct by a court renders the claims of a patent unenforceable. An applicant, or another party with the duty to disclose, generally complies with his duty by submitting information to the Patent Office using an information disclosure statement ("IDS"). An IDS is a concise written statement listing information, such as printed publications, technical journals, and other activities, that may affect the patentability of a pending application. Since no substantive examination is given in provisional applications, any IDS may only be submitted for non-provisional applications. Although a fee is generally not required when filing an IDS, a fee is required if an IDS is filed after a notice of allowance or a final rejection. After the issue fee has been paid on an application, it is impractical for the Patent Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file. Third parties (individuals without a duty to disclose) cannot file information disclosure statements. Third-parties must use the protest or third party submission procedures previously discussed.

Rejections Under 35 U.S.C. 101

The Patent Office is not authorized to issue patents for all new, useful, and non-obvious inventions. Inventions must also fall within the boundaries set forth by Section 101, which permits patents to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The following are examples of subject matter that may not be patented - 1 Printed Matter - A mere arrangement of printed matter is not patentable. 2 Naturally Occurring Article - Something that occurs in nature and which is substantially unaltered is not patentable. 3 Mathematical Principles - A mathematical principle, divorced from any tangible structure, is not patentable. 4 Abstract Concepts - An abstract concept divorced from any physical structure may not be patented. There are two criteria for determining whether a claim is directed to eligible subject matter and both must be satisfied. First, the claimed invention must be directed to one of the four statutory categories. Second, the claimed invention must not be wholly directed to subject matter encompassing a judicially recognized exception. As previously stated, the four statutory categories are (1) processes, (2) machines, (3) manufactures, and (4) compositions of matter. Examples of claims that are not directed to one of the statutory categories include - (1) transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), (2) a naturally occurring organism, (3) a human per se, (4) a legal contractual agreement between two parties, (5) a game defined as a set of rules, (6) a computer program per se, and (7) a company. A claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to nonstatutory subject matter. If you see a question on the examination asking whether any of the above seven categories of subject matter are patentable under Section 101, the correct answer will always be that they are not patentable. A process or method claim, to be statutory under Section 101, must pass the "machine or transformation test," which ensures that the process is limited to a particular practical application. Thus, not every claimed method qualifies as a statutory process. The test ensures that the process is not simply claiming an abstract idea, a mental process, or substantially all practical uses of a law of nature or a natural phenomenon. In accordance with the machine-or-transformation test, the claimed process must - (1) be tied to a particular machine or apparatus (machine implemented); or (2) particularly transform a particular article to a different state or thing. Therefore, whether a claimed method is patent eligible always involves an application of the claim under the machine-or-transformation test. Utility In addition, subject matter may be patented only if useful (referred to as the "utility" requirement). Although this utility requirement is usually satisfied quite easily, some inventions do not qualify for patent protection because they do not possess the requisite utility. For example, the use of a complex invention as landfill is not only ridiculous, but also does not satisfy the utility requirement. Some inventions have a well-established, or readily apparent, utility. An invention has a well-established utility if a person of ordinary skill in the art would immediately appreciate why the invention is useful. The utility requirement is satisfied if the invention has either (1) a well-establish utility or (2) a utility disclosed in the specification of the application in a specific, substantial, and credible fashion. For registration examination purposes, the utility requirement is a very low bar. To lack utility, the invention must be completely absurd, which fails to satisfy the credible prong of the utility requirement. Some examples of inventions tested on the registration examination that did not comply with the utility requirement include (1) a perpetual motion machine, (2) a machine that changes the taste of food using a magnetic field, (3) a "cold fusion" process for producing energy, (4) a method for increasing the energy output of fossil fuels upon combustion through exposure to a magnetic field, and (5) a complex invention used as a landfill.

Certificates of Correction - Applicant's Mistake

The Patent Office may issue a Certificates of Correction for the correction of applicant mistakes that were made in good faith. The mistake must fall within one of three categories - (1) a clerical mistake; (2) a typographical error; or (3) a mistake of minor character. A mistake is not considered to be of the "minor" character required for the issuance of a Certificate of Correction if the requested change would materially affect the scope or meaning of the patent. Such a correction would require substantive reexamination, which is not performed when issuing a certificate of correction. In addition, the correction must not involve changes which would constitute new matter. For a complete discussion of what constitutes new matter, see Section 608.04 in this guide. The typical situation in which a certificate of correction is used is to correct an error with the assignee or inventor's name, and when failing to make a claim for priority to a co-pending application. However, under no circumstances can a Certificate of Correction be employed to correct an applicant's failure to claim priority to a provisional application. Section 119(e) clearly stated that a claim of priority to a provisional application must occur during the pendency of the applicant. Thus, a Certificate of Correction for an issued patent cannot rectify an applicant's failure to claim priority to a provisional application but can rectify priority claims based on other applications.

Reissue

The Patent Office may reissue a patent when there is an error in the patent that causes the patent to be wholly or partly inoperative or invalid, and when the error occurred without deceptive intent. Therefore, there must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be reissued. The most common ground for reissue are (1) the claims are too narrow or too broad; (2) the disclosure contains inaccuracies; (3) the applicant failed to or incorrectly claimed foreign priority; and (4) the applicant failed to make reference to, or incorrectly made reference to, prior co-pending applications. Each of these errors in a patent is a valid reason for reissue. Remember, if there is no error in the patent, the patent will not be reissued. This is a commonly tested fact appearing on the registration examination. It is important to understand what cannot be corrected through reissue. Errors related to spelling, grammar, and other typographical reasons generally do not cause the patent to be "wholly or partly inoperative or invalid," and thus are generally not valid grounds for reissue. As you will soon learn, these trivial errors may be corrected through the issuance of a certificate of correction. If a valid ground for reissue exists, an applicant may, however, fix these trivial errors in the reissue application. Thus, you should think of the reissue procedure as a door. A single valid ground opens the door for reissue, and once open, all other errors (even those that could not be corrected by reissue) are amenable to correction. Other errors that may be corrected through reissue include (1) an applicant's failure to appreciate the full scope of the invention; (2) the misjoinder of inventors in a divisional application; (3) failure to file a certified copy of the original foreign application to obtain the right of foreign priority; (4) failure to adequately claim benefit of a co-pending application; and (5) errors in the drawings that are substantive in nature. Remember, there is a general prohibition against adding new matter. Thus, corrections made during reissue must be fully supported in the application as filed. For a complete discussion of what constitutes new matter, see Section 608.04 in this guide. All reissued patents have the same term as the original patent. Thus, a deletion in a reissue application of an earlier-obtained benefit claim will not operate to lengthen the term of the patent to be reissued. For applications filed on or after June 8, 1995, the patent term is 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications). Patent term will be discussed later in this guide.

Foreign Filing Licenses

The Patent Office performs a security screening of all applications. If national security is not implicated by the subject matter contained in the application, a foreign filing license is issued in a matter of weeks after filing the application. The license permits an applicant to file a patent application covering the subject matter disclosed in the application with a foreign country. If the Patent Office does not issue a foreign filing license, there are still two ways in which permission to file a patent application abroad may be obtained. First, a petition for a foreign filing license may be requested under 37 C.F.R. § 5.12. Second, an applicant may wait six months after filing a patent application in the Patent Office, at which time a license on that subject matter is no longer required (as long as no secrecy order has been imposed). Any person who files a patent application in another country without first obtaining the required foreign filing license will not receive a United States patent on the invention disclosed in the application. If the subject matter was also encompassed by a secrecy order, imprisonment for up to two years and a $10,000 fine are authorized for a willful foreign filing.

Secrecy Orders

The Patent Office screens all applications to determine if the application contains subject matter that may jeopardize national security. Applications that are identified by the Patent Office as potentially implicating national security are referred to the appropriate government agencies. The agency may then request that the Commissioner for Patents issue an order protecting the secrecy of the subject matter disclosed in the application. A secrecy order remains in effect for a period of 1 year from its date of issuance. A secrecy order may be renewed for additional periods of not more than 1 year upon notice by a government agency. When a secrecy order issues, the law specifies that the subject matter or any material information relevant to the application, including unpublished details of the invention, shall not be published or disclosed to any person not aware of the invention prior to the date of the order. The law also requires that all information material to the subject matter of the application be kept in confidence, unless written permission to disclose is first obtained from the Commissioner for Patents. Thus, applications under a secrecy order will not be published 18 months after their effective filing date. Publication occurs after the order expired or is removed.

Confidential Treatment

The Patent Office treats filed applications as confidential until the Patent Office publishes the application. Confidential treatment means that only individuals associated with the application (e.g., the applicant or the agent prosecuting the application) can obtain information related to the pending application. Publication generally occurs 18 months from the application's effective filing date. Every patent application has an actual filing date and an effective filing date. For applications that do not claim priority to an earlier application, the effective filing date and the actual filing date are the same.

Rejection of Claims

The Patent Office utilizes a consistent standard for the patentability of inventions described in patent applications. In every art, whether it is considered "complex," "newly developed," "crowded," or "competitive," all of the requirements for patentability must be met before a claim is allowed. The basic requirements for patentability of a claim include (1) novelty [35 U.S.C. § 102]; (2) usefulness [35 U.S.C. §101]; and (3) non-obviousness [35 U.S.C. § 103]. These basic requirements are in addition to the requirements already discussed related to the disclosure itself, including (A) written description, (B) enablement, and (C) best mode. An application is not allowed unless and until all issues pertinent to patentability have been raised and resolved in the course of examination and prosecution. The standard applied in all cases is the "preponderance of the evidence" test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable. Conversely, a claim should be allowed if it is more likely than not that the requirements for patentability are satisfied.

International Filing Date

The Receiving Office will assign an international filing date to an international application if several requirements are satisfied. First, the international application must be in the prescribed language. For example, the USPTO is not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau provided they are in a language accepted by the International Bureau. Second, the application must contain (a) an indication that it is intended as an international application, (b) the designation of at least one Contracting State, (c) the name of the applicant, (d) a part which on the face of it appears to be a description, and (e) a part which on the face of it appears to be a claim or claims. An all too common occurrence is that applicants will file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers is a resident or national of the United States, the USPTO is not a competent receiving Office for the international application. Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State. The USPTO will receive the application on behalf of the International Bureau as Receiving Office and, upon payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the international application to the International Bureau. However, if all of the applicants are indicated to be both residents and nationals of non-PCT Contracting States, the application is denied an international filing date.

Control of Inspection by Assignee

The assignee of record of the entire interest in an application may intervene in the prosecution of the application (referred as "taking over" prosecution) by appointing an attorney or agent of his or her own choice. Such intervention, however, does not exclude the applicant from access to the application to see that it is being prosecuted properly, unless the assignee makes specific request denying the applicant access. Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights. Of course, after the application has been published, the application will be available to the public and any restriction on the inventor's access will no longer be in effect.

The International Bureau

The basic functions of the International Bureau ("IB") are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the PCT. The World Intellectual Property Organization ("WIPO") in Geneva, Switzerland performs the duties of the International Bureau. If the applicant has not filed a certified copy of the priority document in the Receiving Office with the international application, the applicant must submit the certified copy of the priority document to the IB or the Receiving Office no later than 16 months after the priority date. The applicant normally has 2 months from the date of transmittal of the ISR to amend the claims by filing an amendment under Article 19 and may also file a brief statement explaining the amendment directly with the IB. The IB will then normally publish the international application, along with the ISR and any amended claims at the expiration of 18 months from the priority date. The written opinion, on the other hand, will not be made publicly available until the expiration of 30 months from the priority date. The IB also transmits copies of the publication to all designated countries.

Definition of Double Patenting

The concept of double patenting involves an applicant's attempt to receive multiple patents claiming the same invention. In essence, the applicant is attempting to unjustifiably extend the term of the rights granted by a patent. The concept of double patenting cannot be understood without a firm understanding of restriction requirements and divisional applications. All three concepts are interrelated. If the Patent Office issues a restriction requirement, the examiner is indicating that the application contains multiple inventions. Filing a divisional application covering non-elected subject matter in response to a restriction application does not implicate double patenting. If an applicant, however, voluntarily files a continuing application, and the parent and continuing application claim the same distinct invention, a double patenting rejection is proper.

The Enablement Requirement

The enablement requirement refers to the requirement of Section 112 that the specification describe how to make and use the invention. An examiner may reject claims for failure to comply with the enablement requirement. The purpose of the enablement requirement is to ensure that the applicant communicated the invention to the public in a meaningful way. Remember that in exchange for patent protection, the applicant is required to publicly disclose the invention in the patent application. You should also recall that there are three separate requirements dealing with the adequacy of an applicant's disclosure, all of which are contained in the first paragraph of Section 112 - (1) written description; (2) best mode; and (3) enablement. For enablement purposes, the information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art how to both make and use the claimed invention without undue experimentation. The amount of experimentation that constitutes "undue" experimentation is a question of fact that depends a number of factors including - (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In addition, the mere fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation. Questions indicating that the experimentation was "complex, but routine" are in essence stating that the enablement requirement has been satisfied.

Requirements for Information

The examiner or other Office employee may require the submission of any information that is reasonably necessary to properly examine a pending application. The individuals from which a request may be made include (1) any inventor named in the application or any assignee; (2) any attorney or agent who prepares or prosecutes the application; and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the assignee, or with anyone to whom there is an obligation to assign the application. Thus, the Patent Office may request information from a broad array of people associated with a patent application. The scope of information requested is also broad and includes anything reasonably necessary for the proper examination of the application. Examples include the existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention; whether a search of the prior art was made, and if so, what was searched; a copy of any nonpatent literature, published application, or patent, by any of the inventors, that relates to the claimed invention; a copy of any non-patent literature, published application, or patent that was used to draft the application; a copy of any non-patent literature, published application, or patent that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result; where the claimed invention is an improvement, identification of what is being improved; identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use; and technical information known to the applicant. A complete reply to a requirement for information is a reply to each enumerated requirement giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not in fact readily attainable, but the applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.

Rejections Under 35 U.S.C. 112, First Paragraph

The first paragraph of Section 112 contains three distinct requirements - (1) the written description requirement; (2) the enablement requirement; and (3) the best mode requirement. Although these requirements are directed towards the specification of a patent application, the claims of a patent application may be rejected for an applicant's failure to comply with these requirements. Each of these requirements is discussed below in turn. Written Description The written description requirement requires an applicant to disclose the invention in a clear and complete fashion. The core elements of the inventions (i.e., the essential details), must be described or depicted in detail. The general test to determine whether an application complies with the written description requirement is whether the specification is sufficient to show that the applicant was in possession of the claimed invention as of the filing date of the application. The description of the invention in the specification therefore must be clear, complete, and concise. Enablement The enablement requirement requires an applicant to provide enough detail describing the invention to enable one of ordinary skill in the art to make and use the invention without undue experimentation. The amount of experimentation that constitutes undue experimentation is dependent upon the subject matter involved. For example, if an ordinary computer programmer, utilizing the teaching contained in the specification, could readily make and use the software related invention claimed in the application, the enablement requirement is likely satisfied. If, on the other hand, it would take highly skilled nuclear engineer years to make an invention because of the lack of details provided in the specification, the enablement requirement has not likely been satisfied. In addition, the scope of the teaching in the specification must be commensurate with the scope of claims. If the claims are broad, yet the specification only provides a narrow disclosure, the enablement requirement is not likely satisfied. For questions related to enablement, keep in mind the standard - an applicant must provide enough detail to enable one of ordinary skill in the art to make and use the invention without undue experimentation. Best Mode The best mode requirement is a subjective inquiry and requires that the applicant disclose the applicant's preferred manner of making or using the claimed invention. A rejection based on failure to set forth the best mode contemplated by the applicants is rare, mostly because subjective evidence concerning the applicant is rarely uncovered. The best mode requirement is a safeguard against the desire on the part of some applicants to obtain patent protection without making a full disclosure, as required by the patent statute. The best mode requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves. Remember, the best mode requirement only requires an applicant to disclose his best mode of making or using the invention. It does not require an applicant to specifically point out which embodiment is preferred.

Rejections Under 35 U.S.C. § 102(b)

The general rule is that the examiner will reject the claims under 35 U.S.C. § 102(b) if possible because this provision is a "bar" to patentability. In other words, if the conditions set forth in 35 U.S.C. § 102(b) are satisfied, the invention as claimed is barred by law from being patented and nothing that the applicant can do will overcome the rejection. If a Section 102(b) rejection is properly issued, the applicant has only one option - he must cancel or amend the rejected claim to cover different subject matter. If the publication date of the reference is more than 1 year prior to the effective filing date of the application, and the reference contains each and every element of the claims, the reference qualifies as prior art under 35 U.S.C. § 102(b). The determination of the effective filing date of a patent application has already been discussed in Section 706.02 above. The publication date of a reference is the date on which the reference became publicly accessible. For example, a magazine is effective as a printed publication as of the date it reached its addressee, not the date it was placed in the mail. Remember, the Applicant is given a grace period to file his application if the one year anniversary date from the publication date of a prior art reference falls on a Saturday, Sunday or Federal holiday. In such a case, the Applicant has until the next succeeding business day to file his application without incurring a 102(b) bar. Please note that the America Invents Act ("AIA") substantially changed Section 102 and modifies the grace period. These changes are covered in the last part of Section 706.02.

Prior Art; General Level of Operability Required to Make a Prima Facie Case

The general rule regarding prior art is that a prior art reference is good for all that it teaches to one of ordinary skill in the art. Thus, the reference may be used to reject a claim under Sections 102 and/or 103 if the reference expressly, inherently, or implicitly discloses the subject matter claimed. There is one important corollary to this general rule. A prior art reference must provide an enabling disclosure before it may be used to reject a claim. This makes perfect sense with respect to the general rule because if the prior art reference is not enabling (i.e., it does not teach one of ordinary skill in the art how to make or use the invention), by definition one of ordinary skill in the art does not appreciate the reference for teaching the claimed subject matter. The level of disclosure required within a reference to make it an enabling disclosure is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, or a printed publication. The reference must teach one of ordinary skill in the art how to make or use the invention. When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to provide facts rebutting the presumption of operability.

The Receiving Office

The international application must be filed in the appropriate Receiving Office. Both the United States Patent Office and International Bureau of the World Intellectual Property Organization ("WIPO") are appropriate receiving offices for United States citizens and nationals. While at the Receiving Office, the international application is reviewed to ensure it complies with filing and other formalities. For example, international applications must contain a designation of at least one Contracting State in which patent protection is desired and must meet certain standards for completeness and formality. The Receiving Office will also grant an international filing date to the international application. Where a priority claim is made, the date of the earlier filed national application is used as the "priority date" for the international application, which affects the timing of international processing and publication of the application. Where no priority claim is made, the international filing date is the priority date.

Section 710 - Period for Reply

The maximum statutory period for reply to an Office Action is 6 months. Shortened periods are used in practically all cases. For example, if the examiner issues an Office Action and sets a 3-month shortened statutory period for reply, the applicant may reply within three months without requesting an extension. If the applicant replies after three months but before six months, a request for extension of time along with the appropriate fee is required. If an applicant does not reply within six months, the application will become abandoned for failure to timely reply. The actual time taken for reply is computed from the date stamped or printed on the Office Action to the date of receipt by the Patent Office of applicant's reply. The Patent Office does not count fractions of a day and the applicant's reply is due on the corresponding day of the month, 6 months (or any lesser number of months specified) after the Office Action is issued . For example, a reply to an Office Action with a 3-month shortened statutory period dated November 30 is due on the following February 28th (or 29th, if it is a leap year), while a reply to an Office Action dated February 28 is due on May 28, and not on the last day of May.

Period for Notice of Appeal

The notice of appeal must be filed within the period for reply set in the last Office Action, which is normally a shortened statutory period of 3 months. Failure to remove all grounds of rejection or to file an appeal after final rejection will result in the application becoming abandoned, even if one or more claims have been allowed. The notice of appeal and appropriate fee may be filed up to 6 months from the date of the Office Action (e.g., a final rejection) from which the appeal was taken, so long as an appropriate petition and fee for an extension of time is filed either prior to or with the notice of appeal.

Section 713 - Interviews

The personal appearance of an applicant, attorney, or agent before the examiner or a telephone conversation or video conference or electronic mail between such parties presenting matters for the examiner's consideration is considered an interview. A request for an interview prior to the first Office Action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action is only encouraged where the examiner determines that such an interview would advance prosecution of the application.

Death of Patent Practitioner

The power of a patent practitioner will be revoked or terminated by his or her death. Such a revocation or termination of the power of the principal patent practitioner will also terminate the power of those appointed by him or her. Thus, a principal patent practitioner may appoint an associate patent practitioner but such power terminates with that of the principal. The principal patent practitioner may not appoint a "substitute," and any attempt by the principal to appoint a substitute patent practitioner whose power is intended to survive his or her own will not be recognized by the Patent Office. If notification is received from the applicant or assignee of the death of the sole principal patent practitioner, and the application is up for action by the examiner, correspondence is held with the applicant or assignee who originally appointed the deceased patent practitioner. Remember, the Patent Office does not generally communicate with attorneys or agents who have been suspended or excluded from practice.

Answer

The primary examiner then has the option of filing an answer to the appellant's brief. The answer will typically include an explanation of the claimed invention, the rejections issued, and the references used to make the rejections. Sometimes the examiner's answer will include a new ground of rejection. For example, given the interpretation of the claims provided by the appellant in his brief, the examiner may maintain a Section 103 obviousness rejection but change the references used in the rejection. If a new ground of rejection is issued, the applicant has the option of either requesting that the examiner reopen prosecution in light of the new ground of rejection or maintaining the appeal, in which case the applicant may file a reply brief contesting the assertions presented in the examiner's answer. Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and the examiner's answer, to the Board. The primary examiner no longer has control over the application after jurisdiction passes to the Board.

Right of Public To Inspect Patent Files and Some Application Files

The public is entitled to the file wrapper (i.e., the specification, drawings, and all papers relating to the file of that published application) of all published applications. If a patent application has been published, then a copy of the file wrapper may be provided to any person upon written request and payment of a fee. If a redacted copy of the application was used for publication, public access is generally limited to the redacted copy and other redacted materials in the file. Incorporation by reference of an unpublished application in a U.S. patent application publication, a U.S. patent, a published international application, or a statutory invention registration constitutes a special circumstance warranting the Patent Office to provide a copy of the application-as-filed upon written request. Applications that were not published or patented, or that are not the subject of a benefit claim to an application that has been published, are not available to the public. However, if an unpublished application is identified in the file contents of another publicly available application, a requestor may file a petition for access to the application.

Restrictions on Practice in Patent Matters

The restrictions placed on Patent Office employees after leaving the Patent Office are frequently tested on the registration examination. Generally speaking, the Patent Office limits a former employee from (1) acting as an agent at any time in any matter in which the employee substantially participated; and (2) acting as an agent within two years from termination of employment with the Patent Office. These two restrictions on representation are quite broad and apply not only to cases in which the former employment actually represents another, but also prevents former Office employees from aiding or helping another person, which may fall short of actual representation. Remember that current employees of the Patent Office may not prosecute or aid in any manner in the prosecution of any patent application. In addition, employees cannot apply for or obtain an interest in any patent while an employee and up to one year after their employment with the Patent Office terminates (except by inheritance).

Two Separate Requirements for Claims Under 35 U.S.C. § 112, Second Paragraph

The second paragraph of Section 112 sets forth two distinct requirements for the claims of a patent application. First, the claims must set forth the subject matter that the applicant regards as his invention. Second, the claims must particularly point out and distinctly define the metes and bounds of the invention. The first requirement is rarely imposed by an examiner because it is a subjective inquiry that is dependent on what the applicant regards as his invention. There must therefore be some evidence that the claims are directed to subject matter that the applicant does not regard as his invention. For example, if during prosecution, the applicant makes several statements describing his invention as A, but the claims are all directed towards B, then the application may not comply with this first requirement. It is important to note that the second paragraph of Section 112 does not prohibit an applicant from changing what they regard as their invention during the pendency of the application. An applicant is free to shift the focus of the claims as he sees fit. The second requirement of the second paragraph of Section 112 requires the claims to be clear to a person of ordinary skill in the art. This requirement examines a claim's definiteness (i.e., its ability to precisely set forth the subject matter being claimed). The test for compliance with this definiteness requirement is an objective one - a person of ordinary skill in the art must be able to understand what the claims do and do not cover. Claims that contain vague language, lack antecedent basis, or otherwise are not amenable to construction do not comply with this definiteness requirement.

The Supreme Court's KSR Opinion

The seminal court case on obviousness is the Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc. In fact, this case is so important to the law of obviousness that the Patent Office has issued guidelines for examining patent applications in light of the KSR case. These guidelines explain how the Patent Office is interpreting and applying the KSR decision to the law of obviousness under Section 103. The guidelines point out that the four factual inquiries (provided above) remain the foundation of any determination of obviousness. As for the reasoning required to support an obviousness determination, the guidelines note that the teaching suggestion-motivation ("TSM") test is but one possible approach. Under the TSM test, there must be some suggestion or teaching in the prior art to combine elements in the prior art in order to find a patent claim obvious. For example, consider claim 1 of a patent application that is directed to a video compression system that comprises elements A and B. Now suppose that the Examiner finds a first prior art reference teaching element A, and a second prior art reference teaching element B. Under patent law, simply locating the elements A and B in the two prior references is not enough to issue an obviousness rejection for claim 1. The Examiner must also identify some motivation to combine the two prior art references. For example, the two prior art references may solve the same problem (e.g., both present ways of compressing video), or the two references may be in the same underlying field (e.g., both are articles on video compression techniques). Only after the Examiner identifies some teaching, suggestion, or motivation to combine the two prior art references may the Examiner issue an obviousness rejection. In addition to the TSM test, the Patent Office's examination guidelines identify six other rationales that may be used to support an obviousness rejection. The other rationales include - (1) combining prior art elements according to known methods to yield predictable results; (2) simple substitution of one known element for another to obtain predictable results; (3) use of a known technique to improve similar devices, methods, or products in the same way; (4) applying a known technique to a known device, method, or product ready for improvement to yield predictable results; (5) obvious to try—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; and (6) known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.

Identifying a 35 U.S.C. § 112, Sixth Paragraph Limitation

The sixth paragraph of Section 112 sets forth the special type of claim called a "means plus function" claim. Means-plus-function is just one way to set forth a limitation within a claim. Take for example the claim below. Claim 1. A system for heating a fluid comprising - a first heat exchanger that raises the temperature of the fluid; a second heat exchanger coupled to the first heat exchanger; and means for monitoring the operational efficacy of the first and second heat exchanger. Claim 1 is a system claim. First, you should note that this claim is directed towards statutory subject matter. This claim falls within the statutory class of machines under Section 101 and is therefore directed towards patentable subject matter. The first two elements of Claim 1, namely the first and second heat exchangers, set forth two components of the system. The final element is written in meansplus-function format. A claim limitation is presumed to be a means-plus-function limitation if - (1) the claim limitation uses the phrase "means for" or "step for"; (2) the limitation is modified by functional language; and (3) the limitation does not contain sufficient structure, material, or acts for achieving the specified function. Thus, a limitation will be construed as a means-plus-function limitation if the limitation contains the magic "means for" or "step for" language, includes a function, and does not recite the structure employed for carrying out the function. In the event that it is unclear whether the claim limitation falls within the scope of Section 112, sixth paragraph, a rejection may be appropriate. Means-plus-function limitations are special because they receive a statutory construction. You should recall that ordinary limitations are construed as one of ordinary skill in the art would construe the limitation as of the effective filing date of the application and in light of the specification, prosecution history, and other intrinsic evidence. Means-plus-function limitations are construed to cover the corresponding structure described in the specification and equivalents thereof. For example, in Claim 1 above, if the specification set forth a microcontroller that was programmed to monitor the heat exchangers, the third element of Claim 1 would be construed as the microcontroller plus any equivalent thereof. If the specification does not disclose a structure for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. § 112, second paragraph. In such a case, the examiner should reject the claim under the second paragraph of section 112 because the applicant has failed to particularly point out and distinctly claim the invention. Thus, means-plus-function limitations are linked to the definiteness requirement under the second paragraph of Section 112.

The Best Mode Requirement

The third requirement of the first paragraph of Section 112 is the best mode requirement, which requires the inventor to "set forth the best mode contemplated by the inventor of carrying out his invention." The best mode requirement is a safeguard against the desire on the part of some applicants to obtain patent protection without making a full disclosure to the public, as required by the statute. The requirement does not permit applicants to disclose only what they know to be their second-best embodiment, while retaining the best for themselves. Determining whether an applicant complied with the best mode requirement is a two-prong inquiry. First, it must be determined whether, at the time the application was filed, the inventor possessed a best mode for practicing the invention. This is a subjective inquiry which focuses on the inventor's state of mind at the time of filing. Second, if the inventor did possess a best mode, it must be determined whether the written description disclosed the best mode such that a person skilled in the art could practice it. This is an objective inquiry, focusing on the scope of the claimed invention and the level of skill in the art. Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable conduct in order to support a rejection or invalidate a patent. The mere fact that the applicant knew of a best mode for practicing the invention and failed to adequately disclose it in the application is sufficient to support a rejection based on failure to comply with the best mode requirement.

Types of Applications

The two core classes of patent applications are (1) provisional applications and (2) non-provisional applications. There is no such thing as a "provisional patent." "Provisional" applies only to patent applications filed in accordance with 35 U.S.C. § 111(b). An application with a single inventor is termed a "sole" application. An application with more than one inventor is called a "joint" application.

Original Oath or Declaration

Through the oath, the named inventors swear that they believe that they are first inventors of the subject matter which is claimed. Remember that a provisional application does not require an oath, and a filing date will be assigned without submission of an oath for non-provisional applications. The Patent Office recognizes a declaration as a substitute for an oath. Thus, either an oath or declaration is required from the named inventors of a non-provisional application, but not both. A new or supplemental oath or declaration is required when new matter is added to an application. This may occur, for example, when the applicant initially executes an oath but fails to include a required part (such as drawings, a claim, or an adequate specification) or when filing a continuation-in-part application, which by definition adds new matter to the parent application. The wording of an oath or declaration cannot be amended, altered or changed in any manner after it has been signed. If the wording is not correct, or if all of the required affirmations have not been made, a new oath or declaration is required.

Rejections Under 35 U.S.C. 102(c)

To be denied a patent for abandonment, the Patent Office must show actual abandonment, which requires that the inventor intended to abandon the invention. Intent to abandon can be implied from the inventor's conduct. However, every reasonable doubt should be resolved in favor of the inventor. In other words, abandonment under Section 102(c) requires a deliberate surrender of patent rights that amounts to the inventor dedicating his invention to the public. Delay alone is not sufficient to infer the required intent to abandon.

Power to Inspect Application

Under certain circumstances, an authorized person may grant power to inspect an unpublished application. The power to inspect encompasses the power to make copies of the application. If an executed oath or declaration has been filed, no person but the applicant (or any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record, will be permitted to have access to the file of any pending application kept in confidence unless written authority from one of the above indicated parties is made of record. A person acting in a representative capacity (i.e., an agent or attorney prosecuting an application without a power of attorney) may execute a power to inspect only if the attorney or agent was named in the application transmittal papers. Once an executed oath or declaration has been filed, any previously filed powers to inspect signed by a registered attorney or agent who does not have a power of attorney will cease to have effect.

Correction of Inventorship in an Application

When filing a non-provisional application, an oath or declaration by each inventor must be presented. While each inventor need not execute the same oath or declaration, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. For example, where the inventive entity for an application is A and B, a declaration may not be executed by A naming only A as the inventor and a different declaration executed by B naming only B as the inventor. If filing separate declarations, each declaration must list all inventors. If multiple, conflicting oaths are filed on the same day, the Patent Office considers the inventors named in either declaration as the inventive entity, and a new oath or declaration including the entire inventive entity is required. For example, if a first declaration names A, B, and C as inventors and a second declaration names D as the inventor, the Patent Office considers A, B, C, and D as inventors (if the oaths or declarations were filed on the same day). If filed on different days, the later-filed oath or declaration generally controls. Correction of inventorship is liberally allowed by the Patent Office. 37 C.F.R. § 1.48(a) is directed at correcting the inventorship in an application where inventorship was improperly set forth in the executed oath or declaration filed in the application. 37 C.F.R. § 1.48(b) is directed at correcting inventorship where the executed oath or declaration had correctly set forth the inventorship but due to prosecution of the application (e.g., claim cancellation or amendment) fewer than all of the currently named inventors are the actual inventors of the remaining claims. 37 C.F.R. § 1.48(c) is directed at correcting inventorship where the executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended subject matter must be added to the correct inventorship. 37 C.F.R. § 1.48(d) is directed at provisional applications where an inventor is to be added. 37 C.F.R. § 1.48(e) is directed at provisional applications where an inventor is to be deleted. 37 C.F.R. § 1.48(f) operates to automatically correct the inventorship upon filing of a first executed oath or declaration by any of the inventors in a non-provisional application or upon filing of a cover sheet in a provisional application. Generally, the Patent Office will allow correction of inventorship as long as the requestor is not being deceptive. 35 U.S.C. § 120 permits a continuing application to claim the benefit of the filing date of a co-pending, previously filed parent application provided there is inventorship overlap between the continuing application and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. § 120 is satisfied.

Restriction in Applications Filed Under 35 U.S.C. 111 - When Proper

When the Patent Office believes that a single patent application contains claims directed to two or more distinct and independent inventions, the examiner will issue a restriction requirement. After receiving a restriction requirement, the applicant is required to elect one of the inventions and prosecution will proceed only with respect to the elected invention. Any invention not elected is withdrawn from consideration, and the applicant may file one or more divisional applications claiming the non-elected subject matter. The requirement that a single application claim only a single invention not only enables the Patent Office to efficiently examine applications but also eliminates the possibility of fee circumvention. Each application requires a fee, and if multiple inventions could be claimed in a single invention, the applicant could circumvent paying the requisite fees. Generally, a restriction requirement is proper when the following two conditions are present - 1. The claims are directed to independent inventions; and 2. There would be a serious burden on the examiner if restriction is not required. The term "independent" means that there is no disclosed relationship between the two or more inventions claimed (i.e., they are unconnected in design, operation, and effect). For example, a process and an apparatus incapable of being used in practicing the process are independent inventions.

The Written Description Requirement

You should hopefully remember that there are three separate requirements dealing with the adequacy of an applicant's disclosure - (1) written description; (2) best mode; and (3) enablement. All three of these requirements come from the first paragraph of Section 112. The written description requirement is based from the language requiring that the "specification shall contain a written description of the invention." The primary purpose of the written description requirement is to clearly convey the subject matter that an applicant has invented. An examiner may reject a claim based on an applicant's failure to comply with the written description requirement. The test used to determine if an applicant has complied with the written description requirement is one of possession. In other words, to satisfy the written description requirement, a patent application's specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention as of the effective filing date.