USPTO

Ink color

"Clean red ink" (not clean blue or black ink) must be used in correcting originally filed papers. [MPEP 1302.04 Examiner's Amendments and Changes [R-3] - 1300 Allowance and Issue] The question appears to be asked in the form "which is not correct". Thus, the answer was using black ink (should be done with red).

NO extensions even with cause

1. IDA 2. Due dates set by statute 3. Issue fee( can be paid late but cannot be extended) 4. large entity refund 5. filing formal drawings at time the issue fee is paid.

No Automatic extension (six times)

1. Office says so 2. Reply brief 3. request for oral hearing 4.responding to board decision 5. anyting in an interference 6. Due dates in reexaminations

Rights after final

1. cancel claims 2. comply with requirements as to form or adopt suggestions ofthe examiner 3. present claims in better form for consideration on appeal. Amendments will not be entered without a showing of why they were no presented earlier and why they are necessary. No right to an interview

Consequences of recording, a second buyer takes title over a a first buyer if:

1. failure to record with 3 months or prior to second assignment, whichever is later. 2.The second buyer did not know of the first sale.

Six types of withdrawl

1. withdrawal of claims to non elected species or invention. claims are not cancelled. if restriction successfully traversed the withdrawal may end in whole or part 2. withdrawal of final rejection. if finality of a rejection is improper, then the applicant can petition to have it withdrawn 3. withdrawal of holding of abandonment. 4. withdrawal of power of attorney. petition the commissioner to withdraw. need to provide client sufficient time to find a new attorney. granting upon commissioner say so. 5. withdrawal from issue. after notice of allowance has been transmitted either the patent must issue, be abandon, or withdrawn by petition from issue. 6. withdrawal of terminal disclaimer. a terminal disclaimer which has been recorded may be withdrawn at any time before the application in which it is filed issue as a patent.

CPA

1.53d - for design only. Parent must be abandoned No certificate of mailing

Assignment Requirements (6 things)

1.Must be in English or with a translation 2. Identify patents by number and applications by number. 3. Fee 4. Legible and on one side of paper. 5. Original or certified copy. 6) Cover sheet

Restoration of Rights

12+2 for priority rights if unintentional. + fee. PLTIA

Patent term adjustment (PTA) 2700

14/4/4/4 1. Greater than 14 months from initial filing to notice of allowance., first office action, restriction, examiner request. 2. greater than 4 months to reply to an amendment or appeal 3. greater than 4 months to act after decisions by board or CAFC. 4. greater than 4 months to print patent once issue fee has been paid and all outstanding issues satisfied. Overall pendency from initial filing to issue of more than 3 years ! Delays due to interferences, secrecy orders, and successful appeals. Petitions to challenge must be filed within 2 months of the patent grant

Disqualify prior art using 130 affidavit

140 a for 102a disclousre by inventor must show: An unequivical statement from the inventor or a joint inventor that he.she invented the subject matter of the disclosure along with a reasonable explanation of the preseence of additional authors. A mere statement from the inventor with out reasonable explanation may not be sufficient where there is evidence to the contrary. 130B for 102b Must show: 1. Subject matter had been publicly disclosed by the inventor directly or indirectly before the effective filing date of the subject matter on which the rejection was based. 2. must identify the subject matter public disclosed and establish the date and content of the earlier public disclosure. 3. If printed then the affidavit must be accompanied by a coup of the printed publication. 4. If not printed the affidavit must describe the earlier disclosure with sufficient detail and particularity to determine that the earlier disclosure is public disclosure of the subject matter. By another who obtained the subject matter disclosed directly or indirectly from an inventor: Can use 130a or b. Applicant needs to establish that the subject matter disclosed originated with the inventor or a joint inventer and how it was communicated by the inventor or joint inventor. It is not necessary the the subject matter was disclosed in the same manner or using the same words. Must show: the disclosure in question was made by an inventor 2. the subject matter disclosed had before such disclosure was made or before such subject matter was effectively filed, been pubically disclosed the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor.

Publication 1120

18 months after filing. Can request to opt out one y in the US if not app in another country. Must rescind within 45 days if filed in another country or the application will go abandoned

oral hearing

2 months to file after examiner answer( can be extended for cause).

Markush groups

2173.05h.

RCE

37 CFR 1.114 706.07 Continued examination of the same applications CPA for utility patents No divisional Cuts off PTA and on deferment of filing fee Certificate of mailing ok Req 1. Request for RCE 2. Submission 3. Fee Prior to the earliest of the following: payment of issue fee, abandonment, or the filing of a court action.

Express Abandonment

37 CFR 1.138- Need at least 4 weeks prior to publishing.

Multiple dependent claim permeable

608.01n

Claims 608.01

A ______ comprising: A ______ consisting of: Comprising is much more broad. Always be on the look out for consisting of claims. A semi-colol(;) or comma separates the claims. A period ends the claims 112(f)- menas plus function. 2173.05h- Markush Groups Claim and spec must agree

Disclaimer

A disclaimer can be of less than all the claims in a patent, but a terminal disclaimer must be for all claims a reissue or reexam cannot be filed to withdraw or nullify the effects of a terminal disclaimer a terminal disclaimer, which has been recorded, may be withdrawn at any time before the application it is filed issues as a patent

USC 103 - 706.02, 2142

A suggestion of success is all you need. The prior art should be suggestive of the combination in accord with KSR rationale, there has to be a likelihood of success for the combination and the combination has to include all the elements recited in the claim . Examiner needs to establish prima facie case of obviousness.

Correction of Inventorship

AIA Non-provisional application: Rule 1.48- to fix inventorship all you have to do is file a ADS with the correct legal names, address information and the fee. Provisional: Letter to correct+fee. patent: Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, may, on application of all the parties and assignees, issue a certificate naming only the actual inventor or inventors. Thus, correction of inventorship should be accomplished by filing a request for Certificate of Correction if (1) the only change being made is to correct the inventorship; and (2) all parties are in agreement and inventorship is not contested. Such a request to correct inventorship of a patent must be accompanied by (1) the appropriate fee; (2) a statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change; and (3) a statement from all assignees agreeing to the change of inventorship in the patent.

Protest 1901, 37cfr291

ANY BODY CAN FILE A PROTEST AGAINST THE ISSUANCE OF ANY APPLICATION. A protest will be entered: 1. It is timely submitted before final rejection or allowance. 2. it is served upon the applicant Can be based on 102 or any of the other statutory requirement i.e. 101 103 etc The protest will be considered if in addition copies of references and translation of no english papers and a concise explanation of relevance is provided.

Pre AIA 102 e

Adds US patents and published applications and PCT applications designating the US which are published in english. Defensive publications are not 102e material cancelled from the application is not 102 e

Plant Patents 1600

All plants are patentable except 1)bacteria and 2) tuber propagated (potato and Jerusalem artichoke) Must have been invented or discovered in a cultivated state and asexually reproduced. Requirements 1. two copies of a drawing 2. black and white photo 3. Spec ( origin or parentage, and genus and species of the plant-- can state all that you know)

Examiner answer

Answer to the notice for appeal and appeal brief

Oath/Declaration

Any inventor in application must provide an oath or declaration. declaration can be used instead of affidavit

130 affidavit

Assert entitlement to 102B exceptions. Disqualifiy prior art.

Confidentiality

Attorney/agent must maintain confidentiality of any information disclosed to the client. This only applies to clients. If someone who is not a client discloses information to you, you have no duty to maintain confidentiality.

Suspension of action

CAn be suspended upto 6 months by examiner. Petition can only be filed when no outstanding action.. No suspension in a reexamination

Small entity 509

Can be obtained by: 1. an indépendant inventor who has no assigned, granted or licensed any rights to someone who is not a small entity. 2. A non profit- school or recognized by IRS. 3. a Small business-no more than 500 people (part time and temporary workers( average workers during last 12 months).

Defer issuance

Can defer issuance upto 1 month follwoing the payment of the issue fee.

Third party submissions 1134

Can submit patents, published patent applications, or other printed publications of potential relevance to the Patent office for consideration during examination and for inclusion in the file. A third party pre issuance submission must include: 1. a concise description of the asserted relevance of each document submitted 2. must be submitted within a certain specified time period Period The earlier of 1. the date of a notice of allowance or 2. the later of (i) six months from the publication or (II) the date of the first rejection of any claim Must be submitted before the date determined, not on the date. Pre issuance submission must contain: 1/. list identifying the items being submitted 2. concise description of the relevance of each 3. a legible copy of each non us patent document listed 4. english translation of any non english item 5. a statement by the party making the submission that the submission complies with the statute and the rule 6. a statement that the submitting party is not a individual who has a duty to disclose information with respect tho the application Three or fewer items is free, then buy in groups of ten. Do not make the rejection for the examiner. Give them the evidence. The office will either enter or not enter the entire submission. no refund for non compliant submissions No documents that are subject to secrecy order or documents that do not qualify as publications.

Divisional

Claims are distinct from parent. New matter. 1.53b

AIA 102 c

Common ownership Requirements: The subject mat=ter disclosed was made by, or on behalf of one or more of the parties to a joint research agreement that was in effect prior to the effective filing date. 2. With in the normal scope of hte agreement 3. patent has or is amended to disclose all the names of the parties to the joint research agreement.

IDS

Content: 1. A list of the individual items submtted with patent identified by patentee number and issue date; and publications identified by author, title, relevant pages, date 2. A copy of every patent publication or other information being submitted 3. a concise explanation of the relevance of anything not in english. Translations if available. Three time periods 1. Within 3 months of the applicaiotn filing date or before the first action. Just IDS 2. IF filed after the first action but before allowance or final action, IDS and either a statement or a fee 3. After final action, close of prosecution or allowance, but before the payment of issue fee, a statement and a fee are required IDS in reissue filed within 2 months from filing. Statment must state: 1. each item disclosed was cited for the first time in a communication from a foreign patent office less that three months before the date of the IDS, or 2. No item was cited in a communication from a foreign office and no item was known to anyone having a duty to disclose more than three months before the date of the IDS. An information disclosure statement must include a list of all patents, publications, applications, or other information submitted for consideration by the Office. 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. MPEP 609.04(b)(IV). If the applicant wants the IDS to be considered, the application may be withdrawn from issue and the applicant may file a Request for Continued Examination (RCE) or a continuing application. Situations arise in which it becomes necessary, or desirable, for parties to proceedings relating to pending patent applications or reexamination proceedings to submit to the Office trade secret, proprietary, and/or protective order materials. As in all other situations, it is incumbent upon those substantively involved in prosecution to bring non-cumulative, material information to the attention of the Office. This is true even when the material information is classified as a trade secret, or as proprietary material, or is subject to a protective order. Thus, (A) is incorrect. Trade secret material, proprietary material, and any material subject to a protective order must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. Therefore, (B) is incorrect. Each document or item must be clearly labeled as a "Trade Secret" document or item, a "Proprietary" document or item, or as an item or document "Subject To Protective Order," as is appropriate. The Office forbids the use of terms "Confidential," "Secret," and "Restricted" or "Restricted Data" in order to avoid confusion with national security information documents which are marked with these terms. Therefore, (C) is incorrect. The Office says that the envelope or container with the information should be hand-delivered to the Customer Service Window at the USPTO, but it may also be mailed to the Commissioner for Patents at the Office PO Box. The envelope or container must be accompanied by a transmittal letter that itself also contains the same identifying information as the envelope or container. Therefore (D) is incorrect and (E) is correct. For more on this, see MPEP 724.

Continuation

Copending with parent app. No new matter. 1.53b

Must be done in 30 days

DOE and NASA statements Respond to remand by the board

Ethics

Dont lie, cheat, or steal. Don't not take work you know you do not feel competent that you can handle.

Revoking power of attorney 402

Effective date received by the PTO

112

Enablement and best mode The enablement requirement mandates that the applicant describe how to make and use the claimed invention without requiring undue experimentation. Because the disclosure does not describe how to make the composition, the examiner can properly reject the claim under 35 U.S.C. 112 due to lack of enablement. AIA, the lack of best mode is no longer an acceptable reason to find a patent claim to be invalid. It is also true that 35 U.S.C. 112(a) still requires best mode to be disclosed. But best mode is not a concept that exists in a vacuum. 35 U.S.C. 112(a) requires the disclosure of the best mode of the claimed invention. the following factors should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous: 1.Whether there is a clear-cut indication of the scope of the subject matter covered by the claim. 2.Whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained. 3.Whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. merely reciting a general purpose computer is not enough. In fact, for a computer-implemented means-plus-function claim limitation invoking §112(f), the corresponding structure is required to be more than simply a general purpose computer or microprocessor. To claim a means for performing a particular computer-implemented function and then to disclose only a general-purpose computer as the structure designed to perform that function amounts to pure functional claiming.

Request for continued examination (RCE) 706.07

Essentially pay money to continue from that point in the prosecution. Prior to payment of issue fee, abandonment, or court action. No divisional allowed. Requirement: 1. Request 2.Submission 3. Fee Submission include: reply to outstanding office action or IDS, evidence, etc.

Double patenting 804

Exists in two forms: 1. Statutory- same invention type- cannot be overcome with terminal disclaimer 2. Judiciary - obviousness- can be overcome with terminal disclaimer.

Foreign Priority requirements

File a claim for priority in an ADS. File a certified copy of the original foreign application.

Statutory invention registration (SIR) Pre AIA 1101

File something line an application get 102e date or AIA 102 a2 date but it bestows no rights. No SIR in AIA

Transition cases

Filing date on each side of march 14, 2013 AIA+ pre aia 102 g. Need transition statement

Things you can do at the patent office

Get a filing date for an application with out submitting the names of the inventors, the required fee, assigned declaration or a translation into english petition to withdraw an application from issue in order to have an interference or to permit consideration of an IDS in a continuation application Overcome a double patenting rejection of the obviousness type by filing a terminal disclaimer which also provides that the patents will lapse if they ever cease being owned by the same entity. petition the commissioner to overturn an improper restriction requirement after first asking the examiner for reconsideration and electing as required. Must petition with two months from the decision of the examiner on the request for reconsideration. File a continuation in a reissue withdraw a recorded terminal disclaimer until the date the patent issues file a design continuation or divisional by facsimile, provided that the parent is to be abandon extend the time period for completing an incomplete, but bona fide response to a non-final action. appoint an agent to represent a foreign assignee or inventor post issuance

Claim counting

IC-single MDC-number of claims from which it depends. IMDC-single claim

Foreign Filing Licenses

IF the invention is made in the US, a foreign filing license is required before an application covering that invention can be filed in another country, no matter wether the technology has any conceivable relation to national security. Obtain license: 1. Six months passage from filing a US app 2. Granted on filing receipt 3. grating of a petition asking for one

PPH

IP5 ( US, Japan, China, EU, Korea) Need some indication of allowance Claims need to be roughly the same Requirements 1. Same earliest date 2. At least one allowed claim 3. All claims must correspond to the previously allowed claims 4. Substantive exam has yet to begin One opportunity to perfect application Does not care over in continuation Does carry over in RCE

Machine or apparatus and method that claims abstract idea. patentability factors:

If a particular machine or apparatus is incorporated into the claimed method the July 2010 Bilski Guidance tells us that this weighs in favor of patent eligibility. This is particularly true when the method steps are specifically tied to the machine or apparatus. The July 2010 Guidance also gives us a list of factors weighing against eligibility, which are: (1) No recitation of a machine or transformation (either express or inherent). (2) Insufficient recitation of a machine or transformation. (3) Involvement of machine or transformation with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps. (4) Machine is generically recited such that it covers any machine capable of performing the claimed step(s). (5) Machine is merely an object on which the method operates. (6) Transformation involves only a change in position or location of an article. (7) The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature. (8) A law of nature is applied in a merely subjective determination. (9) A law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps. (10) The claim is a mere statement of a general concept. (11) Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept. (12) Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. (13) The claim only states a problem to be solved. (14) The general concept is disembodied. (15) The mechanism(s) by which the steps are implemented is subjective or imperceptible.

Swearing back 1.131

If the applicant wishes to overcome the rejection based on prior art by establish that the invention date is before the date of the prior art reference. Pre AIA 102 a and 102e.

Pre AIA 102 G

Interference law

Interview 713

Interview before filing not permitted. Interview after final not a right. Must be recorded When an applicant requests an interview prior to the first office action, the examiner may require a general statement of the state of the art at the time of the invention, and an identification of no more than three references believed to be the "closest" prior art, as well as an explanation as to how the broadest claim distinguishes over such references.

Accelerated Exam- On or after August 25, 2006- 708.02

Lots of conditions and a fee.

Preliminary amendment

Made after or at the time of filing but before an action is issued.

Notice of omitted items

Missing spec page or figure. Two choices 1. File a petition and fee, together with the omitted items , a copy of the notice, once a supplemental oath or declaration, and request to have filing date awarded. Two months to file the correct paper work. 2. Do nothing, but respond that you are doing nothing.

1.130

More specifically, an applicant may show that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the disclosure or effective filing date of the subject matter on which the rejection was based by way of an affidavit or declaration under 37 CFR 1.130(b) (an affidavit or declaration of prior public disclosure). Specifically, the affidavit or declaration must identify the subject matter publicly disclosed and establish the date and content of their earlier public disclosure. If the earlier public disclosure was a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication in accordance with 37 CFR 1.130(b)(1). If the earlier disclosure was not a printed publication, the affidavit or declaration must describe the earlier disclosure with sufficient detail and particularity to determine that the earlier disclosure is a public disclosure of the subject matter, as required by 37 CFR 1.130(b)(2). When a suspected deriver has submitted his or her own application, the critical question turns to whether the claims submitted are the "same or substantially the same" as a claim of an earlier application. If the claims submitted by Kelly are the same or substantially the same when compared to the claims filed by Lexington, Kelly will be required to pursue a derivation proceeding. If the claims are not the same or substantially similar to the claims filed by Lexington, then Kelly can take advantage of the AIA 35 U.S.C. 102(b) exception by utilizing a 130 affidavit. This question presents a mixture of the two. Claims 1 - 10 filed by Kelly are either identically or substantially similar to those filed by Lexington. Thus, Kelly cannot resort to a 130 affidavit with respect to those claims and must pursue a derivation proceeding. Claims 11 - 25 are, however, quite different than those claims submitted by Lexington; thus, a 130 affidavit can be used to remove the Lexington reference as prior art for those claims.

AIA Oath/Declaration 37 CFR 1.63

Much easier for third party to file without an inventor. Can use substitute statements. Applicant: 1. Required fee, 2. a showing of sufficient proprietary interest 3. A statment that the application is appropriate to preserve the rights of the parties. Oath must include: 1. identify the inventor by legal name 2. identify app 3. Include a statement that the person executing the oath or declaration believes the named inventor to be the original inventor 4. State that the application was made or authorized to be made by the person executing the oath or declaration. if not in the ADS 5. each inventor by their legal name 6. mailing address for each inventor. a declaration can be used instead of an affidavit 37 CFR 1.68

Appeal Brief 1205

Must be filed with in 2 month of notice of appeal (extendable upto 5 extra months for cause). Requirements : 1. Identification of the real party in interest 2. Related appeal and interferences ( same owner, known to appellant, relate to or be affected by the board decision in this case). 3. A summary of the claimed subject matter of each independent claim and dependent claim separately argued 4. Arguments directed to each and every rejection wit separate headings for each 5. claim appendix.

Provisional

No IDS No Oath/declaration No claims Spec Drawing Coversheet or ADS Fee No provisional for design applications 12+ 2 months for filing a non provisional

Petition to make special prior to Auigust 25, 2006- 708.02

No fees for: illness, environment, energy, age(65), countering terrorism. There are fees for infringement, perspective manufacture, Safer DNA, for the asking, HIV/AIDS, Superconductivity, biotech application filed by small entity. Any app can be made special with the required fee.

Pre AIA 102D

No patent if: 1. Same applicant of app filed in a foreign country for the same invention 2. App in foreign country was filed more than 12 months prior to us filing 3. the foreign patent issued before the US app was filed.

Design patent 1500

No written spec. single claim. "The ornamental design for ___ as shown." 14 year term. no maintenance fee. Examiner can only use one reference. Solid lines show invention. Dotted lines show the environment around the invention.

Certificate of correction 1480

Non substantive corrections such as spelling or grammar. No fee for uspto error. fee for your error.

Translation

Not needed to claim priority. Needed to remove prior art.

Application data sheet (ADS) 37 CFR 1.76, 601.05

Not required in provisional. Need in non provisional. Used to claim priority to or the benefit of a prior filed application. Must be titled application data sheet.

Appeals

Notice of appeal and appeal brief within 2 months from notice of appeal being received by the pto. Can be extended 5 moths.

Obviousness (2100)

Obviousness (General) USPTO policy is to follow Graham v. John Deere Co. in the consideration and determination of obviousness under 35 U.S.C. 103. The four factual inquires enunciated therein as a background for determining obviousness are as follows: (A) Determining the scope and contents of the prior art; (B) Ascertaining the differences between the prior art and the claims in issue; (C) Resolving the level of ordinary skill in the pertinent art; and (D) Evaluating evidence of secondary considerations. Also know that when applying 35 U.S.C. 103, the following tenets of patent law must be adhered to: (A) The claimed invention must be considered as a whole; (B) The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination; (C) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and (D) Reasonable expectation of success is the standard with which obviousness is determined.

Reissue 1401

Owner of patent saying this property is defective and I dont want it any more. Examined like new application. Reissue oath filed with the written assent of any assignee. An offer must be made to surrender the original patent. 2 years to file broadening reissue. Cannot seek what was intentionally given up. 1. Need copy on single side original patent 2. fee 3. No strike though amendments A new claim for priority is needs Contents: 1. offer to surrender 2. written consent of the assignee 3. copy of spec and original claims with material being deleted and added 4. fee 5. reissue oath (which states that the applicant believes the original patent to be some how defective New drawings Reissue= can be continued Rexam= cannot be Continued A reissue application can be filed to correct an error in a patent. 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 bases for filing a reissue application are: (1) the claims are too narrow or too broad; (2) the disclosure contains inaccuracies; (3) applicant failed to or incorrectly claimed foreign priority; and (4) applicant failed to make reference to or incorrectly made reference to prior copending applications. In this situation, a claim for foreign priority was made, but it was not made correctly. In order to properly claim foreign priority, a certified copy of the foreign application must be provided to the Office, unless it has been previously submitted. In the question, you are told that this application is an "original U.S. patent application," which means that it could not have previously been submitted to the Office. Therefore, it must be submitted in this application to make the proper claim for foreign priority. applications for reissue are automatically given special status.

Pre AIA 102B

Patentes and publications more than one year =anywhere Public use and sale more than 1 year= US conditional sale may bar inventors consent to sale doesn't matter

Pre AIA 102 (a)

Patents and publications prior to invention = anywhere Public knowledge and Use prior to invention=US known or used means public 131 affidavit others means any combination different from inventorship

Prioritized Exam- AIA 9/16/11 708.02

Pay money and jump the line.

131 affidavit

Pre AIA 102 a/e swear back. Not for pre aia 102b. Can establish an earlier date of invention based upon 1) and actual reduction to practice or2) conception and diligence from the critical date to the actual or constructive reduction to practice ( constructive reduction to practice is the filing date).

AIA 102 d

Prior art dates. AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO-published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, a U.S. patent, a U.S. patent application publication, or WIPO-published application is effective as prior art as of the filing date of the earliest such application, regardless of where filed.

Withdrawal 402

Removing yourself from the case. It is effective with the commission says so. Need to do 3 things: 1. give reasonable notice to the client, prior to the expiration of a reply period. 2. Give client all papers and property (including funds) to which the client is entitled. 3. Notify client of any replies that may be due

In accordance with the patent laws, rules and procedures as related in the MPEP, what effect does the filing of the RCE without the fee set forth in Rule 1.17(e) have on the application under appeal?

See MPEP §§ 706.07(h), under the heading "X. After Appeal But Before Decision By Board," and 1215.01. As explained in MPEP § 1215.01, "The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission." Thus, the filing of the RCE without the fee results in the withdrawal of the appeal in this application and passage of the application to issue with the allowed claims 6-10 after the cancellation of both rejected claims 13 and claims 4 and 5 which are allowable except for their dependency from rejected claim 1 (A) is incorrect. As also explained in MPEP § 1215.01, although an application under appeal having no allowed claims will be considered abandoned by the filing of an improper RCE, an application having allowed claims will be passed to issue with the allowed claims. Upon withdrawal of appeal, claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. See MPEP § 1215.01. All rejected claims, such as claims 1-3, and claims which are allowable except for their dependency from rejected claims, such as claims 4 and 5, will be canceled. (B) is incorrect. As explained in MPEP § 706.07(h), under the heading "After Appeal But Before Decision By The Board," proceedings as to the rejected claims are terminated and the application is passed to issue with the allowed claims. MPEP § 1215.01 explains that the filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.

PCT 1800

Single world wide provisional. Can be filed at any country patent office. Gives upto 30 months to enter the national stage in another country. Chapter 19 amendments- one chance to amend claims prior to publication. Chapter 34 amendment - once chance to amend claims following optional preliminary opinion. To enter US national stage: 1. Spec, claim drawing 2. Fee, oath, and translation elements of Int app: 1. A request to be an int app. 2. designation of at least one contracting state 3. the name of the applicant 4. spec, claim, drawing. 5. Abstract 6. Fee 16 mohtns from priority date to submit a certified copy of the earlier application 102e 11/29/00- prior 102e is national stage date after 11/29/00 102e date is int filing date if FOT/ DUE(fee oath translation after 11/29/00 and designated US and publish in english). Post AIA foriegn filing date for 102 a2 if the foreign filing results in a us patent or published application or a published PCT that designates the US. PCT filed before 11/29/00, the 102(e) date for a later-issuing US patent is the day the filing requirements (under 371, a.k.a. the FOoT rule) were complete. filing. Two chances to amend claims 19- after search report. available for 16 months from priority or two months from report, which ever is later 34- after preliminary exam- 22 months from priority or 3 months from exam, which ever is later Amendments may, however, also be made under Article 19 of the PCT. Article 19 deals with amending the claims before the International Bureau. 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 date the report and opinion are mailed, whichever expires later. Article 34 of the PCT relates to procedures before the International Preliminary Examining Authority, and grants the applicant the right to amend the claims, the description, and the drawings before the international preliminary examination report is established. The amendment made pursuant to Article 34 must not go beyond the disclosure in the international application as filed. Examination by the International Preliminary Examining Authority will start either by the expiration of the 22nd month from the priority date, or three months from the date of transmittal of the international search report, whichever is later.

Filing Date 506

Spec, Claim, Drawing

Miscellaneous

Species can anticipate genius claims can be rejected for prolix, aka being to wordy and resulting in indefiniteness attorney arguments cannot take the place of evidence inoperative invention is not useful non-analogous does not over come anticipation

Joint research disqualify prior art (3 requirements)

Statement: 1. The disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties in the joint research agreement 2. the agreement was in effect on or before the effective fling date of the claimed invention 3. that the claimed invention was made a a result of of the undertaking within the scope of the agreement.

Traverse 818

States the reasons why the examiner is wrong in their reasoning for a restriction. , Must be made to preserve the right to petition after the examiner repeats the restriction requirement.

Competence

Technical and legal competence is total discretionary. You must feel like you can handle the case.

Status (3 things)

The PTO will provide status: 1. Access can be obtained, or 2. Identified by serial number and filing date in published patent document or US app open to public inspection, or 3. When the application is in the national sta=ge of a PCT in which the US has been indicted as a receiving state.

Access

The general rule is that both unpublished pending and abandoned applications are maintained in confidence by the PTO, an access and copies can be had only for certain exceptions. Normal access: Inventors, Assignee, exclusive licensee, attorney or agent of record., any person with written authorization from inventor/attorney/ assignee. Exceptions: 1) An interference file is available if the interference has been terminated or an award for priority has been made. 2) Unpublished abandoned applications: app referred to in US patent or publication, or referred to in app open to public inspection, referred to in PCT which designates the US. 3) Special circumstances: When the owner is using the patent application to interfere with a competitors business.

International Design

The necessary elements of an International Design application must include A Drawings or specimens of the design. B A request for treatment as an International Design application. C Contact information for the applicant or their representative D The identity of the applicant. and one designated country The "international filing date" is the date of indirect filing in a contracting party country or the date of direct filing in Geneva. The International Registration occurs no later than the receipt of a complete application in Geneva, whether publication is deferred or not. Typically, however, when a complete filing is indirectly filed and timely forwarded to Geneva, the "registration" date is the date of indirect

Pre AIA Oath/Declaration 602

Three requirements 1. They believe themselves to be the true first inventors 2. They have review and understand the contents of the application 3. They acknowledge their duty to disclose Need not be in english but translation needed.

Arguing anticipation

Two arguments: 1. the alleged prior art is not in fact prior art because the claim is entitled to an earlier date than the reference. 2. the examiner is wrong in that the prior art does not teach each and every element and limitation of the invention.

Abstract

USPTO: The answer is different if it does not specifically hinge on a PCT Rules (red herring - International Searching Authority) from MPEP 1800. Generally, USPTO procedure is that the examiner will not supply an abstract if one is absent, but the examiner may revise an abstract if the application is otherwise in a condition of allowance. [See MPEP 608.01(b)] PCT: The International Searching Authority shall establish an Abstract (if missing), and the applicant may within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority. (A) If an abstract is missing from the international application as filed, the receiving office will invite the applicant to furnish an abstract within a time limit fixed in the invitation, and if no abstract is furnished to the receiving office within that time limit, the international application will be considered withdrawn. (C) Where the application is filed with an abstract that does not comply with the requirements of PCT Rule 8, the International Searching Authority will establish an abstract that does comply.

Continuation in Part(CIP)

Uses all original stuff, but adds something to what was already there. 1.53b

Amendments

Whenever claims are amended to add limitations not previously claimed, but supported by the application as initially filed, a supplemental oath or declaration must be filed. When changing claims in an amendment use the underline to add, strike through to delete , and [[]] to delete less than five characters. each claim needs to have a status

If a general concept is involved in executing the steps of the method, this can be a clue that the claim is drawn to an abstract idea. Relevant factors:

Where a general concept is present, the following factors are relevant: (1) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields; i.e., that the claim would effectively grant a monopoly over the concept. (2) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and can be performed through any existing or future-devised machinery, or even without any apparatus. (3) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem. (4) Whether the concept is disembodied or whether it is instantiated (i.e., implemented or embodied) in some tangible way. Note, however, that limiting an abstract idea to one field of use or adding token post-solution components does not make the concept patentable. A concept that is well-instantiated weighs in favor of eligibility. (5) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable, rather than subjective or imperceptible. Steps that are observable and verifiable weigh in favor of eligibility.

Disclosure

You ow your client a duty to disclose anything which he or she needs to know and a duty not to lie to him or her at least as to anything significant.

old combination

a claim should not be rejected as an old combination

Natural phenomena case

a. Isolated DNA b. Correlation that is the consequence of how a certain compound is metabolized by the body c. Electromagnetism to transmit signals d. The chemical principal underlying the union between fatty elements and water.

Abstract ideas

a. Mitigating settlement risk b. Hedging c. Creating a contractual relationship d. Using advertising as an exchange or currency e. Processing information through a clearinghouse f. Comparing new and stored information and using rules to identify options g. Using categories to organize, store and transmit information h. Organizing information through mathematical correlations i. Managing a game of bingo j. The Arrhenius equation for calculating the cure time of rubber k. A formula for updating alarm limits l. A mathematical formula relating to standing wave phenomena m. A mathematical procedure for converting one form of numerical representation to another. n. Processing loan information o. Making an insurance policy p. Tax free investing q. Arbitration meal planning structuring a sales force or marketing company r. Using an algorithm to determine optimal visits to a client s. Computing a price for the sale of a fixed income asset and generating a financial analysis output t. A mental process that neurologist should follow when testing a patient for nervous system malfunctions. u. Comparing data to determine risk level v. Diagnosing an abnormal condition by performing clinical test and thinking about the results w. Obtaining and comparing intangible data x. Comparing new and stored information and using rules to identify options y. Displaying an advertisement in exchange for access to copyrighted media. z. An algorithm for converting binary coded decimal to pure binary aa. Reducing the amount of calculation in known and established computations

Protest

a. Who: any member of the public b. When: during pendency, Prior to publication and notice of allowance--must be served on the applicant. Must be filed with in 2 months of reissue c. Standard of review: d. What Prior art: patents and publications, but not limited to prior art documents. Can be based on any facts or information adverse to patentability e. Who participates: after submission, just PTO and applicant. f. Estoppl: Must be complete when filed

ex parte reexam

a. Who: anybody b. When: anytime c. Standard of review: Substantial new question of patentability d. What Prior art: prior art and publications. Need statement pointing out SNQ, identification of every claim for which reexamination is requested and a detailed explanation of the pertinence and manner of apply the cited prior art., a copy of every patent and publication, a copy of the entire patent, a certification that the copy of the request is filed has been served. e. Who participates: f. Estoppel: g. No litigation can stop the proceeding. There is no provision to stop a reexamination. Different amendment method-- no strike through Not litigation- one sided argument and amendment process that leads to the issuance of a certificate No claim broadening. If you cannot reply within a two month period fro response you can request an extension of time for cause before the deadline to respond. Not automatic.

Interpartes review

a. Who: anyone not the patent owner (need to indicate the party of interest) b. When: Any time after issue and after conclusion of post grant review period (9 months). c. Standard of review: reasonable likelihood that the petitioner would prevail. d. What Prior art: 102 or 103 from patents or publications e. Who participates: Only patent owner and ptab, unless patent owner files a preliminary response in which the petitioner may f. Estoppel: may not request a proceeding before the patent office with respect to the claim on any ground that the petitioner raised or reasonably could have raised. g. Owner may respond to petition for inter parts review, but this gives the petitioner another chance to submit evidence and arguments.

post grant review

a. Who: anyone who is not the owner of a patent b. When: Within 9 months of grant or issue or reissue. Only available for AIA "first to file" issued patents c. Standard of review: preponderance of evidence, more likely than not that at least one of the claims challenged in the petition is un-patentable. d. What Prior art: 101, 102, 103, 112. Unless post grant review initiated from supplemental exam. Then everything can be prior art. e. Who participates: owner and ptab f. Estoppel: anything that could have been raised under 101, 102, 103, or 112. Court can cancel all claims, confirm all claims and limit further challenge or anything in between. Patent owner can respond to petitioner Not available if petitioner previously filed a declaratory judgment in court alleging invalidity

Third party submission of prior art

a. Who: member of the public b. When: 1) the later of 6 months after the date of publication or 2) the date of a first office action on the merits rejecting any claims; or 3) before the date of a notice of allowance if earlier. c. Standard of review: d. What Prior art: submit patents, published patent applications, or other printed publications of relevance to the examination. Along with a concise explanation of each. 3 free references Only pending applications Can include statements by the patent owner

Derivation

a. Who: original inventor b. When: filed within one year of the date of the first publication or a claim to an invention that is the same or substantially the same as the earlier applications claim to the invention. Only AIA "first to file" applications. c. Standard of review: to institute the petitioner needs to submit "substantial evidence" d. Same subject matter must be claimed in each. Petition to institute must be accompanied by the required fee, or no filing date will be awarded.

Supplemental exam

a. Who: patent owner b. When: post-issuance c. Standard of review: Substantial new question of patentability. "request the office consider, reconsider, or correct information believed to be relevant to the patent" d. What Prior art: anything is considered e. Who participates: patent owner and PTO f. Estoppl: if the patent survives the issues and items dealt with at the PTO can no longer form the basis of a subsequent fraud defense in court. g. If the information supplied raises at least one SNQ of patentability, an ex parte reexam is ordered, but is not limited to patents and publications. h. Director must refer any fraud to the attorney general. No interview allowed no amendments allowed No filing date if the request is not compliant no right to patent owner statement

Covered business methods

a. Who: real party of interest or privy is sued or has been charged with infringement of a patent. b. When: any time c. Standard of review: same as post grant d. What Prior art: same as post grant e. Who participates: same as post grant f. Estoppel: same as post grant g. The claims must be a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

Pre AIA 102c

abandonment of invention.

best mode

active concealment is not required, neither specific example nor designation of best mode is required, updating from foreign priority not required

NAFTA and WTO

an applicant for a patent can establish a date of invention by acts in a NAFTA country after 12/8/1993 or a WTO country after 1/1/1996

Pre AIA 102 F

bars patenting subject matter which the applicant did not invent. derivation requires complete conception by another and communication.

Genius

broad group of inventions

product by process

claims limited by the structure implied by the steps. Distinguish between product and process in same claim.

must be done in 2 months

deadline for responding to notice of missing parts period for responding in a reexamination all deadlines on appeal time for filing a patient after decision on reconsideration by the examiner

AIA 102 (a_)

defines all prior art. Pretty much anything in the public domain anywhere in the world 102(A)(1) includes patents, printed publications, public use, sale, or otherwise abailbale to the public before the effective filing date of the claimed invention. 102(A)(2)Patents and publications

duty of disclosure 2002

everyone related to the prosecution of the patent has a duty to disclose . anything a reasonable examiner may find important or that may make a good argument against . Materiality: 1. establishes by itself or in combination with other information a prima facie case of non-patentability, or 2. refutes or is inconsistent with a positions taken by the applicant in opposing an argument for un patentability advanced by the patent office or asserting an argument for patentability Rule 56(d) allows those who are not the attorney, agent or inventor to satisfy the duty to disclose by notifying the agent, attorney or inventor.

AIA 102 B

exceptions to prior art. Own work does not qualify as prior art. 102 (a)(1) prior art may be disqualified as prior art under 102 b(1) if 1. the disclose was made by the inventor directly or indirectly a(2) prior art can be disqualified by B(2) direct or indirect disclosure from inventor

Argue against rational to combine

hindsight, examiner applying obvious to try standard, lack of suggestion to combine, references teach away.

132 affidavit

how to alledge fact. To explain something to the examiner. Factual affidavit. Used to show secondary considerations.

election

how you choose between a restriction. You must make a choice even if you are going to traverse the rejection.

Substitute statement 37 CFR 1.43

in an inventor cannot sign, someone else may sing on bevel by submitting a substitute statement.

Provisional rejection

made on the basis of earlier filed patent application that has not yet published or issued. Common inventor or common owner . Can be avoided by filing two application on the same day or by merging into a CIP or by showing common ownerships at time of invention.

apparatus claim

manner of operability does not distinguish apparatus must be distinguished from prior art in terms of structure rather than functionality Prior art cannot anticipate apparatus if there are structural differences

Abadon application as prior art

may become prior art when it is properly incorporated by reference in the disclosure of a U.S. application publication.. As set forth in MPEP § 2127, under the heading "Abandoned Applications, Including Provisional Applications," and subheading, "Abandoned Applications Disclosed to the Public Can Be Used as Prior Art," states "the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent may be relied on in a 35 U.S.C. 102(e) rejection based on that patent if the disclosure of the abandoned application is actually included or incorporated by reference in the patent. Compare In re Lund, 376 F.2d 982, 991, 153 USPQ 625, 633 (CCPA 1967) (The court reversed a rejection over a patent which was a continuation-in-part of an abandoned application. Applicant's filing date preceded the issue date of the patent reference. The abandoned application contained subject matter which was essential to the rejection but which was not carried over into the continuation-in-part. The court held that the subject matter of the abandoned application was not available to the public as of either the parent's or the child's filing dates and thus could not be relied on in the 102(e) rejection.).

enablement rejection

must be enabling at filing date, no undo experimentation is required. enablement is commensurate with scope of claims, single means claim forbidden

CD's

must be submitted in duplicate

Substitute statement 37 CFR 1.64

must include: 1. Id of inventor 2. statement upon information and belief of the facts the inventor is required to state, 3. id of person executing the substitute statement and the relationship to the inventor 3. id of the circumstances permitting the person to execute the statement in lieu of an oath or declaration . 5. acknowledgement that willfully wrong statements will get fine or jail time.

Things you can't do at the patent office:

obtain access to an unpublished abandoned application unless it is mentioned in an issued patent or other special circumstances apply ask for an automatic sixth month extension of time argue that a given claim is patentable because of a feature or limitation no in the the claim obtain a refund as a small entity after three months have passed since the date a large entity fee was paid file one paper in an application and ask that copies be placed in the files of other applications obtain an automatice extension of time in a reexamination find a dvd player that works in the PTO. DVDs can be used in an interview if it has a bearing on an outstanding issue and will advance prosecution. transfer drawings from one pending application to another pending application, without a demonstration of hardship amend an inventors oath or declaration amend a claim in a reexamination app by underlining the words to be added to a previously amended claim and bracketing the words to be deleted from a previously amended claim overcome a double patenting rejection of the same invention type by terminal disclosure Correct priority with a certificate of correction unless priority was already perfect in a parent application transfer drawings to a divisional app from an application which is about to issue copy claims from another patent without advising the PTO which patent the claims come from obtain an extension of time to claim small entity status and obtain a refund

Not patentable

scientific principles, math equations, atomic weapons, methods for doing business per se, naturally occurring things, mental method.

Death of inventor 409

terminates power of attorney. New power must by obtained from heirs.

Issue fee

three months . cannot be extended may be paid late for unintentional reasons.

species

version of invention with in a genius

amendment after notice of allowance-

very rare. Can be entered to fix proper disclosure and require no substantial work on the part of the examiner. Must include remarks: why needed? Why no new search or consideration is needed? why any amended are patentable? Why not earlier?

two month rule

whenever an agent or attorney responds to a final rejection within two months, the deadline for response is extended to the date the advisory action is mailed, or the six month deadline, whichever is earlier