Key Patent Bar Areas

MPEP 1300 - Allowance and Issue

1300: When an app goes to Allowance and then to Issuance/Publishing: 1302: Small Corrections & Examiner's amendments to an app ready for issuance: The examiner will make one last pass looking for small formal mistakes in the app. If the claims have changed due to cancellations or amendments, the examiner may require the applicant to rewrite parts of the app that are confusing to read (without changing the substantive nature). 1302.03: Notice of Allowability: This notice is sent to the applicant when the app is in condition for allowance. 1302.04: Examiner's Amendments: There are 2 kinds of amendments that the examiner can make on his own: Informal: When there are obvious typos and other errors in grammar the examiner may correct informally. (These only work on old paper apps, on an modern IFW app, they are not allowed) Formal: These are for similar purposes but are allowed in the new IFW format. Also, a formal amendment may include fees & charges that the examiner amends onto the app to make sure the applicant pays them (like against a charge account). 1302.05: Correcting Drawings: If the app is OK except for corrections to a drawing, it is forwarded to the Publishing Division (at this point the applicant needs to correct the drawing). 1302.14: Reasons for Allowance: Remember, the patent is supposed to have as complete a record as possible of what the invention is, and why it was granted. The examiner will generally include his own reasons for why the patent was allowed. Remember: These reasons are not subject to estoppel later on (like at a trial or interference), only what the applicant himself actually states is subject to estoppel. The applicant himself may also have extra reasons for why the app is valid, usually these are only added if the applicant disagrees with the examiner's reasoning. Since these comments are made by the applicant, they are subject to estoppel. 1303: Notice of Allowance: This is mailed out to the applicant. The date is important since deadlines for paying the issuance & publishing fees start from the day this notice is sent. (37 CFR 1.311) 1306: Issue & Publication Fees: These are due 3 months from the time the notice of allowance gets mailed. Remember: Failure to pay the issue fee results in abandonment! Deferring Issuance: Under 37 CFR 1.314, the applicant may request a 1 month (30 day) delay in the issue of the patent. Under extraordinary circumstances this may be a longer issue delay (note: delays in order to file an RCE, CPA, or due to licensing negotiations are not extraordinary in nature). 1308: Withdrawing from Issue: When done by the Applicant: (usually so an RCE or other continuation may occur) If done before paying the issue fee (and before fee's due date): Either a petition under 37 CFR .1313(a) or by filing a normal RCE (37 CFR 1.314 & 37 CFR 1.17(e) fee). If done after paying the issue fee: At this point, the withdrawal is only for causes that are listed in 37 CFR 1.313(c) (like: when 1 or more claims are unpatentable (unequivocal signed statement needed); if the petition is granted an RCE can happen; or express abandonment of the app). Termination of Substantive Prosecution Review of Disclosure and Examiner's Amendments - examiner should review app to make sure it complies with all formal and substantive requirements: clear abstract <=150 words; claim renumbering; perform interference search; list all cited references; once application is in condition for allowance and an indication of allowability is mailed, the applicant has no further right to substantive examination of application Notice of Allowability - terminates substantive prosecution if applicant broader claims (anything that would require a new search), must file a continuing app or RCE no amendment as a matter of right applicant has right (not duty) to respond if Examiner gives reason for allowance, but must respond by payment of issue fee application's in condition for allowance except as to form are considered special and formal matters must be handled w/in 2 months Formal Notice of Allowance and Fee Due (NOA) - starts three month clock for payment of issue fee if examiner includes reasons for allowance, applicant may respond and if applicant does not respond, he 'agrees' Applicant has no right to amend, but can: file RCE with fee (stops 3 month clock); file continuing application; or file CPA (for utility/plant before 5/29/2000 or design) Applicant has three months from mailing date of formal NOA to: pay issue fee - NO extensions of time - if payment is late, it's abandoned, must file petition to revive under 1.137; submit formal drawings (no EOT) - drawings CAN be submitted via fax with issue fee; submit response to reasons for allowance; and submit a priority claim Changing the Application After Allowance Amendments after NOA - no amendment as matter of right no broader claims allowed - would require a new search before issue fee is paid: need good and sufficient reason why claims were not presented earlier; why amendment is needed; why no more search or examination is required; why claims are patentable; and 2) good and sufficient reason should: amendment is needed for proper disclosure or protection of invention; and amendment requires no substantial amount of work for PTO after issue fee is paid: must have good and sufficient reason (same as above) and petition and fee Deferring Issuance of Patent - normally available for up to one month - unless extraordinary circumstances to request deferral, applicant needs: petition; fee; showing of good and sufficient reasons why it's necessary not appropriate unless issue fee is paid Withdrawal from Issue - Before payment of issue fee: need petition and good and sufficient reason to withdraw app; and fee, unless reasons for withdrawal is PTO's fault can file a continuing app and permit parent to become abandoned NO PETITION is required if a RCE is filed before issue fee After payment of issue fee: petition and good and sufficient reason; fee, unless PTO's fault no withdrawal unless: PTO mistake; illegality or inequitable conduct; one or more unpatentable claims; for interference; OR abandonment to consider IDS in continuing application Issuance of Patent Payment of Issue Fee - three months to pay (watch for holidays and weekends) NO EOT must pay amount due as of payment date, not the date of notice of allowance if not paid or insufficiently paid, abandoned issue fee and publication fee and formal drawings can be made via fax authorization to charge issue fee to deposit account can only be filed after the mailing of the NOA. An incorrect fee or fee form w/o payment will be treated as request to charge deposit account; authorization must be written fee can be paid late if: 1) delay is unavoidable: file petition; fee; issue fee; showing that entire period was unavoidable; and (for all design apps and other apps filed before 6/8/95) a terminal disclaimer for period of abandonment; or 2) delay is unintentional: same, but showing that entire delay was unintentional Effect of Issue Date - patent rights become fully enforceable cannot file continuing apps, CPAs or RCEs starts two year clock for broadening reissue claims starts one year clock for others to copy claims for an interference maintenance fee due dates calculated from issue date

35 USC 102(c)

35 USC 102(c) Abandonment - inventor intended to abandon invention. Inventor must intend to dedicate his invention to the public (a delay in the application process is not sufficient proof for abandonment).

35 USC 102(b)

35 USC 102(b) - "A person shall be entitled to a patent unless (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." 102(b) aka "more than one year statutory bar" - To reject claims under §102(b) the examiner can cite anyone's prior art or activity by a 3rd party or the applicant. This includes any patent, any printed publication, but only public use or on sale in the US more than one year before the US application date. This creates an absolute bar (dates of invention are irrelevant). Filing Date The filing date is the date the application is filed with the PTO Continuation (§120) or Divisional (§121) applications have an earlier date if: Specification contains a reference to old application Old application supports new claims (§112) New application is filed before old application issues or is abandoned Provisional application - applicant has up to 12 months to file a patent application that depends on the provisional (§111(b)). If the application is filed within the 12 month period, the application can claim priority to the provisional's filing date. Foreign - an earlier filed foreign application cannot be used to overcome a §102(b) bar. Only entitled to §119 foreign filing date if during pendency of US application: Foreign application is identified (application #, country filed, filing date) Same inventors Same invention Foreign application must satisfy, via §112, new US claims Patents as Prior Art · US = date of issuance (not filing or publication) · Foreign = date the rights become enforceable (MPEP §2126.01) · Can't be secret or private Printed Publication - A reference is a "printed publication" if one of ordinary skill in the art can locate it with reasonable diligence. Its availability as prior art under 102(b) depends on proof of when the reference was "published" or became publicly available. · Must be publicly accessible when it reaches the public · Catalogued and indexed in a library · Confidential disclosures are not printed publications · Published patent application is a printed publication Public Use · Only in US · Can be a public and hidden use (bra) · Cannot be a secret use (inventor maintains control) On Sale - "On sale" includes inventions that were sold, offered for sale, or tested (offered for sale and ready for patenting) in the US Offer - need not be accepted; details about product do not have to be disclosed; offer can be by anyone; sale need not be public; an offer to assign rights to patent is not a offer; date is when offer is mailed Exception - Gore where a patented method is kept secret, but there is a sale of the product from the method, such a sale is a bar if made by the patentee, but not a bar if the sale is made by a 3rd party. Ready for Patenting (RTP) - invention is physically built and tested (known to work for intended purpose) or enabling drawings or other descriptions Experimental Use - (subjective intent of inventor) perfecting invention to see if it will work for intended purpose; extent of control is a key factor Note - The public sale bar applies even if the invention is misappropriated. Overcoming a §102(b) rejection - A prior art rejection under 35 U.S.C. 102(b) is a statutory bar to patentability; a 37 CFR 1.131 affidavit cannot be used to establish prior invention when the rejection is based on a statutory bar. A 102(b) bar can be overcome by: Amending the claims Arguing claims are distinguishable from prior art Experimental use Earlier filing date (provisional, continuation, divisional); Application data sheet [same as 102(a)] A 102(b) bar cannot be overcome by: A §119 foreign filing date cannot be used to avoid a 102(b) bar The 102(b) rejection cannot be overcome by evidence of unexpected results. It can be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicant's claimed product. NEW AIPA §122(b) - US patent applications shall be published 18 months from the earliest filing date sought; except: Applications no longer pending; subject to secrecy; provisionals; if applicant certifies that the invention disclosed has not and will not be the subject of a foreign patent application Note: Cannot swear behind a §102(b) reference.

35 USC 102(f)

35 USC 102(f) "Derivation" "A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented." Derivation requires proof that the entire invention was previously conceived by another.

35 USC 112, 2nd paragraph

35 USC 112, 2nd paragraph Claim Requirements (definiteness requirement) - "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." There are two separate requirements set out by the second paragraph of §112, 2nd paragraph: 1) The claims must set forth the subject matter the applicants regard as their inventions; and 2) The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent (often called the definiteness requirement). The USPTO will consider A-E to determine whether the claims do or don't meet the §112, 2nd paragraph requirements. A. Claim Terminology: Applicants can use whatever terms they chose for defining their invention in the claims, so long as those terms are not used in ways contrary to accepted meanings in the art. ("Oval" cannot be defined as trapezoidal.). The use of relative terms in claims is a factual and subjective test, not an objective test. Terms that are scrutinized by the PTO include about, essentially, similar, substantially, type, and relatively." These, and similar, terms should be defined in the specification as tho their exact meaning relative to the invention. Trademarks or trade names - Trademarks or trade names identify the source of goods, not the goods themselves. While trademarks can be used in the claim language [MPEP 608.01(v)], the claim is indefinite 1) if they are used in a limitation intended as a description of a material or 2) their use cases confusion as to the scope of the claims. Markush Groups - A Markush group which is a way of limiting claim to the members of the group of individual elements (e.g., members "selected from the group consisting of A, B and C") is definite. [A Markush group is a way of limiting a group to a set of individual elements. A markush group is used when a genus can be defined as a group that consists of particular individuals. It's a special/alternate way of expression that selects from a group "consisting of A, B and C" (closed-ended transition phrase). This wording is used (for among other reasons) to identify elements with a common trait, and the exact language must be used.] Omnibus claims - Omnibus claims which read "a device substantially as shown and describes" are indefinite. These claims are not allowed in the US because they do not express the metes and bounds of the claim. The claims should be as self-contained as possible and should not reference tables and figures unless necessary. B. Consistency with Specification or Prior Art: Claims that are inconsistent with their supporting specification or the prior art cannot be considered reasonably particular and distinct, even though the terms of the claims may seem definite. [MPEP §2173.03] Claims should be self-contained, when possible. In circumstances where an invention cannot be defined in words and it is more concise to incorporate figures or tables by reference, it is acceptable to do so. C. Breadth of Scope: The scope of the claims must be defined clearly under section 112, 2nd paragraph. (It is not the breadth of the scope, but whether that scope is clearly defined that matters to a sections112, 1st paragraph issue.) An example of indefinite claim based on lack of scope includes: "between 58% and 75% of the height of the rider" when the rider's height is undefined. Stating specific numerical ranges in a claim does not usually raise an issue of definiteness. Exceptions include 1) narrow and broader ranges in the same claim (e.g., a length between 5 and 16 inches, preferably between 7 and 8 inches) and 2) open ended numerical ranges (e.g., at least 12%) which should be checked carefully for consistency with examples and guidelines in the rest of the disclosure. In order to avoid a §112, 2nd paragraph rejection, keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications. D. Lack of Antecedent Basis: References in a claim to, for example, "said lever" or "the lever" when there is no previous reference in the claim to a lever creates uncertainty as to what the claim is referring to. A lack of antecedent basis results in indefiniteness, unless the scope of the claim could be reasonably ascertained by a skilled artisan. E. Product and Process: A product-by process claim is a product claim defining the product in terms of the process that makes it. Such a claim is not inherently indefinite. However, a product and process claim in which both an apparatus and the process for using it are claimed is indefinite. Claims to a process that do not include any steps to be taken in carrying out the process are usually held to be indefinite. For example, a claim to "a process for using X of claim 4 to isolate and purify Y" was found indefinite because it recites a use without givig steps for how the use is practiced.

35 USC. 112, 1st paragraph

35 USC. 112, 1st paragraph - Specification - (written description, enablement and best mode requirements) - "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such a full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains...to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention." 1) Written Description The written description requirement is intended to make clear what the applicant invented and who actually created the invention. Ask yourself, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claims?" No New Matter: "New matter" cannot be added by amendment to an applicant's disclosure after its filing [35 USC §§ 132, 251]. The issue of new matter will arise if the claims, specification or drawings of an application are amended and the content of the amendment is not described in the application (i.e. is new matter not already contained in the claims, specification or drawings). Rewording, making inherent function explicit, making explicit material incorporated by reference not new matter. Specific Issues: Amendment Affecting a Claim - Additional material introduced to an application as 1) an amendment (e.g., to the specification or claims) or 2) a new claim must be supported by the written description as filed. No new matter. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error, but also recognize the appropriate correction. Reliance on Filing Date of Patent - For claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements. Reliance on Priority - Claims are entitled to the foreign priority date of filing date of a provisional application if the foreign or provisional application supports the claims as required by § 112, paragraph 1. Changes to the Scope of the Claim - Broadening or narrowing the breadth of the claim limitations or altering a numerical range limitation after the application has been filed often results in failure to meet the written description requirement. (This is often tested as ranges given in the original specification. For example, the original specification includes ranges of 25%-75% with examples of 40% and 50%. A new claim with "at least 30% is not supported by the original claim.) 2) Enablement The specification must describe to one skilled in the art how to make and use the invention as of the filing date. Enablement may not be met and the application may face a §112, paragraph 1 (lack of enablement) rejection if any of the following conditions (A-C) are met. A. Requires Undue Experimentation - The test for adequate enablement (determined by the Supreme Court) has been a question of whether a person skilled in the art would have to conduct undue experimentation to make and use the invention. Actual reduction to practice is not a necessary requirement for filing an application so long as the specification enables one of ordinary skill in the art to make and use the invention without undue experimentation. Complex experimentation does not necessarily make it undue if the art typically engages in like experimentation. Routine or reasonable experimentation may not be undue. Often enablement will not be met because information (that could not be discovered without undue experimentation) is missing about critical parts of an invention, how to obtain those parts, or the relationship between them. The following factors are among those to be used for determining whether necessary experimentation is "undue:" 1) The breadth of the claims; 2) The nature of the invention; 3) The state of the prior art; and 4) The level of one of ordinary skill. B. Claims are Overly Broad - If the specification clearly recites a feature of the invention that is critical to the invention performing its intended operation, and the feature is not recited in the claims, ("purposely" making the claims broader than the enabling disclosure) a rejection based on lack of enablement will be made. C. Fails the Utility Requirement - Relationship of enablement to the utility requirement: If a claim is not useful or inoperative (i.e., fails to meet the utility requirement) it necessarily fails to meet how-to-use requirement of enablement because the specification cannot show how to use a useless invention. 3) Best Mode The best mode requirement is intended to ensure that the inventor does not disclose less than the most desirable form of his invention. The examiner should assume that the best mode is in fact disclosed, unless evidence arises to the contrary. In determining the adequacy of a best mode disclosure only evidence of concealment is relevant. Concealment need not be intentional. For example, the quality of the applicant's best mode may be so poor as to effectively result in concealment. Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority. Additional considerations: A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate; The disclosure need not point out which of the embodiments is considered best, as long as it is included among those disclosed; There is no need to update the believed best mode if priority or the filing date of a previous application is relied upon; The failure to disclose the best mode in the original application cannot be rectified with an amendment to the application.

MPEP 1200 - Appeal

Appeal (MPEP 1200) by PATENTBAR on DECEMBER 1, 2007 · 11 COMMENTS in MPEP 1200 Overview Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences. Petition matters dealing with objections to formal/procedural matters made to the Commissioner. Who and When - Patentee can appeal when claims have been twice or finally (ex parte) rejected. Patentee can appeal whose claim has been twice or finally (ex parte) rejected in a reexamination filed before Nov. 29, 1999; only finally rejected after said date. Non-entered claims and non-entered amendments are NOT appealable Appeal Process - File notice of appeal within 3 months of final (second) rejection on merits Extension of tome available for up to 3 more months Amendments after filing notice - Must be made before jurisdiction passes to the Board Allowed if amendment adopts a suggestion made, or if it removes an issue Not allowed if raises new issues or increases total number of claims Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant) Timing - Must be filed within the greater of: 2 months of PTO receipt of notice; or time left to reply to the action being appealed Extension of time for up to 5 months Failure to file brief dismisses appeal and abandons application if no allowed claims Appeal Brief Specifics - Content requirements spelled out in MPEP §1206 Must identify claims being appealed New arguments are allowed but new evidence is not allowed Must traverse all grounds of rejection All claims of a group must stand or fall together, unless stated otherwise If notice of defects issued by PTO, must reply within the greater of: 1 month; 2 months of the PTO receipt of Notice; time left to reply to action being appealed Appeal Conference and Examiner's Answer - Examiner must answer within 2 months from receipt of appeal brief MPEP §1208 recites 11 content requirements No new ground of rejection If new grounds, examiner must reopen prosecution; like a regular office action Timing of Filing a Reply Brief - It's optional, and must be filed within 2 months of examiner's answer Good cause extension of time Timing of Filing a Request for Oral Hearing - Optional; must be filed within 2 months of examiner's answer Good cause extension of time Decision by the Board - Closes prosecution for rejected claims Can enter a new ground of rejection for any claim Reconsideration and Court Appeal - Can request rehearing on paper within 2 months from Boards decision Good cause extension of time available Court action must start within 2 months (at least 60 days) from decision 1200: Appeals! A few quick notes: Remember, appeals are only for decisions by the USPTO on the actual merits of the patent, other decisions are protested via petition instead. Remember, any petition not filed within 2 months of the underlying action may be dismissed by the USPTO under 37 CFR 1.181(f). 1204: The 2 Steps of initiating An Appeal: Step 0: In order to even have an appeal available the USPTO has to have issued a second rejection on a claim. The second rejection could either be a normal final rejection, or it could be a rejection where the claim was initially rejected in the original app, a CIP/CPA/RCE was filed to continue the app, and then the same claim was rejected in the continuation (1 time original + 1 time continuation == 2 rejections). One important caveat: Remember that when filing an RCE after a final rejection the applicant has a choice: Either appeal, or file the RCE. By filing an RCE the applicant is agreeing not to file an appeal, at least until the claim is rejected under the RCE itself. So even if there are 2 rejections in the original app, when the applicant files an RCE he is waiving the appeal until there is another rejection. (37 CFR 1.4131): Step 1: The applicant has to file notice of appeal, which simply means that the applicant notifies the USPTO of the intent to appeal and includes a fee. Danger: Remember that after a final rejection, if the applicant either fails to appeal or to correct the parts of the app that can be allowed (37 CFR 1.113, ex parte Quayle) then the app will be abandoned! TIME LIMITS: The notice must be filed within 6 months of the 2nd rejection. The standard 37 CFR 1.136(a) extension + fee applies in getting this time limit. (3 month SSP + 3 month extension) Step 2: Actually file an appeal brief: TIME LIMITS: The applicant has 2 months from the receipt of the notice to appeal until the appeal brief itself is due. If there is an appeal while there are other outstanding deadlines, the appeal acts to toll the other deadlines (just like a pause button). One weird thing: The notice of appeal is supposed to be sent in person or via the Express Mail system. A mailing certificate does not apply here. Instead the USPTO will consider the "date in" at the post office to be the date of receipt of the notice, and that is the date from which the 2 month period begins counting. Examples: Say there is a final office action (3 month SSP), and the applicant files notice to appeal within 1 month of the office action. If the applicant fails to submit his actual appeal brief within 2 months of the notice, but still gets it in before the original SSP. Then the applicant still has to file a petition for a time extension. (Same thing can happen with an RCE, if the RCE is filed > 2 months after the office action, but before the 3 month SSP, a petition for a 1 month extension is needed). Note: A failure to provide the appeal brief will result in dismissal of the appeal. However, if some of the claims in the patent were originally allowed, then the parts of the app that are allowed will go back to the examiner and the app will not be immediately abandoned. If however none of the claims were originally allowed, the entire app gets abandoned if the applicant fails to provide a brief. (The normal 37 CFR 1.137 revival terms are available if the abandonment was legally 'unintentional' or 'unavoidable'; remember that a successful 37 CFR 1.137 acts as an RCE). 1205.02: What actually goes into the Appeal Brief: Remember: Like any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained. Components of the brief: 1. Real party of interest (the inventor/applicant/assignee) 2. Related appeals & interferences (background info on other proceedings) 3. Status of Claims (which ones are allowed/rejected) 4. Status of Amendments 5. Summary of claimed subject matter 6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were) 7. Argument (why the claims should not be rejected) 8. Claims appendix 9. Evidence appendix (this is where additional affidavits and other evidence are put) 10. Related proceedings appendix. 1205.03: If a brief is non-compliant: If the brief is non compliant, the applicant will be notified and has a 1 month (30 day) time to correct. The time is extendable under 1.136 (a)(b), and the appeal will be dismissed if the applicant fails to comply. If the applicant actually disagrees with the finding that the brief is non-conformant, he may petition under 37 CFR 1.181 or 41.3, but the due date for the corrections will not toll. 1206: Amendments, affidavits, other evidence that gets filed with or after the appeal: Amndments: Remember, it is not a matter of right to have new amendments added on to the application during the appeal process. The amendment process during appeals is under 37 CFR 41.33, and not under the (more permissive) 37 CFR 1.116. Amendments after the notice of appeal, but before the appeal brief is submitted may contain: 1. claim cancellations 2. any corrections to comply with formal requirements (spelling, punctuation ...) 3. present the previously rejected claims in a form that is better for appeal; or 4. Actually amend the spec or claims, however there has to be a good showing and cause given for why this was necessary and also not done earlier. Amendments filed on or after the date of the appeal brief: (less leeway) 1. cancel claims (remaining claims could be allowed) 2. rewrite dependent claims into independent form (if a broader independent claim is shot down, the dependent claim with all of the limitations of its parent + extra limitations might still be allowable and needs to become an independent claim if the parent is no more). Affidavits & Other Evidence: This extra evidence may be admitted, but only if the examiner determines that: The affidavits or other evidence that overcome all rejections under appeal.; and The showing of good or sufficient reasons why the affidavit or other evidence is actually necessary and was not available earlier. 1207: The Examiner's Answer to an Appeal Brief: The examiner has some options after reading the appeal brief: 1. reopen the prosecution and enter in a new ground for rejection (as long as this is approved by his supervising examiner). 2. Withdraw the final rejection, and allowing the claims (when the appeal overcomes the grounds for rejection). or; 3. Maintain the appeal by drafting an examiner's answer that will go along with the appeal brief to the board. After 20040913 this brief may also contain new grounds for a rejection too. More on 1207: There is a mandatory appeal conference when a valid appeal brief is filed. It has: the main examiner for the app, the supervisory patent examiner, and a conferee examiner who is experienced in the area that the patent covers. The examiner's answer should come within 2 months of the receipt of the brief by the examiner and should contain: responses to arguments in the brief and point out errors in the brief. If the appeal is persuasive the examiner should also expressly withdraw his rejection on grounds where the appeal was persuasive. More on appeals including oral hearings; What happens as a result of the appeal; The Nuclear Option (going to a real court) (1209-12116.02) 1209: Oral Hearings: The applicant may request one in front of the board. TIME: the request is 2 months from the examiner's initial or supplemental answer (just like other time limits in an appeal), however it can only be extended for good cause (37 CFR 1.136(b)) not automatically. Once the hearing is requested, the USPTO will contact the applicant with the particulars of time/location of the hearing, if the applicant does not confirm this notice, the hearing is waived! 1210: Actions that can happen after the examiner makes his answer, but before the Board actually makes a decision: (37 CFR 41.35) The application & appeal will bounce from the TC (where normal examination happens) to the Board (for appeal) at one of these times: After 2 months from the time of the examiner's answer/supplemental answer if the applicant does not file a reply brief to that answer; or If the applicant did file a reply brief, after the examiner notifies the applicant that the reply brief has been entered & considered and that the appeal will go to the board. 1211: When the Board remands an appeal back to the Examiner: This can happen in different situations where the board wants the examiner to look at the app again: 1211.01: Further consideration of a rejection: The examiner's supplemental answer may have new grounds for rejection of a claim if it is in response to the board sending the app back for further consideration. Whenever the examiner makes a supplemental answer (even if it does not have new grounds for rejection) the applicant must file one of these forms of response to avoid having the appeal dismissed: 1. Reopen prosecution on the claim, this is the normal 37 CFR 1.111 response to a rejection and it can also have the 37 CFR 1.130/1.131/1.132 affidavits & evidence accompanying the response. 2. Maintain the appeal: By filing a brief (37 CFR 41.41) the appeal can be kept going after the remand & supplemental response. 1211.02: Remand to consider a new amendment: There is no obligation to consider new amendments during the appeal, but: If the amendment is just to cancel claims that are not part of the proceeding, or to re-write dependent claims in independent form (this is important to avoid abandonment in some cases, see below) then the board will remand if there is an amendment. 1211.03: Remand for new affidavits or declarations: These are only considered when the appellant makes the showing under 37 CFR 1.116(c) as to why the affidavits are necessary, and as to why they were not presented earlier. 1212: If the board has a matter of interest in deciding the case (like wanting more info on case law, or the applicability of prior art that is not already on the record), then it can make a request for the appellant to file a brief that gives the board the info it wants. If the appellant does not respond within the time period set by the board, the appeal may be dismissed. 1213: What Decisions the Board may Make: The board can reverse the examiner's rejection, affirm it in whole or in part, or remand. Remember, that for a later court case, that a decision to remand cannot be brought up for judicial review (only an affirmation of the rejection). 1213.01: The Board may simply state how the applicant could amend an appealed claim such that it would be allowed. The applicant may then properly amend the claim within the time period for seeking court review (that is a 2 month window starting from the date of the board's final decision). 1213.02: New Grounds for Rejection: the Board can make a rejection on new grounds for any claim it wants to. (even if the claim was not previously rejected). Remember, this is different than the examiner who can only reject a claim on new grounds if he had already rejected the same claim for different reasons (an examiner it not allowed to find a new ground to reject a claim he previously put into allowance). 1214: What to do when the Board rejects on a New Ground: (remember, now there is a new issue for the applicant to respond to): The applicant's choices are: 1. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary. TIME: This is under 37 CFR 41.50(b)(1) and has to happen within 2 months of the Board's decision. It can only be extended for good cause under 1.136(b) (there is no automatic extension) Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question. 2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground. TIME: exactly the same as above. 1214.03: The Rehearing: The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed. 1214.04: What happens when the Examiner is Reversed in full: At this point, the app goes directly back to the examiner, he will either then put all the claims in allowance and get the patent ready for issue, or the examiner may request his own re-hearing (again a 2 month time frame for that re-hearing). 1214.05: What happens when Claims are Withdrawn from the Appeal: Say there are 3 disputed claims, but the appellant either does not argue for some of them on appeal or withdraws arguments for some of them. If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts. 1214.06: What happens when the Examiner is sustained in whole or in part: If no claims are allowed at all: After the Board's decision the 2 month limit for taking the case to court starts running. After that is over, if there has been no court action the app is abandoned. THIS IS WHY IT IS IMPORTANT TO PUT DISPUTED DEPENDENT CLAIMS INTO INDEPENDENT FORM: If it turns out that a parent independent claim is not allowed, but that a dependent claim (that has further limitation) would be allowed except for the fact that it is a dependent claim.... the app is still abandoned anyway! (It is up to the applicant to get the claims ready for this eventuality). When some of the claims are allowed: There is no requirement to file any further reply, the claims that are allowed will go back to the examiner (most likely to issue, or perhaps to have the examiner request a re-hearing). If there is no reply the other claims will be canceled. When the claims require further action: (Like in a case where a generic claim rejection is reversed so more work is needed no the claim by the examiner): It just goes back to the examiner for more work. 1214.07: Reopening Prosecution: (One option after a rejection on new grounds by the Board): Normally once the application is in appeal, the appellant has no right to enter in amendments to the app. However: If the amendment is accompanied by a 37 CFR 1.114 RCE, then the app will go back into prosecution via the RCE along with the amendment. 1215: Withdrawing or Dismissing an Appeal: 1215.01: Withdrawing an appeal: As long as the withdrawal will not actually cause the app to be abandoned, an atty who is not of record (or the atty of record or the applicant) can withdraw an appeal under 37 CFR 1.34. Another way to withdraw from appeal is to file an RCE (37 CFR 1.114) along with the 37 CFR 1.117(e) fee and re-open the app for prosecution under the RCE. Remember: If the board has a rejection on new grounds in its ruling, or if the examiner files a supplemental answer (after the initial answer) that includes new grounds of rejection, then the applicant has the right to re-open prosecution on the new rejection by filing the standard 37 CFR 1.111 response along with affidavits/evidence under 37 CFR 1.130/1.131/1.132. 1215.02: If at least some of the claims for the app are allowed, then withdrawing the appeal will not abandon the app (although claims under appeal will be canceled if no further action is taken on them). 1215.03: Partial Withdrawal: What you'd expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board's decision, or 2 months from an examiner's answer with no reply brief given). 1215.04: When an appeal is dimissed by the Board: When there is no appeal brief filed within the 37 CFR 41.37 time frame (2 months from filing of notice of appeal) the appeal gets dismissed. Remember: If some claims are still allowable, the patent can still issue with the allowable claims, but all others get canceled. 1216: The People's Court: Going to Court: Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over. TIME: 2 months after the Board's final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause. Option 1: Directly to the Federal Circuit Court of Appeals: If all claims were previously rejected then this court's decision is final on the patent one way or another. If however some claims were previously allowed, then only the claims that were rejected are at an end, the allowed claims can continue to issuance. Remand: The court can remand back to prosecution just as the Board can, although the examiner cannot request a re-hearing. The court will give the merits it wants the examiner to consider. Reopening prosecution: Rare but it may happen. Option 2: Going to the DC Circuit Court: What's the big difference? In the Circuit Court it is actually possible to introduce new evidence while the court of appeals does not allow this. However, the plaintiff will have to show good cause why this evidence was not actually given to the Board or examiner earlier in the process. (Note: new evidence that was previously withheld due to fraud or gross negligence is not allowed). The circuit court can issue the same decisions as the appellate court above. Disclaimers: Remember, there are 2 kinds: 1. Statutory Disclaimers: These are where the patentee expressly disclaims 1 or more claims in the patent. This is usually due to losing a lawsuit or something along those lines. 2. Terminal Disclaimers: Remember, these are for shortening the life of a claim to that of a pre-existing patent. They are useful in avoiding some double-patenting rejections (like a judicial double patenting rejection). It must expressly disclaim the terminal part of the patent's term. IT must state that the patent on the matter will only be enforceable for the limited time period that is disclaimed. Who has to sign a disclaimer: Either the applicant, the assignee (if assigned in full), applicant & assignee together (for partial assignment), or the atty/agent of record.

37 CFR - Code of Federal Regulations

Appendix R Patent Rules CHAPTER I - UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE PART 1 - RULES OF PRACTICE IN PATENT CASES § 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office. § 1.2 Business to be transacted in writing. § 1.3 Business to be conducted with decorum and courtesy. § 1.4 Nature of correspondence and signature requirements. § 1.5 Identification of patent, patent application, or patent-related proceeding. § 1.6 Receipt of correspondence. § 1.7 Times for taking action; Expiration on Saturday, Sunday or Federal holiday. § 1.8 Certificate of mailing or transmission. § 1.9 Definitions. § 1.10 Filing of correspondence by "Express Mail." § 1.11 Files open to the public. § 1.12 Assignment records open to public inspection. § 1.13 Copies and certified copies. § 1.14 Patent applications preserved in confidence. § 1.15 [Reserved] § 1.16 National application filing, search, and examination fees. § 1.17 Patent application and reexamination processing fees. § 1.18 Patent post allowance (including issue) fees. § 1.19 Document supply fees. § 1.20 Post issuance fees. § 1.21 Miscellaneous fees and charges. § 1.22 Fees payable in advance. § 1.23 Methods of payment. § 1.24 [Reserved] § 1.25 Deposit accounts. § 1.26 Refunds. § 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office. § 1.28 Refunds when small entity status is later established; how errors in small entity status are excused. § 1.31 Applicant may be represented by one or more patent practitioners or joint inventors. § 1.32 Power of attorney. § 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings. § 1.34 Acting in a representative capacity. § 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent. § 1.41 Applicant for patent. § 1.42 When the inventor is dead. § 1.43 When the inventor is insane or legally incapacitated. § 1.44 [Reserved] § 1.45 Joint inventors. § 1.46 Assigned inventions and patents. § 1.47 Filing when an inventor refuses to sign or cannot be reached. § 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116 . § 1.51 General requisites of an application. § 1.52 Language, paper, writing, margins, compact disc specifications. § 1.53 Application number, filing date, and completion of application. § 1.54 Parts of application to be filed together; filing receipt. § 1.55 Claim for foreign priority. § 1.56 Duty to disclose information material to patentability. § 1.57 Incorporation by reference. § 1.58 Chemical and mathematical formulae and tables. § 1.59 Expungement of information or copy of papers in application file. § 1.60 [Reserved] § 1.61 [Reserved] § 1.62 [Reserved] § 1.63 Oath or declaration. § 1.64 Person making oath or declaration. § 1.66 Officers authorized to administer oaths. § 1.67 Supplemental oath or declaration. § 1.68 Declaration in lieu of oath. § 1.69 Foreign language oaths and declarations. § 1.70 [Reserved] § 1.71 Detailed description and specification of the invention. § 1.72 Title and abstract. § 1.73 Summary of the invention. § 1.74 Reference to drawings. § 1.75 Claim(s). § 1.76 Application data sheet. § 1.77 Arrangement of application elements. § 1.78 Claiming benefit of earlier filing date and cross-references to other applications. § 1.79 Reservation clauses not permitted. § 1.81 Drawings required in patent application. § 1.83 Content of drawing. § 1.84 Standards for drawings. § 1.85 Corrections to drawings. § 1.88 [Reserved] § 1.91 Models or exhibits not generally admitted as part of application or patent. § 1.92 [Reserved] § 1.93 Specimens. § 1.94 Return of models, exhibits or specimens. § 1.95 Copies of exhibits. § 1.96 Submission of computer program listings. § 1.97 Filing of information disclosure statement. § 1.98 Content of information disclosure statement. § 1.99 Third-party submission in published application. § 1.101 [Reserved] § 1.102 Advancement of examination. § 1.103 Suspension of action by the Office. § 1.104 Nature of examination. § 1.105 Requirements for information. § 1.106 [Reserved] § 1.107 [Reserved] § 1.108 [Reserved] § 1.109 [Reserved] § 1.110 Inventorship and date of invention of the subject matter of individual claims. § 1.111 Reply by applicant or patent owner to a non-final Office action. § 1.112 Reconsideration before final action. § 1.113 Final rejection or action. § 1.114 Request for continued examination. § 1.115 Preliminary amendments. § 1.116 Amendments and affidavits or other evidence after final action and prior to appeal. § 1.117 [Reserved] § 1.118 [Reserved] § 1.119 [Reserved] § 1.121 Manner of making amendments in applications. § 1.122 [Reserved] § 1.123 [Reserved] § 1.124 [Reserved] § 1.125 Substitute specification. § 1.126 Numbering of claims. § 1.127 Petition from refusal to admit amendment. § 1.129 Transitional procedures for limited examination after final rejection and restriction practice. § 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art. § 1.131 Affidavit or declaration of prior invention. § 1.132 Affidavits or declarations traversing rejections or objections. § 1.133 Interviews. § 1.134 Time period for reply to an Office action. § 1.135 Abandonment for failure to reply within time period. § 1.136 Extensions of time. § 1.137 Revival of abandoned application, terminated or limited reexamination prosecution, or lapsed patent. § 1.138 Express abandonment. § 1.139 [Reserved] § 1.141 Different inventions in one national application. § 1.142 Requirement for restriction. § 1.143 Reconsideration of requirement. § 1.144 Petition from requirement for restriction. § 1.145 Subsequent presentation of claims for different invention. § 1.146 Election of species. § 1.151 Rules applicable. § 1.152 Design drawings. § 1.153 Title, description and claim, oath or declaration. § 1.154 Arrangement of application elements in a design application. § 1.155 Expedited examination of design applications. § 1.161 Rules applicable. § 1.162 Applicant, oath or declaration. § 1.163 Specification and arrangement of application elements in a plant application. § 1.164 Claim. § 1.165 Plant Drawings. § 1.166 Specimens. § 1.167 Examination. § 1.171 Application for reissue. § 1.172 Applicants, assignees. § 1.173 Reissue specification, drawings, and amendments. § 1.174 [Reserved] § 1.175 Reissue oath or declaration. § 1.176 Examination of reissue. § 1.177 Issuance of multiple reissue patents. § 1.178 Original patent; continuing duty of applicant. § 1.179 [Reserved] § 1.181 Petition to the Director. § 1.182 Questions not specifically provided for. § 1.183 Suspension of rules. § 1.184 [Reserved] § 1.191 Appeal to Board of Patent Appeals and Interferences. § 1.192 [Reserved] § 1.193 [Reserved] § 1.194 [Reserved] § 1.195 [Reserved] § 1.196 [Reserved] § 1.197 Return of jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings. § 1.198 Reopening after a final decision of the Board of Patent Appeals and Interferences. § 1.211 Publication of applications. § 1.213 Nonpublication request. § 1.215 Patent application publication. § 1.217 Publication of a redacted copy of an application. § 1.219 Early publication. § 1.221 Voluntary publication or republication of patent application publication. § 1.248 Service of papers; manner of service; proof of service in cases other than interferences. § 1.251 Unlocatable file. § 1.265 [Removed] § 1.291 Protests by the public against pending applications. § 1.292 Public use proceedings. § 1.293 Statutory invention registration. § 1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed. § 1.295 Review of decision finally refusing to publish a statutory invention registration. § 1.296 Withdrawal of request for publication of statutory invention registration. § 1.297 Publication of statutory invention registration. § 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit. § 1.302 Notice of appeal. § 1.303 Civil action under 35 U.S.C. 145 , 146 , 306 . § 1.304 Time for appeal or civil action. § 1.311 Notice of Allowance. § 1.312 Amendments after allowance. § 1.313 Withdrawal from issue. § 1.314 Issuance of patent. § 1.315 Delivery of patent. § 1.316 Application abandoned for failure to pay issue fee. § 1.317 Lapsed patents; delayed payment of balance of issue fee. § 1.318 [Reserved] § 1.321 Statutory disclaimers, including terminal disclaimers. § 1.322 Certificate of correction of Office mistake. § 1.323 Certificate of correction of applicant's mistake. § 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256 . § 1.325 Other mistakes not corrected. § 1.331 [Reserved] § 1.332 [Reserved] § 1.333 [Reserved] § 1.334 [Reserved] § 1.335 Filing of notice of arbitration awards. § 1.351 Amendments to rules will be published. § 1.352 [Reserved] § 1.362 Time for payment of maintenance fees. § 1.363 Fee address for maintenance fee purposes. § 1.366 Submission of maintenance fees. § 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent. § 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent. § 1.401 Definitions of terms under the Patent Cooperation Treaty. § 1.412 The United States Receiving Office. § 1.413 The United States International Searching Authority. § 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office. § 1.415 The International Bureau. § 1.416 The United States International Preliminary Examining Authority. § 1.417 Submission of translation of international publication. § 1.419 Display of currently valid control number under the Paperwork Reduction Act. § 1.421 Applicant for international application. § 1.422 When the inventor is dead. § 1.423 When the inventor is insane or legally incapacitated. § 1.424 [Reserved] § 1.425 [Reserved] § 1.431 International application requirements. § 1.432 Designation of States by filing an international application. § 1.433 Physical requirements of international application. § 1.434 The request. § 1.435 The description. § 1.436 The claims. § 1.437 The drawings. § 1.438 The abstract. § 1.445 International application filing, processing and search fees. § 1.446 Refund of international application filing and processing fees. § 1.451 The priority claim and priority document in an international application. § 1.452 Restoration of right of priority. § 1.455 Representation in international applications. § 1.461 Procedures for transmittal of record copy to the International Bureau. § 1.465 Timing of application processing based on the priority date. § 1.468 Delays in meeting time limits. § 1.471 Corrections and amendments during international processing. § 1.472 Changes in person, name, or address of applicants and inventors. § 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage. § 1.476 Determination of unity of invention before the International Searching Authority. § 1.477 Protest to lack of unity of invention before the International Searching Authority. § 1.480 Demand for international preliminary examination. § 1.481 Payment of international preliminary examination fees. § 1.482 International preliminary examination fees. § 1.484 Conduct of international preliminary examination. § 1.485 Amendments by applicant during international preliminary examination. § 1.488 Determination of unity of invention before the International Preliminary Examining Authority. § 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority. § 1.491 National stage commencement and entry. § 1.492 National stage fees. § 1.494 [Reserved] § 1.495 Entering the national stage in the United States of America. § 1.496 Examination of international applications in the national stage. § 1.497 Oath or declaration under 35 U.S.C. 371 (c)(4). § 1.499 Unity of invention during the national stage. § 1.501 Citation of prior art in patent files. § 1.502 Processing of prior art citations during an ex parte reexamination proceeding. § 1.510 Request for ex parte reexamination. § 1.515 Determination of the request for ex parte reexamination. § 1.520 Ex parte reexamination at the initiative of the Director. § 1.525 Order for ex parte reexamination. § 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination. § 1.535 Reply by third party requester in ex parte reexamination. § 1.540 Consideration of responses in ex parte reexamination. § 1.550 Conduct of ex parte reexamination proceedings. § 1.552 Scope of reexamination in ex parte reexamination proceedings. § 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings. § 1.560 Interviews in ex parte reexamination proceedings. § 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding. § 1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding. § 1.701 Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000). § 1.702 Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000). § 1.703 Period of adjustment of patent term due to examination delay. § 1.704 Reduction of period of adjustment of patent term. § 1.705 Patent term adjustment determination. § 1.710 Patents subject to extension of the patent term. § 1.720 Conditions for extension of patent term. § 1.730 Applicant for extension of patent term; signature requirements. § 1.740 Formal requirements for application for extension of patent term; correction of informalities. § 1.741 Complete application given a filing date; petition procedure. § 1.750 Determination of eligibility for extension of patent term. § 1.760 Interim extension of patent term under 35 U.S.C. 156 (e)(2). § 1.765 Duty of disclosure in patent term extension proceedings. § 1.770 Express withdrawal of application for extension of patent term. § 1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product. § 1.776 Calculation of patent term extension for a food additive or color additive. § 1.777 Calculation of patent term extension for a medical device. § 1.778 Calculation of patent term extension for an animal drug product. § 1.779 Calculation of patent term extension for a veterinary biological product. § 1.780 Certificate or order of extension of patent term. § 1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product. § 1.790 Interim extension of patent term under 35 U.S.C. 156 (d)(5). § 1.791 Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use. § 1.801 Biological material. § 1.802 Need or opportunity to make a deposit. § 1.803 Acceptable depository. § 1.804 Time of making an original deposit. § 1.805 Replacement or supplement of deposit. § 1.806 Term of deposit. § 1.807 Viability of deposit. § 1.808 Furnishing of samples. § 1.809 Examination procedures. § 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications. § 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data. § 1.823 Requirements for nucleotide and/or amino acid sequences as part of the application. § 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form. § 1.825 Amendments to or replacement of sequence listing and computer readable copy thereof. § 1.902 Processing of prior art citations during an inter partes reexamination proceeding. § 1.903 Service of papers on parties in inter partes reexamination. § 1.904 Notice of inter partes reexamination in Official Gazette . § 1.905 Submission of papers by the public in inter partes reexamination. § 1.906 Scope of reexamination in inter partes reexamination proceeding. § 1.907 Inter partes reexamination prohibited. § 1.913 Persons eligible to file request for inter partes reexamination. § 1.915 Content of request for inter partes reexamination. § 1.919 Filing date of request for inter partes reexamination. § 1.923 Examiner's determination on the request for inter partes reexamination. § 1.925 Partial refund if request for inter partes reexamination is not ordered. § 1.927 Petition to review refusal to order inter partes reexamination. § 1.931 Order for inter partes reexamination. § 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings. § 1.935 Initial Office action usually accompanies order for inter partes reexamination. § 1.937 Conduct of inter partes reexamination. § 1.939 Unauthorized papers in inter partes reexamination § 1.941 Amendments by patent owner in inter partes reexamination. § 1.943 Requirements of responses, written comments, and briefs in inter partes reexamination. § 1.945 Response to Office action by patent owner in inter partes reexamination. § 1.947 Comments by third party requester to patent owner's response in inter partes reexamination. § 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination. § 1.949 Examiner's Office action closing prosecution in inter partes reexamination. § 1.951 Options after Office action closing prosecution in inter partes reexamination. § 1.953 Examiner's Right of Appeal Notice in inter partes reexamination. § 1.955 Interviews prohibited in inter partes reexamination proceedings. § 1.956 Patent owner extensions of time in inter partes reexamination. § 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination. § 1.958 Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response. § 1.959 Appeal in inter partes reexamination. § 1.961 - 1.977 [Reserved] § 1.979 Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of appeal proceedings. § 1.981 Reopening after a final decision of the Board of Patent Appeals and Interferences. § 1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination. § 1.985 Notification of prior or concurrent proceedings in inter partes reexamination. § 1.987 Suspension of inter partes reexamination proceeding due to litigation. § 1.989 Merger of concurrent reexamination proceedings. § 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding. § 1.993 Suspension of concurrent interference and inter partes reexamination proceeding. § 1.995 Third party requester's participation rights preserved in merged proceeding. § 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding. PART 3 — ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE § 3.1 Definitions. § 3.11 Documents which will be recorded. § 3.16 Assignability of trademarks prior to filing an allegation of use. § 3.21 Identification of patents and patent applications. § 3.24 Requirements for documents and cover sheets relating to patents and patent applications. § 3.25 Recording requirements for trademark applications and registrations. § 3.26 English language requirement. § 3.27 Mailing address for submitting documents to be recorded. § 3.28 Requests for recording. § 3.31 Cover sheet content. § 3.34 Correction of cover sheet errors. § 3.41 Recording fees. § 3.51 Recording date. § 3.54 Effect of recording. § 3.56 Conditional assignments. § 3.58 Governmental registers. § 3.61 Domestic representative. § 3.71 Prosecution by assignee. § 3.73 Establishing right of assignee to take action. § 3.81 Issue of patent to assignee. § 3.85 Issue of registration to assignee. PART 4 — COMPLAINTS REGARDING INVENTION PROMOTERS § 4.1 Complaints Regarding Invention Promoters. § 4.2 Definitions. § 4.3 Submitting Complaints. § 4.4 Invention Promoter Reply. § 4.5 Notice by Publication. § 4.6 Attorneys and Agents. PART 5 — SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES § 5.1 Applications and correspondence involving national security. § 5.2 Secrecy order. § 5.3 Prosecution of application under secrecy orders; withholding patent. § 5.4 Petition for rescission of secrecy order. § 5.5 Permit to disclose or modification of secrecy order. § 5.6 [Reserved] § 5.7 [Reserved] § 5.8 [Reserved] § 5.11 License for filing in a foreign country an application on an invention made in the United States or for transmitting international application. § 5.12 Petition for license

MPEP 200 - Type and Status of Applications

Applications can be filed as a National Application (Utility, Plant, Design, or Provisional Application) or as a national Stage Application (an International Application that has entered the national stage in the US). Provisional Applications Provisional Applications are a special type of application that that is used to establish a filing date. Provisional applications only require a specification and cover sheet. They are kept on file at the PTO and will not be examined on their merits unless a later filed regular application claims priority. Contents of a provisional - 1) Specification and drawing (if necessary), 2) Cover sheet - identify app as a provisional and provide following: name of all inventors, inventor residence(s), title of invention, name and reg. # of attorney and docket # (if applicable), correspondence address, and any government agency that has a property interest in the application and 3) appropriate fees (small entity discount available). With a provisional application - claims are not required, no oath or declaration filed, no publication, no RCE, no IDS and it does not have to be in English. To establish priority, regular application must be filed within one year Claim of priority must be filed within later of four months from the regular filing date or sixteen months from the provisional app filing date - translation of non-English provisional must be filed within this time allotment as well Regular application must have at least one inventor in common with provisional Regular application must contain a cross-reference to prior provisional Pendency is extended to next business day If applicant fails to make priority claim within 4/16 months, he may petition to accept an unintentionally delayed claim. This petition requires a fee and statement that the entire delay between due date and date filed was unintentional A provisional can never claim priority to another application A design application may not claim priority to a provisional Reissue Patent A reissue patent replaces an unexpired defective patent. A reissue is proper if there is a material defect in the original patent. Continuing Applications Must be filed during the pendency of a prior application claiming priority; multiple continuing applications are acceptable. Continuation - Directed towards the same general invention as parent Filed during pendency (before patenting, abandonment, or termination of proceedings) Discloses same or less subject matter Has at least one common inventor with parent Contains a cross reference to parent If filed on or after Nov 29,2000, the claim for benefit must be made within later of 4 months from filing date of the application or 16 months from parent filing date Continuation-In-Part (CIP) - CIP adds new matter; other requirements are the same as for a continuation. The effective filing date of a CIP is determined by the date on which the claim first finds support; analyzed on a claim by claim analysis. Divisional Application - A divisional application for an individual or distinct invention 'carved out' of the parent. It may only disclose and claim only subject matter disclosed in the parent. Other requirements are the same as continuation. Inventorship may change upon filing a divisional; overlap of inventors is measured as of the original filing date of application. A design application may be filed as a division of a regular application if the drawings in the original application sufficiently disclose the claimed design. Continued Prosecution Application (CPA) - The pending application must be regular or plant filed on or before May 29, 2000 (irrespective of any priority claim), an international application (before May 29, 2000) that has entered national stage, or a design application of any vintage. A continuation or divisional (but not CIP) may be filed via CPA. The inventors may be the same or fewer as those of the parent application. Presumption of identical, unless statement requesting deletion. Causes parent application to become abandoned automatically. Applicant will not be allowed to amend the first paragraph of the application to add a cross reference. Only a request is filed - no new specification is needed. The filing date is the date on which the requesting paper is received. Other Continuing Information - Obviousness-type double patenting rejection - asserts that claims presented in multiple applications should have been presented all in one application. Papers submitted in a parent do not automatically become part of the continuing application (unless it's a CPA). Such documents can be copied and refilled - including small entity assertions in parent. An assignment of a parent application carries title to any divisional, continuation, or reissue application filed after the date of assignment. (CIP's are ambiguous). Statutory Invention Registration - SIR is not a patent; serves as prior art to later applicants' applications. Inventorship Inventors must have contributed to the claimed invention. When determining contribution of inventors, provisional applications are determined on the basis of disclosure, as opposed to claim by claim in regular applications. Correction of Inventorship {Rule 48 [MPEP 201.03]} Errors in inventors originally named - Oath/Declaration already filed: request to correct; statement from each person being added and from each person being deleted that error was without deceptive intent; O/D by actual inventors; fee; if assigned, written consent of assignee Oath/declaration not yet filed: file oath/declaration that names the proper inventive entity Cancellation or Amendment of Claims - Removal of Inventor from inventive entity - to remove, if oath/declaration has been filed: request that identifies the name of inventor being deleted; acknowledges that inventor's invention is no longer being claimed; fee Amendment of claims that requires addition of Inventor - to add, if oath/declaration has been filed: request to correct; statement from each person being added that the addition is necessitated by amendment of claims and error was without deceptive intent; oath/declaration by actual inventors; fee; if assignment, written consent from assignee Correcting Provisionals - Provisional with no cover sheet - filing of a cover sheet naming correct inventors will operate to correct inventive entity. Provisional (adding inventor after cover sheet filed) - request to correct Inventorship that identifies the inventor being added; error occurred without deceptive intent; fee. Provisional (deleting inventor after cover sheet filed) - request with desired change; statement from person being deleted that error occurred without deceptive intent; fee; if assignment, written consent by assignee. Correction of Inventorship Not Required Issuance with Correct Inventors - if the inventive entity is correct as of the issue date, no correction required Typos or other name errors - need not be corrected; can be corrected with a certificate of correction Name Change - need not be corrected; distinguished from incorrect inventor Other Ways to Correct Inventorship court order reissue Foreign Priority Claims Applications claiming priority to a foreign application must be filed within 12 months of the prior application (six months for designs). Time measured from date of first foreign application. A priority claim under 119(e) and 120 establishes an effective US filing date for all purposes for commonly disclosed subject matter A foreign priority claim does not establish an effective US filing date for all purposes for commonly disclosed subject matter. If there is a statutory 102(b) bar, the foreign priority claim will not help the applicant. The 102(b) bar is based on the actual US filing date. Requirements for Foreign Priority Claim - NTO or WTO country - foreign application must have been filed by inventor or his assigns; US application must be filed within 12 months of foreign application's filing date; must be same invention; priority claim must be made with submission of a certified copy of the foreign priority document. The claim for priority may be filed at any time up to (including) the date of issuance of patent (should be submitted by payment of issue fee). For applications filed in US (or entered national stage) on or after 5/29/2000, the priority claim must be made within four months of the filing date or 16 months from foreign filing date (the later) - petition may be filed. Applicant must claim priority to the first filed application. Publication of Patent Applications Most patent applications are published 18 months from the earliest priority date under any claim of foreign or domestic priority. The publication statute applies to any application filed on or after Nov 29, 2000 (including CPA, not including RCE). For earlier filed applications, the applicant may request publication. Exceptions - applications that are no longer pending (issued or abandoned) applications subject to a secrecy order or publication would be detrimental to national security provisionals; designs; reissues Exceptions upon request - must be made upon filing of application; request must certify that the invention has not been and will not be subject of a foreign patent application applicant may file a petition with fee to avoid publication of a currently pending application; may not file a continuing application with a nonpublication request if application is filed abroad (after nonpublication request), the applicant must notify the PTO within 45 days or application will become abandoned. Publication format and process - Each utility and plant application must be in condition for publication: contains filing fee and oath/declaration; specification of sufficient quality for optical character recognition; title and abstract in compliance with 1.72; drawings "acceptable" for use in the patent application publication as prior art document; and sequence listing computer-readable form. If applicant wants publication to be reflected by amendment, applicant must timely file a copy of the application as amended. The patent application publication will be based on the EFS copy of the application if the EFS copy is filed within the later of: 14 months from the earliest claimed priority date; or one months from the application's actual filing date; or before the PTO has started the publication process; or within one month of the mail date of the first filing receipt indicating the application's confirmation number. The applicant must also file and EFS copy of the application: for 'voluntary' publication of an application pending on Nov 29, 2000; or for publication of an application as redacted; or for republication of an application. If drawings are 'acceptable,' applicant may submit better quality drawings for publication with: an EFS copy of the application; or a petition within the later of 14 months from the earliest claimed priority date or one month from the actual filing date of application.

MPEP 1500 - Design Patents

Like plant patents and biotechnology, design patents are not tested extensively on the Prometric Patent Bar Exam. However, test takers report that they occasionally encounter a question from MPEP 1500. Know the following highlights: Design patents consist of drawings, drawing descriptions, and a single claim. A brief narrative is optional. Design patents have a 14 year term. Design must be reproducible No claim to provisional Must be novel and non-obviousness Computer generated icons can receive design patents No offensive subject matter 112 applies © symbol can accompany design with a waiver to PTO "The ornamental design for (the article) as shown." No Maintenance Fees No publication 6 months to claim priority to foreign apps No RCE; no reissue All About Design Patents & How they are Different from Utility Patents (Chapter 1500) OK: Design Apps. What are the big differences between design apps & normal utility apps? 1.There is only 1 claim allowed in any design app! As a corollary, if the examiner sees anything looking distinct/separate in the design app, a restriction to elect 1 claim will be mandatory (remember than in utility apps the restriction is not 100% mandatory if the examiner does not see an undue burden in the examination, but here it is). Divisional continuations are still available for restrictions in design apps. 2. The protection for a design patent only lasts for 14 years from the grant date. (20 years from effective filing date for a utility) 3. While a design app can get foreign priority under 35 U.S.C. 119(a)-(d), there is only a 6 month window from time of the earliest foreign filing until the U.S. filing that claims priority (as opposed to 12 months for a utility app) 4. A design patent cannot claim the benefit of a PA under 35 U.S.C. 119(e); BUT it can claim the benefit of a prior filed US NPA (35 U.S.C. 120 is OK). 5. There is no RCE under a design app, instead a CPA is used exclusively for continuations in design apps. 6. Design apps are never published. 7. There is no provision for an international app that is moved onto the national stage under the PCT for design apps (only US apps, or US apps claiming priority over purely-foreign design apps). Maintenance fees: Utility patents need maintenance fees paid after the patent is granted, design patents do not have these fees. The Claim in Design Patents: The (single) claim is of the form: "The ornamental design for (the article that embodies the design or the article that the design is applied to) as shown." The Elements in a Design Patent: 1. App fee & transmittal forms -> just like a utility app. 2. ADS -> just like a utility app. (giving basic info on the app, correspondance addresses, names of applicants, specifying if there is a preliminary amendment, declaring SES, etc.) 3. The specification. (including the single claim): (37 CFR 1.153, 1.154) There should be a Preamble & Title (this takes the place of the abstract). This just includes the title of the design & brief description. Next: The Description. The description usually is brief since most of the actual information about the design & ornamentation is actually contained in the drawing. As long as the descriptions clearly & accurately describe aspects of the drawings they are permitted (no particular format required). However, remember 35 U.S.C. 112 ¶ 2: If the descriptions are not clear the examiner can object and require that the descriptions be rewritten. The claim: See above, remember just 1 claim is allowed! Drawings: These are really the crux of a design patent since the whole point of the patent is around aesthetics & ornamentation. Views: Think of this like a draft design, give sufficient top, front, back, side views to fully disclose the appearance. Broken lines: These are useful when it is necessary to show the invention in a background environment where the environment is not claimed in the app, but is useful for properly showing the invention. Photos & Color Drawings: Remember 37 CFR 1.84, normally drawings must be B&W but if necessary the applicant can file a petitition (37 CFR 1.84) along with multiple copies of photos/color drawings and the requisite 37 CFR 1.17(h) fee to get the drawings included (if they are actually needed). Remember: there must be a clear statement that there are color photos/drawings that are available upon request from the USPTO. 1504 Examining the Design App: What is covered by design apps? (35 U.S.C. 171) "New, original, and ornamental design for an article of manufacture" Including: A design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (like the design on the outside) a design for the shape or configuration of the article (like the shape of the case, how the overall product appears) A combination of the first 2 categories. Computer Icons: They still have to meet the above requirement to be part of an 'article of manufacture' instead of just being abstract drawings: 2D computer icons are considered as surface ornamentation, so as long as this icon is part of another item of manufacture (like appearing on a monitor with a product) it is just another type of ornamentation. Example: Icons on an iPhone screen can get design patents. As long as there is an embodiment the icon may be patented. Lack of Ornamentality: The ornamentation has to actually have been made for the purpose of being decorative, it can't just be a byproduct of the functional design. Example: I make a pulley system as part of an invention that might look nice. The pulleys are part of the function of the invention, and since they are not ornamental I cannot get a design patent on them. Simulations do not get patents: Remember, the ornament must be original, simply copying another design and reproducing it (simulation) is not original, no patent. Novelty: The factual inquiry is to determine if the new design is actually novel, and has not been anticipated in all respects by prior art. As long as the "average observer" would not see the prior art as anticipating the new design in every element, it is novel. (This is 35 U.S.C. 102 reasoning!) Remember, the prior art does not have to be analogous, it could come from any source. Nonobviousness (35 U.S.C. 103): The analogous art for designs is not the field for the functional part of the invention, it is the field for the actual types of design involved. Example: Say there is a repeated decorative pattern being patented, the fact that the product it is decorating is an outdoor table is not the field to look for analogous art. Instead, look at the field of products where similar patterns would be used in the ornamental sense. The overall appearance of the design must be considered. Prima facie obviousness test: Appropriate if the designer of ordinary skill would modify a prior art reference to remove some features to arrive at the new design (same thing as removing parts of an invention that are not functional, no patent for obviousness). As usual, the applicant may rebut a prima facie case for obviousness. 35 U.S.C. 112 Considerations: 1. Under paragraph 1: if the drawings do not properly disclose the design or if the designer of ordinary skill will not be able to reproduce the design from the information given in the spec/drawings then it will be rejected for not being properly described or enabled. 2. Under paragraph 2: Definiteness is still important in the claims. Simply saying "or similar article" , "or the like" will not be definite enough when describing the design. However, that broadening language could be OK if it is instead used in describing the types of environment in which the design would be used (like: "used in a kitchen or the like") since that is just background info and not about the design itself.

MPEP 1800 - Patent Cooperation Treaty (PCT)

Overview The Patent Cooperation Treaty (PCT) establishes a system for filing international patent applications. PCT is applicable to utility patents only, not design patents. General A PCT application that designates the US is a US patent application, even if it is filed in another receiving office. The 102(b) statutory bar is measured back from the PCT filing date R1.48 may not be used to correct inventorship in a national stage application where the inventors were named erroneously in the application (i.e., the national stage of PCT application). Section 365 (c) is a special case. An international application (PCT) may be treated as the parent application until 30 months from the international filing date, and an applicant may file a continuation application within that time. For applications filed on or after 11/29/00, if any claim for benefit is made to a prior PCT application, the first sentence of the specification must state whether the application was published in the English language. (This does not apply to the national stage of a PCT application.) The PCT application is published. A PCT application may claim priority to an earlier filed US application, and a US application may claim priority to an earlier filed PCT application. International Applications Filed in US Who - A PCT application designating the US must include one applicant who is a resident or national of the US, and the application must be made in name of inventors. How to file - PCT applications may not be filed via fax What to file - 1) PCT request, 2) abstract and filing fees are typically paid upon filing but may be paid subsequently 3) the priority claim should be made when filing the application; if priority is to a prior US application, a certified copy of the priority application to the International Bureau will be submitted 4) filing implicitly carries a request for a foreign filing license For a filing date, you need - 1) indication that at least one applicant is a resident or national 2) indication that app is an international app 3) designation of at least one contracting state 4) name of applicants 5) description in English 6) drawings 7) at least one claim if the app designate US, name, address, signature of EACH inventor (or attorney) and any app to which domestic priority is claimed shall be included 9) indication as to which international search authority International Stage Chapter I - the following events occur or may occur: the ISA determines whether there is unity of invention the ISA establishes a search report the applicant has one opportunity to amend the claims within 2 months after establishment of search report the application is published at 18 months applicant may file a demand for Chapter II proceedings (19 month) applicant may enter the national stage in any designated state (30 month) a Chapter II demand may be filed via fax applicant may demand examination for all or fewer of the states originally designated; these states become elected states Chapter II if the applicant files a chapter II demand by the 19 month date, the application will be subjected to international preliminary examination before an international preliminary examining authority (IPEA) the IPEA will usually issue a written opinion based on the search report and other aspects of the application (optional) the applicant has the opportunity to reply to the written opinion, such reply may include arguments and amendments to the claims the international preliminary examination report (IPER) will issue the written opinion will discuss novelty, inventive step, and industrial applicability, as well as unity of invention and formal matters the IPER will provide a statement as to novelty, inventive step, and industrial applicability; it is not a statement as to patentability National Stage - 365(c) Deadline to enter national stage is 30 months from first priority date/PCT filing date. To enter US national stage, applicant must file: 1) fee, 2) when required, a copy of the international application and English translation, 3) when required, amendments with English translations, and 4) oath/declaration of the inventor. In practice, usually the fee and cover sheet are all that is required by the 30-month deadline. A petition to revive may be filed if the application does not meet the necessary requirements by the 30-month date. The application is subject to publication if the PCT application was filed on or after 11/29/00. Chapter 1800: The Patent Cooperation Treaty It is possible to file an app in the US and make it international in scope (an IA such that it can be valid in a PCT member country which includes 120 other countries), or an international app that was filed in a foreign country can be brough to the US and be able to benefit from its original international effective filing date (102(e) in action). Main steps in the PCT: (more details below). 1. The IA must be filed in a receiving office (RO) in a member country of the PCT. In the U.S. the USPTO may act as the receiving office. 2. After going to the receiving office, the app is sent to the International Searching Authority (ISA). The ISA does an initial prior-art search. In the U.S., an app will usually be able to either get the USPTO, or the European Patent Office to do the International search. The ISA does a search, and also issues a preliminary & non-binding opinion as to whether it thinks the patent is actually novel, involves an (obviousness?), involves an inventive step (obviousness?), and finally if the app is industrially applicable (sounds like a proxy for utility. 3. After the prior art search, the app goes to the International Bureau (IB). The IB is the central office for the IA, and usually at the expiration of 18 months of the priority date (original filing date of the IA) it will publish the application. The IB is also the central point from which copies of the app get sent to member countries (like the U.S.) Amendments to claims: There is a 2 month limit on amending claims after the ISA (usually to get the amendments put in before the 18 month publishing date). 4. After the priority date is given, the applicant has 30 months to select a Designated Office. (DO) This is where the app actually comes onto the national stage (35 U.S.C. 371 in the U.S.). By meeting the requirements to come onto the national stage within 30 months of the pirority date the app can come here. 5. OPTIONALLY: The applicant may desire there to be an international preliminary examination of the patent app. The applicant can request this by filling out a Demand, the demand has to be filed within 3 months of the ISA, or 22 months of the original priority date. The demand goes to the International Preliminary Examination Authority (IPEA), and the USPTO acts as the IPEA for international apps that are filed in the U.S. (where the US is the original RO). The preliminary exam allows the examiner to make comments on: 1. lack of unity of invention; 2. note errors; 3. issue written opinions on the novelty, 'inventive step', and 'industrial applicability' of each claim; 4. TIME: Even with this optional step, the applicant still must meet the national stage requirements within 30 months of the original priority date (this optional step does not extend that deadline in any way). 1803: The Publication by the IB is not required if the US is the only country designated in the IA. (This means that for apps that only designate the US the app will not be published after 18 months since it is not necessary). 1805: Where to file an IA (35 U.S.C. 361): Remember: The IA cannot be initially filed in the US (with the USPTO acting as the RO) unless at least one applicant is a citizen or resident of the U.S. Because of the fact that the U.S. requires inventors to at least sign oaths/decls on the patent (other countries do not require this) the applicant in this case has to be an inventor (at least 1 inventor is a U.S. citizen/resident). (This is a case of U.S. patent law being stricter than what the PCT requires) Remember the 37 CFR 1.10 Express Mail provisions. They do apply to IAs (like the date of mailing will be the effective received date). However, the Mailing Certificate practice does not apply to IAs. Faxes: They cannot be used for transmitting apps, drawings, copies of the app (needed for entering the national stage). However, faxes may be used for other transmissions, the fax certificate does not apply for IA documents. 1810: Getting the International Filing Date: 37 CFR 1.431; 35 U.S.C. 363, 373; PCT 11 1. At least one applicant must be a U.S. Resident to use the U.S. as an RO and get an International Filing Date 2. The IA must be in English 3. The IA must contain at least the following: 1. An indication that the app is intended to be an IA 2. The designation of at least one Contracting State (member) of the Patent Cooperation Union; 3. The name of the applicant (before 20040101 this had to be all applicants, but on or after 20040101 it only needs to be 1 applicant). 4. A section that contains a description; (starting on its own page; this includes necessary drawings too) 5. A section with at least 1 claim (again, separate page). As soon as all the above elements are met, the USPTO will give an international filing date to the IA. 1812: The IA must have a request, description, claims, abstract, and necessary drawings (note that this is more than is needed to just get the international filing date). 1817.01: How states are designated on IAs occurring on or after 20040101 (basically, a proper request means all countries are automatically designated): The IA request constitutes: 1. all member states of the PCT are designated; 2. A request for every form of patent protection available in each state; 3. Remember: For coming to the U.S. the actual inventors must still be indicated as (at least some) of the applicants on the request (this is not necessary in other countries). 1817.02: Indicating a Continuation or CIP in the IA: (when there is an earlier national app): The request should indicate that it is seeking benefit from a prior US or prior IA designating the US. (check the 'Supplemental' box) The specific relationship to the parent app (like is this new app an RCE, or a CIP with new matter) should be specified, and the parent app should be clearly identified (with app number) Note: Just because the request properly identifies the parent app, the applicant still has to have a proper ADS that claims benefit of the prior app, or alternatively the IA must identify the prior app in the first sentence(s). (Same as rules in normal US apps, see 37 CFR 1.178(a)(2)). 1819: Getting a Refund when there was an earlier ISA: Some ISA's refund part of the $$ if there already was a search done on the same subject matter. So if there already was a search on a normal US app (35 U.S.C. 111) then there could be a discount for an IA on the same material. 1820: Sig of Applicant: Before 20040101: All applicants had to sign, but if one was unavailable or refused the other applicants could file a statement explaining why the other applicant did not sign. After 20040101: Just one applicant needs to sign. 1823-1825: Description; Claims; Drawings: 1. The description should clearly describe the invention such that the OSP could practice it (big surprise); The PCT has 6 sections it wants the description divided into: 1. Technical Field 2. Background Art 3. Disclosure of Invention. 4. Brief Description of Drawings 5. Best mode for Carrying out Invention (or Mode(s) for carrying out invention) 6. Industrial applicability (utility) 7. -> Where applicable: Sequence listings (like for DNA sequences) Claims: They define the matter for which protection is sought (yay), clear & concise, fully supported in disclosure; PCT likes 2 chunks: 1. A statement of the prior art 2. The 'characterizing features' for which protection is sought in this invention 2. Drawings: If necessary the IA should contain drawings. While there is no express provision for photos, they are allowed if they are necessary for understanding the invention. The only way to amend drawings is if the applicant makes the (optional) demand for an IPE (International Preliminary Examination). And onto 51: 1826: The Abstract: This should contain a brief (50-150 word) synopsis of the inventi0n, its field, technical problems solved, gist of how the invention solves the problem, principle uses of the invention, main features, & chemical formulas (if any). 1827: Fees: There are filing, transmittal, search fees all payable on the filing date of the IA. 1828: Being able to claim Priority over an Earlier App: 1. To claim priority over an earlier national or IA, the claim for priority must be in the IA request, and it must contain: the country where the app was filed, date of filing, and application number (all of these are taken as what was true as of the filing date of the later IA). 2. In case the applicant forgets to or puts an invalid priority claim down, the applicant can correct the priority claim either: (Think about it this way, the claim of priority should happen within 12 months of the filing of the later IA, these rules maintain the 12 month time between filing dates, but tack on 4 months for corrections): 1. Within 16 months of the filing date of the original app the applicant is claiming priority over; or 2. Within 4 months of filing the later IA. 3. The applicant has to have a certified copy of the original app that is being prioritized (in the U.S. it might need an English translation if not in English). This needs to be in either within 16 months of the priority date of the earlier app, or before examination begins. 1832: Licenses for Foreign Filing: Memory Lane: Remember, that a normal US app has to either 1. have a foreign license to be concurrently filed in a foreign country; or the applicant has to wait 6 months to file in the foreign country (assuming no national security orders are put on the app). If the new IA is not disclosing any new matter that was not already in an earlier US app that already had the foreign license, or was already filed > 6 months prior, it is OK to push internationally. 1834: Correspondance: (Mail time again): 1. When the Office gets a mailing that does not properly ID the app to which the papers relate, it will contact the applicant/agent to get this corrected. 2. If there is just 1 applicant with no agent(s) the mailings go to the applicant at designated addr; otherwise they first go to agents. 3. Remember: the 37 CFR 1.10 Express Mail provisions do apply, BUT the 37 CFR 1.8 "certificate" practice does not apply to an IA. 1834.01: Faxing Stuff: It may be allowed but not for: 1. Anything that needs to be 'certified' (this means: the app itself, certified copies of other apps, drawings, other docs required by statute to be certified). 2. While there is no 'fax certificate', the normal rules (a fax is considered transmitted on the date of the final page being received at the USPTO, time extends over weekends to next business day). 1836: It is possible to fix obvious errors: Obvious does not mean if whole pages are missing from the app (even if it is obvious that the pages are missing, and they were only omitted due to clerical error) It does mean, spelling, linguistic, grammatical errors, as long as no underlying meaning of the app is changed. 1840: The ISA: Remember, the ISA does 3 main things: 1. It makes an international search for prior art; 2. It makes a report on what it found; 3. For apps on or after 20040101, it makes an opinion about whether or not prior art defeats the claims. Using the European Patent Office as the ISA: This is generally allowed when using the USPTO as the RO, but there are 3 big exceptions: Biotech, Business Method, & Telecomms patents should not go to the European office for ISA, they should stay in the US. 1842: The 'flow' of the IA process: DEADLINES!! 1. Remember, all time periods are measured from the priority date of the IA. This means if the applicant is claiming priority over an earlier national app or IA that earlier date is what everything gets measured against. If there is no claim of priority in the IA, the priority date is just the date of filing the IA itself. 2. International Filing Dates: Remember, in order to actually get the priority over an earlier app, the IA that claims priority over that app needs to be filed within 12 months of the earlier app's filing date. Time for establishing the International Search Report (from the ISA): The time limit is either 3 months from the time the ISA receives its copy of the app, or 9 months from the priority date, whichever occurs later. Publication: The app will get published promptly after 18 months from the priority date of the app. Deadline for Filing a Demand in order to get an (optional) Preliminary Examination (from the IPEA): The demand must be filed before the latter of: 1. 3 months from the date of transmittal to the ISA; or 2. 22 months from the original priority date. Remember, the 30 months from the priority date deadline still applies in moving the app onto the national stage. Therefore, it might mean that as a practical matter the app has to go to IPEA sooner than the above deadlines. Deadline for filing a copy, translation, & fees for moving the app onto the National Stage: a. 30 months from the priority date under chapter I; b. The PCT sets the deadline at 30 months, but individual nations could set the limit as longer than 30 months if they want (30 months is a common minimum). 1850: Unity of Invention Before the ISA: (like a restriction requirement when there are multiple independent inventions in one app): 1. There must be a 'unity' of invention (1 invention per app, or if there are multiple inventions they must be linked to form a 'single general inventive concept'). 2. As long as the independent claims avoid prior art and also satisfies unity of invention (by having 1 invention or by having a single inventive concept via 'special technical features' that are shared by the inventions). 3. If there is little or no extra effort involved in searching for multiple inventions, the ISA will not charge an extra fee. 4. However, if there is substantial extra effort, the ISA will still perform searches if the applicant pays extra fees. The ISA will invite the applicant to pay the extra search fees on additional inventions. Remember: The ISA is not the final arbiter of unity or patentability, it is just doing prior art searches and giving a non-binding preliminary report. If the applicant does not pay the extra fees, parts of the IA will not be searched. 5. Protesting: When the applicant thinks the ISA is wrong, the applicant can file a statement of protest over lack of unity, or of extra fees, and to the extent this convinces the ISA, the fees may be waived. 1853: Amending Claims under PCT 19: There is ONE opportunity to amend the claims (and only the claims) after the ISA issues its report. The applicant has 2 months from the time the search report is mailed to amend claims in the IA. If received in time, the IB's publication will contain the amended claims. 1857.01: Review of 102(e) and 20001129 issues with IAs: On or after 20001129: If the IA designates the US If it was published in English. Then: The IA is available as prior art under 102(e) and also, the applicant will be able to get the date of the IA as the 102(e) date when moving the app onto the national stage. If not designating US or in English: Then the app is not available under 102(e), however, the published app is available under 102(a) or 102(b) so be careful! Before 20001129: There is no ability to get the earlier filing date of the IA for 102(e) purposes here. 1859: Withdrawing an IA or claims: As long as withdrawal is done within 30 months of the priority date (deadline for moving onto the national stage) the applicant may withdraw: the whole app; a designation of a country; or a priority claim. Appointed agents can withdraw, or the applicant can do it. 1860: The IPEA process: Step 1: The IPE will read the app, and the opinion of the ISA. If the ISA used is either the USPTO or European Patent Office, the ISA's opinion will be considered a valid initial opinion, and the USPTO will generally not write up another initial opinion in those cases (only where there is no other initial opinion). Step 2: If the applicant is protesting a negative opinion present in the ISA's opinion, then the applicant can protest this finding and get a further written opinion if the USPTO thinks the protest is persuasive. The written opinion has to state grounds for each of its conclusions (just like in any finding on the merits for the USPTO) The applicant has the opportunity to file a response with amendments to the app, usually there is a 2 month time limit from the time of the opinion to get in the reply. 1864: The Demand for IPE, and the ability to amend: The applicant has the option to file a demand for IPE, and if that occurs the applicant may also amend the app. This amendment will allow the applicant to address problems with novelty/obviousness/or industrial applicability to get a positive initial report (w

MPEP 700 - Examination of Applications

Overview MPEP 700 (detailed outline follows) Rejection of Claims Rejection of claims is based on subject matter (substance) and is subject toappeal. Note: objections are based on form and may be reviewed only bypetition to the director. Examiners object to new matter. Rejection = Appeal Objection = Petition Foreign Filing License - US application will be rejected if applicant files in another country before receiving a foreign filing license (if the invention was made in US). Licenses are obtained automatically 6 months after the filing date. They can also be obtained retroactively with a petition (countries filed, dates, not secret, license was diligently sought, filing was in error w/o deceptive intent) and fee. Final Rejection - A final rejection is any second or later rejection, unless: new rejection of claim that was not added or substantively amended; rejection is based on newly cited art other than info submitted and IDS. A final rejection can be the first action in a continuing or substitute application, if all claims are to the same invention as the parent application and could have been finally rejected in parent. A final rejection is NOT proper if it is: 1) the first office action in a CIP and at least one claim includes subject matter not present in parent; 2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter. Appeal - An applicant can appeal after two or more actions on the merits; and after any final rejection. Order of Examination Applications are examined in order in which they are filed in the US.(Applications are examined on a first come, first served basis.) Types of Special Applications - "Special" applications include: made special by petition; reissued applications; transferred to different examiner; interference; ready for allowance; ready for final rejection; pending more than 5 years; and reexaminations. Petitions to make Special - Petitions to make special need to be in writing and identify the application by number and filing date. Petitions to make special that DO NOT require a fee: Applicant's health(w/ doctor's certificate); Applicant is 65 or over; invention will materially enhance the quality of the environment; invention will materially contribute to energy resource development or conservation. Petitions that DO require a fee: Safety of recombinant DNA research; superconductivity; HIV/AIDS or cancer; counter-terrorism; biotechnology (small entities); and Prospective manufacture (w/ statement alleging): sufficient capital/facilities; will not manufacture w/o granted patent; will manufacture if patent is granted; AND made a prior art search or has good knowledge of prior art Actual infringement (w/ statement alleging): infringing product/method is on the market/in use; comparison to claims made; AND search of prior art or good knowledge Any new (not previously examined) application if: claims are to a single invention; a search was made; provides copies of closest references; AND provide detailed discussion of references and why claims are patentable over them. If not met, applicant gets a second chance to try to meet them. Suspension of Action by Examiner Suspension of action can be from the applicant, the PTO, or overlapping applications by Same Applicant or Assignee. By Applicant - 1.103(a) - may be allowed on petition if: good and sufficient cause; applicant must specify time of requested suspension (not to exceed 6 months); must pay fee (unless PTO's fault); no response can be due from applicant (i.e., no outstanding Office Actions) 1.103(b) - may be allowed by request if: filed along with a request forCPA; must specify time of requested suspension (no more than 3 months); fee 1.103(c) - may be allowed by request if: filed along with a request for continued examination (RCE); specify time requested (3 months); fee 1.103(d) NEW - Deferral of Examination of Application; max of 3 years from earliest filing date from which benefit is claimed; fees; won't be granted after mailing of office action or notice of allowance; must be in condition for publication; no non-publication request; regular (utility) and plant apps or international app that entered national stage - on or after Nov 29, 2000 By PTO - Max period is 6 months; office will notify applicant Suspension for public safety or defense if: application owned by US; publication may be detrimental to public safety; AND appropriate agency requests suspension Suspension for Statutory Invention Registration (SIR) if: PTO accepts a request to publish an SIR in the application. Period for Reply Due dates are calculated from PTO mailing date EOT cannot exceed the 6 month statutory period for Office actions If a timely reply is not filed, it is considered abandoned An authorization to charge all required fees to a deposit account will be treated as a constructive petition for extension of time Notice of Allowability - time is not extendable for: submitting an oath or declaration; and submitting formal drawings Requirements for Information Examiner may require the submission of information that is reasonably necessary to properly examine or treat the matter (including: reissues, patents, reexams) Any reply that states that the information required to be submitted is unknown or is not readily available will be accepted as a complete reply - safe harbor Applicant generally has 3 months to reply if it comes with OA and 3 months if it comes separately; EOT's are available; if no reply - abandoned After applicant's reply - examiner must respond within 2 months of receipt; examiner may not make next action a final rejection if it relies on the new material Request for Continued Examination (RCE) A RCE provides a way for an applicant to obtain continued examination of an application after prosecution has closed by filing a submission and paying a fee. If a subsequent action is made final, an applicant can get continued examination again by filing submission and fee. No limit as long as done before abandoned. RCE is not available for- Adding new matter to an application (must use a CIP for that) Provisionals Design applications Patents under reexaminations (reissues are okay) Patents and international applications filed before June 8, 1995 Application after the filing of notice of appeal or civil suit unless appeal or suit is terminated while application is still pending What is needed to get RCE? Prosecution must be CLOSED: application is under appeal; last office action is final; notice of allowance; or another action that closes prosecution Applicant must request RCE by filing a submission and fee PRIOR TO the earliest of the: 1) payment of the issue fee (unless petition to withdraw is granted); 2) abandonment of application; or 3) filing of notice of appeal or start of civil suit (unless terminated while application is still pending). RCE is entitled to benefit of a certificate of mailing (CPAs are not) A request for a CPA filed in an app having a filing date on or after May 29, 2000 for which CPA practice is not available (utility) will be treated as a RCE Submissions with a request for RCE Allowed: IDS; amendments; arguments in a previously filed appeal or reply brief submitted in reply to a final rejection Not allowed: appeal briefs under §1.192; reply briefs under 193(b) If a reply to an OA is outstanding, submission must meet requirement of §1.111 in order to continue prosecution. Payment of the fee for an RCE does NOT toll the running of any time period set for reply. What does RCE do? PTO will withdraw the finality of any Office action Will be treated as a request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision If filed after a decision but before filing an appeal, it will serve to reopen prosecution. However, applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board should be removed. Abandonment Abandonment of an application (not of an invention) Failure to Reply - If an applicant fails to respond within the appropriate time periods, the application will automatically become abandoned If applicant replies within the time period but the reply is not fully responsive, the application still may be abandoned (extension of time may be given if response appears to be a bona fide attempt to respond) Express Abandonment - How is it done? By filing a written declaration identifying the application; however, express abandonment of the application may not be recognized by the Office unless it is actually received in time to act before date of issue or publication. For express abandonment after receipt of Notice of Allowance, applicant should submit declaration along with a petition to withdraw the application from issue and fee. Who can do it? Applicant (with Assignee's consent); Owner/Assignee; Attorney/Agent of record; Attorney/Agent Not of record, who acts in a representative capacity when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application Special Abandonment Situations - Termination of Proceedings - terminated when: 1) Issue fee is not paid when due (can be revived is fee is accepted with petition), 2) Application in a interference where all claims corresponding to the count lose, 2) After decision by Board or court. Revival of Abandoned Applications - can happen sometimes Interviews Interviews in conference room, videoconferencing are okay (amended) Interviews do not occur before a first office action unless it's a continuation (or CPA) or substitute application Examiner may require that an interview be scheduled in advance No right to an interview after a final rejection Not normally allowed after filing an appeal brief After an Interview: applicant must ensure the substance of the interview is made of record in the app - often the examiner agrees to do it. Full response to OA is still required. If examiner thinks applicant's statement is not complete, he may give the applicant a 1 month time period to complete the reply Who can interview? Inventor/applicant Registered attorney/agent: of record, or using his file, or known by examiner to be local representative of record attorney Amendments and Other Actions by Applicant Requirements of Response - Every response must: Reply to every rejection and objection in OA; Be a bona fide attempt to advance case to final action; Be in writing, typed or written in permanent ink and proper size paper; and Be properly signed by: Applicant(s); Owner(s); Attorney of record; or attorney not of record but acting in representative capacity. The entry of second or supplemental responses is discretionary with the PTO Non-responsive reply If intentional, must remedy within statutory period to avoid abandonment If unintentional, examiner can either accept it or require reply within remaining period or set a new 1 month time limit (extendable); new time limit cannot be given after final OA Types of Amendments - Preliminary Amendment - received by PTO before first OA is mailed Not considered part of original disclosure unless filed with original app and later filed oath refers to it Should be filed after app gets app number and filing date if not filed with original app Should be filed with original app if claims are canceled to reduce the filing fee For CPA's, preliminary amendments must be filed on the filing date of the CPA A preliminary amendment will not be entered if it cancels all claims and fails to simultaneously submit any new claims A preliminary amendment generally will not be disapproved if it is filed no later than: 3 months from filing date; filing date of CPA; OR 3 months from date the national stage is entered. NOT extendable time periods Factors to be considered in whether a preliminary amendment "unduly interferes" with preparation of first OA: nature of changes to claims or spec that would result from entry of amendment; state of preparation of first OA as of date of receipt or pre. Amendment Amendments after Final Rejection - no unrestricted right to entry of amendments after final rejection unless: Amendment cancels claims or complies with objections as to form Places case in condition for allowance or better form for appeal Adopts suggestions by examiner Period for reply cannot be extended more than 6 months from the date of the final action If applicant replies within 2 months from date of mailing of final rejection, and the PTO does not issues an advisory action until after the end of the 3 month shortened period for reply, any extension fee will be calculated from the mailing date of the advisory action Amendments After Allowance of All Claims - you have no right to have amendment entered after mailing of Notice of Allowance - it's a matter of grace, good and sufficient reason in petition and fee If amendment is received in PTO before NOA is mailed, but does not get to examiner until after NOA is mailed, it has same standing as if NOA was not mailed If filed after NOA, must also submit a showing as to: why it's necessary; why it requires no additional search or examination; why claims are patentable; why claims were not presented earlier A supplemental oath or declaration is NOT treated as an amendment, but a supplemental reissue oath or decl. is so treated Affidavit or Declaration of Prior Invention Purpose is to prove that applicant was the first inventor when faced with a reference dated earlier than the application filing date Constructive RTP - filing a US patent application Needed when any claim of an application or patent under reexam is rejected based on prior art before the date of invention Who may file? Inventor; Assignee (when affidavit from inventor cannot be produced); Owner of patent under reexam; and Party qualified when inventor is dead, insane, or refuses to sign What may be filed? Oath or declaration established invention of the subject matter; and If conception - applicant must SHOW (alleging is not enough) evidence of facts establishing diligence Geographical Limitations - prior invention may not be established under this section before Dec 8, 1993 in a NAFTA country or before Jan 1, 1996 in a WTO country. Swearing behind can not be used if: The rejection is based upon a US patent claiming same invention (interference); or Statutory bar (102(b)) Must be filed before final rejection; before appeal; after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195; under 129 Affidavits or Declarations Traversing Rejections Purpose is to demonstrate any fact to justify patentability; e.g., commercial success, unexpected results, the cited reference is the applicant's own work or was derived from applicant Needed when claims are rejected or objected to Objective evidence must be considered: comparative date; unexpected results; commercial success; long-felt but unsolved need; failure of others; skepticism of experts, etc. Opinion evidence is also entitled to be considered May not be submitted if the rejection is based on a US patent to others claiming same patentable invention (interference) Must be timely filed: before final rejection; before appeal; after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195; under 129 Attorney arguments cannot take the place of objective evidence Presumptions of validity must be rebutted by a preponderance of evidence Public Use Proceeding A public use proceeding determines whether an invention claimed in an application had been in public use or on sale over 1 year before filing of application. Trade Secret, Proprietary, and Protective Order Material Proprietary information can be submitted if it is believed to be material to patentability: If it is material, it will be made of record in app If it is NOT material, it will be resealed and retained in case applicant files a petition to expunge Will not be made available to public until issuance of the patent Info submitted in reissue or reexams will be sealed. If important to reasonable examiner, it will become permanent part of app; if not, it will be resealed pending possible petition to expunge Info that is only favorable to patentability should not be submitted Petition to expunge information - must have fee available for: Information properly submitted that was not found to be material; Info unintentionally submitted in application; Info submitted in incorrect application; Cannot be used for info forming part of the original disclosure, however, applicant can try to petition for a waiver to get originally filed material expunged Examination Procedures: 700-706 The basics of the Examination Process: Examiner will review the file to make sure all the necessary elements (oath, spec, claims, drawings, etc.) are present. The claim then gets put on a storage rack waiting for the first Office action. When the examination begins, the examiner (1) reads the spec and claims, and then (2) searches prior art. Requests for Info (704.10-12; 37 CFR 1.105 in Charts): When the examiner needs more information needs more information that is reasonably necessary to conduct the examination, he may request the info from any applicant or assignee of the patent app. The examiner may be allowed to compel the disclosure of information if it is reasonably necessary This information does not have to be the same type of info that is already required to be disclosed in an IDS. The burden of production for a request is finding ifno that isreasonably and readily available, which is a much lower burden than required under 37 CFR 1.56(c) disclosure statements. The examiner may require any info reasonably necessary for: pending apps, abandoned apps, apps entering the National stage under 35 U.S.C. 371, in a patent, or in a reexamination (basically in any situation where an examiner needs info). The requests for information are made at the examiner's discretion. Replying to the Request: Making the Reply: The applicant may reply to the request with a complete reply (704.12) that gives all the information needed for each enumerated request. Requesting an extension: The initial time period for reply is set for a shortened statutory time period of 2 months, with the 37 CFR 1.136(a) option to extend by an additional 4 months. Petitioning that the request is unfair: The applicant my petition under 37 CFR 1.181 that a request for information is unfair, but the petition is not a response, and the time period keeps on going while the petition is being considered. Rejecting Claims (706): The main sequence for how claims are treated by the USPTO is this: 1. examine patent, claims, search prior art -> 2. If rejecting a claim, issue first rejection -> 3. Applicant may appeal under 37 CFR 1.111, may have amendments (but no new matter!) to back the appeal -> 4. If not accepted, a second rejection (that is usually a final rejection) is issued -> 5. If there is a final rejection, then the applicant has 1 more chance under the (narrower) 37 CFR 1.116 to appeal the final rejection. 2 Main forms of Rejection: Assuming a claim is actually properly made and supported by the patent app, the claim will usually only be rejected for 2 reasons: 1. Prior Art: Under 35 U.S.C. 102 if there is even one single reference that establishes that there is valid prior art to a claim, then the claim may be rejected. Prior art might include: already granted patents or published patent apps (either in the U.S. or abroad), publications describing the invention (usually in English), sale of the invention (even if the applicant is selling the invention himself, if he waits > 12 months he cannot patent it). 2. Obviousness: Under 35 U.S.C. 103, this is trickier, while there is not one single source showing the invention, many sources that each show parts of the claim when put together would be obvious to someone skilled in the art. So if the claim is for already-existing components A+B+C, if the combination of A+B+C would be obvious to a normal professional skilled in the art, then the claim fails on obviousness. Prior Art: WHAT IS THE EFFECTIVE FILING DATE (VERY IMPORTANT) A. If applicant is filing a continuation/divisional of one or more U.S. or international apps, (and if the apps are valid on their own for having filing dates under 35 U.S.C. 120 for U.S. or 35 U.S.C. 365 for IA) then the effective filing date is: the earliest filing date in the line of continuation or divisional apps. (Remember that these apps are not allowed to have any new matter in them) B. If the app is a CIP of a proper U.S. app or IA, any claims in the new app that are not supported by the parent app (new matter) will get the filing date of the new application (new matter, new filing date). However, other claims that are fully supported by the parent apps (not new material) are still given the effective filing date of the earlier parent application. C. If the applicant is claiming foreign priority (35 U.S.C. 119(a)-(d); 35 U.S.C. 365(a), (b)) then the effective filing date is still the date of the U.S. application (unless also claiming a U.S. patent seen above). Remember: foreign priority dates are not the same as claiming a benefit, and have fewer privileges. D. (Provisional apps) If the app is claiming priority of a 35 U

MPEP 800 - Restriction and Double Patenting

Restriction Restriction is the practice of requiring an election between distinct inventions. (Only one invention is allowed per patent.) Election of species - The inventor must elect between two or more patentably distinct forms of a generic invention claimed in same application. (Again, only one invention is allowed per patent.) For the election of species requirement, examiner must show 1) the generic claim embraces patentably distinct species; or 2) those species exceed a reasonable number. Restriction Practice Features - Restriction practice is always discretionary with the examiner. Lack of restriction is not a defect in a patent. No shifts are allowed from elected to non-elected subject matter; the following are not considered shifts: 1) where a process is rejected as obvious, the only invention being in the product made, presenting claims to the product is not a shift, 2) if a product is elected, there is no shift where the examiner holds the invention to be in the process, or 3) if a genus is allowed, an applicant may prosecute a reasonable number of additional species thereunder and it's not a shift. RCE can't overcome a restriction requirement. Criteria for Restriction - The examiner must show the application claims independent or distinct inventions and examining all claimed inventions in a single application would be a serious burden. A restriction may be required in a divisional application, even though inventions were grouped together in a requirement in a parent application. Restriction Procedure - Restriction is usually done before first search. The examiner gives reasons for restriction (can be by phone). The applicant has one month to respond (extendable for up to 5 months). The applicant must elect an invention for examination, with or without traverse. If election is without traverse, no right to petition later on. The applicant must point out reasons why examiner erred. If no traversal, examiner withdraws non-elected claims from consideration - same result if traversal is improper. Only claims elected are examined. If traversal is proper, examiner will either withdraw the requirement or make it final. Applicant disagrees but requirement is made final - The applicant may petition and must have: traversed the original requirement indicated why examiner was wrong file petition (no fee) within one month after all elected claims are allowed or no later than filing a notice of appeal form rejected claims (no extension of time) Applicant agrees with requirement - File a divisional application to the non-elected inventions. The parent case is not prior art against a co-pending divisional, if scope is similar. Adding claims after election - If original claims relate only to one invention (no election necessary) and new claims to a patentably distinct invention are added after the Office Action, the new claims will be deemed withdrawn (constructive election). After elected claims are allowed - If applicant traversed, examiner will give one month (no extension of time) to cancel non-elected claims or file a petition to director. If applicant did not traverse, examiner can cancel the non-elected claims without notice and applicant will receive a notice of allowance. Rejoinder - MPEP 821.04 - "The propriety of a restriction requirement should be reconsidered when all the claims directed to the elected invention are in condition for allowance, and the nonelected invention(s) should be considered for rejoinder. Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits." Product and Process claims in same application, product claims elected - if the product claims are elected and one or more are subsequently allowed, withdrawn process claims will be rejoined. Product claims only - if the original application discloses the product and process for making or using the product, but only claims the product, and a claim is found allowable, the applicant may present claims directed to the process via amendment. Product and Process claims in separate applications (not as a result of restriction), no rejoinder - the second application may be rejected under obvious type double patenting. Improper Restrictions - a single claim (including Markush and design) claims clearly unpatentable over each other claims differing only in form or scope means plus function apparatus claim and a method claim using same language without "means for" Types of Related Inventions (for determining if restriction is proper) For combination/sub-combination claims, restriction is not appropriate when the invention resides in the sub-combination. This requires both two way distinctness and reasons for insisting on restriction. The inventions are distinct only if it can be shown that the claimed combination: 1) does not require the particulars of the sub-combination for patentability; and 2) the sub-combination has utility either by itself or in other and different combinations. A product and process of making the product - can be distinct inventions if either: 1) the process as claimed is not an obvious process of making the product and can be used to make other products; or 2) the product as claimed can be made by another, different process. A product and process using the product - can be distinct if either: 1) the process of using as claimed can be practiced with a different product; or 2) the product as claimed can be used in a materially different process. Intermediate/Final Product Restrictions - intermediate and final products are clearly not dependent, so to make a restriction, distinctness must be shown. Distinctness can be shown if the intermediate product is useful other than to make the final product. Double Patenting Double patenting applies to: 1) same inventors, and 2) common owner/assignee, even if different inventors. If there is no common ownership, terminal disclaimer will not apply and 2nd application will not be allowed to issue. Double patenting prevents the same inventor or owner form obtaining a second patent on the same invention or an obvious variant thereof. Double patenting only concerns cases of two or more patents or applications with common inventors or owners. Double patenting issues can arise between two or more applications, an application and a patent, or in reexam or international application if US is involved. Provisional double patenting rejections - Provisional double patenting rejections is proper if the first filed application has not yet issued as a patent at the time the rejection of claims in the second application occurs. Types of double patenting - 1) Statutory (Same Invention-Type) Double Patenting - inventor is allowed only a single patent on an invention: same inventor or owner at least one application must be involved identical subject matter analysis is claim by claim Solutions - 1) cancel offending claims or 2) amend claims 2) Non-Statutory (Obvious-Type) Double Patenting - designed to prevent improper time extensions by patenting something that is not patently distinct from the parent. same inventor or owner at least one app must be involved "does any claim in the application define an invention that is merely an obvious variant of an invention claimed in the patent?" "was applicant prevented from presenting the same claims in the issued patent?" Tests - One Way Obviousness - if the invention described in the applicant's claim is an obvious variant of the invention in the claim of the patent: There is enough evidence for an obvious type double patenting rejection if: the application (in question) is the later filed application or both applications were filed on same day; if the application (in question) is the earlier filed application, a one way obvious type double patenting is still proper UNLESS: 1) administrative delay on part of the PTO caused a delay in prosecution of the earlier filed app; and 2) the applicant could not have filed the conflicting claims in a single application. Two Way Obviousness - if applicant could not have filed the claims at issue in a single application and there is administrative delay, and the application on which the patent was granted is the later filed application, then a two-way obviousness determination is necessary for rejection. (The claim in the 2nd application can only be rejected for obvious type double patenting if it is an obvious variant of the claim in the first patent and if the claim in the first patent would be an obvious variant of the claim in the second patent.) Solutions - try to overcome by arguing patentable distinctness; or file a terminal disclaimer in the later application: disclaim entire terminal term of all claims in the second patent beyond normal expiration of first cannot disclaim terminal term of specific claims must include statement that common ownership will be maintained fee terminal disclaimer will not work for same type double patenting no term extension for later patent past date of TD not an admission of the correctness of the rejection put all claims into one app if possible Domination Distinguished - a broad claim in one patent or application that completely encompasses a narrower claim in another patent or application does not imply double patenting. Double Patenting and Restriction - no double patenting rejection may be made in a divisional application over a parent patent (or application) where the examiner imposed a restriction and scope is same. This prohibition is not available if: applicant voluntarily files 2 or more cases without an examiner imposed restriction requirement; claims of 2nd are drawn to the same invention as 1st; restriction requirement was only made in a international application before it entered the national stage in the US; or the requirement for restriction is withdrawn before the patent issues. Double Patenting between utility patents and design/plant patents - allowed where appropriate; usually a two way analysis. — MPEP 800 (by section) — Restrictions on (normal) 35 U.S.C. 111(a) apps; Double Patenting! Jumping around: (801-804.03) Restriction: In some cases, an examiner will find that a single application actually disclosing two or more distinct (but probably still related) inventions. At this point, the examiner will place a restriction on the app, and the applicant will have to elect one of the inventions to actually pursue in the app. Basic Rule: Under 37 CFR 1.141(a) there cannot be multiple inventions claimed in one app, unless the inventions are all species of one genus that the app is properly claiming. After the restriction/election, and before the original app actually issues as a patent, the applicant can still file a divisional app (35 U.S.C. 121) on the remaining inventions. There is a specific rule that when the divisional is properly filed, the original app cannot be used as a reference against the new app for either 102 or 103 rejection purposes. 802.01: When are inventions actually independent & distinct: (See 806.05 in next lesson for more details) Independent: means there is no disclosed relationship between 2 inventions (they are unconnected in design, operation, and effect). However, 2 inventions are related (not independent) if they are actually connected by at least: design, operation, or effect. If inventions are related they are also dependent. 802.02: Restriction: Just means the applicant must elect one invention. 803: When restriction is proper: If there are inventions such that: (1) the material could support > 1 app; AND (2) the inventions are either independent or distinct, then the examiner may restrict the app to elect just one invention. Also: There must be a serious burden on the examiner if the restriction is not made (a prima facie showing can be made by explaining that the inventions are in different fields, would require additional searches of prior art) 803.02: Markush Claims: (when claiming a bunch of permutations is allowed in one app): Review: Remember a Markush claim is of the form: "X selected from the group consisting of A, B, and C" (where A, B, C are usually physical or chemical classes, or some class recognized in the art) All of the permutations in the group could create independent inventions sometimes. In these cases where a Markush group contains multiple independent inventions, the examiner may require the applicant to elect one species to pursue. BUT: The rest of the Markush group will still be examined to see if the group as a whole may still be patented. (Basically, you need to elect a species, but the overall group is still examined against prior art). Here's what happens: If the overall Markush claim is rejected due to prior art (anticipation or obviousness), the originally elected species might (if it is not covered by prior art) still get a narrower patent just for that species. Examples: Compound X-R where R is in the group: A, B, C, D, and E. The applicant would elect XA, XB, XC, XD, or XE, but the group would still be compared to the prior art. (This is a provisional election for purposes of doing prior art searches, the applicant is still trying to get the whole Markush group in the claim) If there is prior art, on the elected species, the claim on it gets a normal prior art rejection, and the rest of the unelected species get withdrawn from consideration. (warning) However: If the actually elected species passes the prior art tests, the search of the group will expand to include the other species that were originally non-elected. If one of the non-elected species has prior art then the Markush claim is rejected, but the search will not be further extended. Basically: To make searches of groups easier, the applicant needs to put forth a candidate species to run prior art searches on, and if the candidate passes, then the searches will get broader for the rest of the group. 804: Double Patenting (How you English say: One More Time!): Once the applicant has a patent on an invention, he can't patent the same thing for another go-around. The reason is of course to extend the time period of patent protection on the same invention, and the law does not allow this. Threshold Criteria for double patents: There must be 2 or more patents or apps involved; and At least 1 common inventor or they must be commonly assigned/owned/be part of the same JRA. Two types of Double Patenting Rejections: Statutory: 35 U.S.C. 101 says "may obtain a patent" (in the singular, 1 patent for 1 invention); or Ask the question: "Is the same invention being patented twice?" If the exact same invention is not being patented twice, then check for the Non-Statutory grounds. Non-Statutory: These are common law rules that are designed to prevent claims on a new invention from effectively extending the lifespan on an older patent since the new claims are not really distinct from the old claims. (usually more subtle than an exact duplication of an older invention). One type of non-statutory double patent rejection is the "obviousness type": "Is the claim from a new patent an obvious variation on the claim from a previous patent?" If so, the new claim should be rejected or at least have a terminal disclaimer to prevent double patenting. 804.01: Double Patenting Rejections for Divisionals (35 U.S.C. 121) are prohibited: The nature of divisionals is that the inventions were all part of the same app. As long as the applicant files for the divisional before the patent issues on the original app, the divisional will have the same effective date as the original app. Since the purpose of double patent rejections is to prevent undue extension of the patent protection time period, there is no need to issue double patent rejections on divisionals since even if they claim the same matter, they don't extend the period on which the matter is covered under the patent. 804.02: How to Avoid the double patent rejection: Statutory rejections: the second app's claims should be amended so that they are no longer coextensive in scope. Non-statutory rejections: By filing a terminal disclaimer to shorten the lifespan of the new app to match that of the old patent. A terminal disclaimer needs to contain statement by the owner (either all the owners or at least 1) that the owner is disclaiming part of the term of the patent. (See 37 CFR 1.321) 804.03: Commonly owned Patents or JRAs: These are also subject to double patent rejections just as if there was a single inventor. Distinct inventions, and how Restrictions are implemented (806.04-821.04) 806: Distinct Inventions: One invention may have multiple species, as long as there are a reasonable number, or if the species are part of the same genus being claimed by the invention. However, where species are not connected by: design, operation, or effect, then the species are separate inventions even if they are under the same genus. Generic claims: In order to make a generic claim, make sure of 2 things: 1. The generic claim should require no additional limitations that are not present in species of the genus given as examples in the claim. 2. Each species in the genus needs to inherit all of the limitations of the overall genus. Think of it polymorphically: the genus must not have extra limitations & each species needs every limitation (species are a proper superset of the genus). Mutually Exclusivity: When 2 or more species are mutually exclusive of each other, the restriction requirement to elect one may come in. This occurs when 1 claims has limitations that only apply to 1 species, while another claim has limitations that only apply to a 2nd species. The exclusive nature of the limitations makes the claims distinct. Going back and filing a generic claim after a species is patented: Remember, once even 1 species in a genus is patented, then entire genus can no longer be claimed in a patent. This may occur when the common owner (or JRA parties) of an earlier patent that claimed a species try to come back and claim the entire genus of that species. The broader claim is an obviousness-type double patent since the earlier species is already patented. The claim will be rejected, and the applicant may get around this rejection by filing a terminal disclaimer. Combinations & Subcombinations: These become distinct if: (a) it is shown that the invention does not actually need a particular combination as claimed in order to still be a valid invention; and (b) the subcombination has utility on its own or as part of a different combination. Basically: if a combination/subcombination is not really necessary to the invention, and it can do something useful on its own, it becomes distinct. Differentiating between an apparatus, and the process to use the apparatus: If the process to use an apparatus can also be done by other means using not involving the apparatus then they are distinct; OR If the apparatus can also be used to practice a different type of process, they are distinct. (Apparatus & process must be exclusively tied together to not be distinct). Differentiating between the end-product of a process, and the process itself: If the process claimed is not an obvious process to make the end-product, or can make other products they are distinct; or: If the product can be made by other processes then the claims are distinct. Apparatus & Product made by the apparatus (similar to above): If the apparatus can make another type of product they are distinct; or If the product can be made by any materially different type of apparatus. When a claim is for the process of making the product, the product itself, and the process of using the product: 37 CFR 1.141(b): The applicant may elect either: the process + product (a product-by-process claim); OR: the process of using the product (as a process claim). 808: Remember distinct inventions are those that are not linked by design, operation, or effect. 809: Claims that link Distinct Inventions together: These claims are called linking claims since they link 2 inventions that are otherwise distinct. If allowable, these claims can actually prevent a restriction on the application: Genus claims that link multiple species together Subcombination claims that link many combinations together. (establishing a common nexus via the claims) More on the process of restrictions & elections: A restriction requirement is not usually an action on the merits, so the time period is an SSP of only 1 month (30 day minimum). The restriction requirement is usually made before an action on the merits, but the request can come at any time before final action. The examiner normally phones the applicant or atty to request an oral election of claims. If the app/atty refuses to elect claims, the examiner will mail the restriction requirement out. The examiner has the burden to explain exactly how the inventions in the app are different from each other. This makes it clear how the app could be broken up under 35 U.S.C. 121 divisional apps. The reply can either elect an invention to continue in the app, or it can attempt to traverse the requirement. The traverse just means the applicant makes a statement explaining how the restriction requirement is in error and that the inventions are not distinct. Note: even when the requirement is traversed the applicant still mus

MPEP 600 - Parts, Form and Content

What actually goes into a Patent App. General Complete Applications - If application doesn't meet requirements, applicant can petition to have a filing date assigned. If application meets these minimum requirements, but is incomplete (missing oath or fee), the applicant will be sent a notice to file missing parts (usually has 2 months from filing date). There is no requirement that the inventors be named. PTO requests a "numeric identifier" in cases where inventors are not known. Non-provisional (regular) - specification (at least one claim); drawings where required; oath/declaration; filing fee Provisional - cover sheet; specification (need not include any claims); drawings where required; filing fee Filing Date Requirements - Non provisional (regular) - specification, drawings Provisional - specification, drawings CPA - separate request for CPA; should file response to last office action Non-Provisional Application Requirements - A non-provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. A complete non-provisional utility patent application should contain the elements listed below, arranged in the order shown. 1) Utility Patent Application Transmittal Form or Transmittal Letter 2) Fee Transmittal Form and Appropriate Fees Basic filing fee includes 3 independent claims and 20 total claim Claims fees are not refundable Non-elected claims in a restriction requirement must be cancelled or paid for Multiple dependent claims count as at least two D claims; extra fee applies Improper MDC count as a single dependent claim Fees Paid by Mistake - may be refunded. Must be requested within 2 years. Small entity requests must be made within 3 months of the payment of fee. PTO will not refund $25 or less w/o request. 3) Application Data Sheet (see 37 CFR § 1.76) 4) Specification (with at least one claim) Title (500 characters max) Abstract (separate sheet - 150 word max) Formulae and tables may be in the specification. Drawings and flow diagrams must be on separate sheets. Real examples should be described as "was" done. Prophetic examples should be described as "is" done. 5) Drawings (when necessary) Application may be filed with informal drawings Formal drawings are normally required within 3 months after mailing of Notice of Allowance (not extendable) Must show every feature specified in the claims 6) Executed Oath or Declaration 7) Nucleotide and/or Amino Acid Sequence Listing (when necessary) Incorporation by Reference - Mere mention of another document without language of incorporation is not sufficient to incorporate the doc by reference. Essential material - may be incorporated by reference to a US patent, US application publication, pending US application or abandoned application less than 20 years old. Nonessential material - may be incorporated by reference to a non-US patent or to a published document (no hyperlinks). Correspondence Address - PTO requires one correspondence address. To make a change: 1) Before a declaration of any inventors has been filed, the correspondence address may be changed by a registered attorney named in transmittal letter, or ANY of the inventors. If assignee or party who will be assignee filed the application, they may change the correspondence address; 2) After a declaration, the 'ca' may be changed only by a registered attorney of record, an assignee, or ALL of inventors (unless there's an assignment of entire interest and that assignee has been made of record); or 3) If the attorney changes his address, he must file a separate paper in each application, unless the 'ca' is to a customer number. English Translation - A non-provisional utility patent application must be in the English language or be accompanied by a translation in the English language, a statement that the translation is accurate and a fee set forth in 37 CFR §1.17(i). Format - All papers which are to become part of the permanent records of the USPTO must be typewritten or produced by a mechanical (or computer) printer. The text must be in permanent black ink or its equivalent; on a single side of the paper; in portrait orientation; on white paper that is all of the same size, flexible, strong, smooth, nonshiny, durable, and without holes. The paper size must be either: 21.6 cm. by 27.9 cm. (81/2 by 11 inches), or 21.0 cm. by 29.7 cm. (DIN size A4). There must be a left margin of at least 2.5 cm. (1 inch) and top, right, and bottom margins of at least 2.0 cm. (3/4 inch). Drawing page requirements are discussed separately below. Basic Recommended Layout of a Patent Application: (601; 35 U.s.C. 111; 37 CFR 1.51 Usually Non-provisional) Title of the Invention (See 606) Cross-ref to related apps (See 201.11) Statement regarding federally sponsored research or development (see 310) Names of parties to a joint research agreement (37 CFR 1.71(g)) Reference to a Sequence Listing, a table, or a computer listing appendic submitted on CD and an incorporation by reference of material on the CD. For apps prior to March 1, 2001, see microfiche instead of CD. Background of the invention (608.01(c)) Field of the invention Description of related art including information disclosed under 37 CFR 1.97-98 Brief summary of Invention (608.01(d) Brief description of the several views of the drawing (608.01(f)) Detailed description of invention (608.01(g)) CLAIMS (starting on a separate sheet) (608.01(i)-(p)) Abstract of the disclosure (starting on a separate sheet) (608.01(b)) Sequence Listing if on paper (37 CFR 1.821-825). Preliminay Amendments: Sometimes the applicant wants to change the specifications in the app itself. This can be done by (1) actually rewriting the specs, or (2) by filing a preliminary amendment with new material and changes. The preliminary amendment is allowed to be part of the app from the day of filing. If it has new subject matter not in the rest of the app, it will have to have supplemental oaths for the new subject matter. Converting a non-provisional app to a Provisional app: The main reason to do this is when the USPTO says the non-provisional app does not make a claim, so the applicant may convert the app to a provisional app (that does not need a claim). The provisional app will still have the original filing date, and then a new non-provisional app that claims the benefit of the provisional app will still be able to go through with proper claims. Non-Provisional (regular) to Provisional - Must be within 12 months from application filing date Prior to abandonment or payment of issue fee Prior to request for statutory invention registration No refund of fees. To convert, you need: a request for conversion and fee Provisional Apps: (37 CFR 1.53(c)) Requires no claims. Requires a cover sheet and the appropriate basic filing fee. If cover sheet & filing fee are not submitted with the app, there is a 2 month (nonstatutory & extendable) time period to submit them along with a surcharge. Converting from provisional to non-provisional: IN GENERAL DO NOT DO THIS! It is better instead to file a new non-provisional app and then just claim the benefit of the provisional app. This allows for: 1. The time span of the patent to start from the filing date of the later non-provisional app (extending the life of the patent); 2. It also allows the earlier provisional filing date to be used in avoiding prior art. But, if you do want to convert: Filing a request for conversion, a processing fee, basic filing fees for a non-provisional app, and if needed the oath for a non-provisional app. The request must come before the earliest of: 1. abandonment of the provisional app; 2. expiration of 12 months, whichever is earlier. Provisional to Non-Provisional (regular) (as opposed to claiming priority) - Must be filed within 1 year for filing date and prior to abandonment Fee Application filing fee (may be filed after conversion date) Amendment including at least one claim (unless already a claim) Oath or declaration (may be filed after conversion date) Omissions and Corrections: The app may have missing pages but still have enough information to create a filing date. If so, the OIPE will notify the applicant of the filing date, but that there are pages missing. All pages must be numbered to make it easier to determine if pages are missing. Options for omitted material: 1. If the pages were sent but lost, the applicant can establish that the USPTO actually received the material. Requires a petition, along with fees and evidence (like the post-card receipts used to show what was sent to the USPTO) showing that the USPTO got the material. If this is successful, all the material will be under the original filing date. 2. If the pages were not sent originally, then the applicant may simply submit the missing pages, and then the new application filing date will be the date for the new material was submitted instead. Later filing date, but if the material was not sent originally it cannot be avoided. If there are claims that are not supported by written material in the specification, then they are not patentable (35 U.S.C. 112) If the app was filed without filing fees, then this option can be more cost effective since it is effectively a brand new app. The original can be abandoned, and fees only need to be paid on the new app. Back to claiming benefits & omission: Apps filed after Sep. 21, 2004 containing a claim for priority under 37 CFR 1.55 for a foreign app, or even 37 CFR 1.78 for benefit of a prior-filed provisional, nonprovisional, or international app that was already filed on the date of the original filing: Back to 37 CFR 1.37(a): When the material that should have been in the later app claiming priority/benefit of one of those earlier apps was inadvertantly omitted (and if the material is completely contained in the prior apps), the applicant may amend the missing material to the new app. There is another possibility for missing material: The applicant may simply decide not to submit the new material since it is not necessary for supporting the claims. However, the applicant still has to file a preliminary amendment to renumber the pages to correct the appearance of missing material. This should be done before the first Office Action on the app. This avoids the late filing date of #2 above since no new material is submitted. When Claims & Drawings are Missing, Application Data Sheets, and Supplemental Oaths (601-603) Non-Provisional apps & Claims: Each NPA (Non-provisional App, new abbrev.) must state at least one claim by statutory requirements (35 U.S.C. 111(a)), no claim, no filing date. The USPTO will send a "notice of incomplete application" to the applicant indicating that there is no filing date because there is no claim. The final filing date will be the date that the USPTO gets a claim on the app, and there is need for a supplemental oath/declaration for the claim. Preliminary amendments: If there is a preliminary amendment that wipes out all the claims and adds no new claims on an app, the USPTO will not act on the amendment and will still award a filing date. Converting to a Provisional App: For NPAs after 19950608 there is an alternative to file a petitition under 37 CFR 1.53(c)(2) to turn the NPA into a PA (PAs do not need claims). If successful this will give the new PA the benefit of the earlier filing date. However, it must come before either the app is abandoned, or 12 months from the original filing (remember a PA only lasts for 12 months). 601.01(f) Apps without Drawings: (35 U.S.C. 113) If there is an app without necessary drawings, then the USPTO will not give a filing date. The specification is examined to see if a drawing is necessary (usually it is, but for some patents there is no need for a drawing). USPTO practice: If an app has at least one process or method claim, then the USPTO will assume that there is no requirement for a drawing in order to receive a filing date (note however that this does not mean a drawing might not be necessary in some circumstances, also some claims the require drawings might get rejected, this is just a minimum standard). There are some types of patent for which drawings are not generally needed: Coated articles or products: If the invention is simply a coating material (like paint) to be used on other products. Articles made out of a particular material or composition: When the material used in making articles is the subject of the app, no need to have drawings unless significant details of the structure or arangement are involved in those articles. Laminated structures (similar to coated articles) Articles, apparatus, or systems where the sole distinguishing feature is presence of a particular material: e.g. a hydraulic system where the only invention claimed is a new type of hydrolic fluid sutures where the sutures themselves are not novel, but the material they are made out of is. For missing drawings, the USPTO sends a "notice of incomplete application" to the applicant. What can the applicant do at this point? 1. File a petition under 37 CFR 1.53(e) (paying fee in 37 CFR 1.17(f) making these assertions: The drawing actually was submitted (lost drawings) There must be sufficient evidence that the drawing was submitted, like a date-stamped postcard receipt (503) 2. OR: Petition that drawing is not necessary under 35 U.S.C. 113 for the filing date (stating that there is a claim that does not need a drawing and that the USPTO was wrong in not granting a filing date. 4. OR: Submit the missing drawings to the USPTO, accepting the later filing date of when the USPTO receives the drawings. 5. The 27 CFR 1.57(a) route: After 20040921: If the drawings were inadvertantly missing from the app, and were also completely contained within a previous app that the current app is claiming the benefit of, then the applicant can file a petition (with 37 CFR 1.17(f) fee) and have the drawings amended to the new app. This will allow for the original filing date. 601.01(g) What happens when there is enough for a filing date, but drawings are still missing? This is when a drawing is missing, or the written specification describes or references a drawing that does not exist in the app. The USPTO will send a "Notice of Omitted Items" which means there is a filing date, but the applicant has 2 months to get the drawing submitted (a nonstatutory and extendable deadline). At this point, the procedure is the same as for missing pages out of a specification: 1. Within the 2 month time frame, applicant may file petition under 37 CFR 1.53(e) (with fee) that the applicant actually did submit the drawing. There must be proof of this (like postcard receipts) to show it was deposited (37 CFR 1.181(f)). 2. Applicant may file the missing drawings and accept a later filing date (filing has to be within the 2 month deadline). There needs to be a separate oath referring to the new drawings as well (37 CFR 1.63/1.64). 3. Use the old 37 CFR 1.57(a) route for apps after 20040921 (see above). 4. Finally: Do nothing, the applicant does not have to try to get the missing drawings included (good if the applicant does not need them and wants to keep the original filing date). However, the applicant should still amend the app under 37 CFR 1.121(d) to remove references to the missing drawings and renumber pages/drawings. This should be submitted as a preliminary amendment before the first official Office action. 601.03 Changing Correspondence Address: (see 37 CFR 1.33(a) in Charts) The applicant should (preferably) put correspondence address on the ADS (Application Data Sheet) Alternatively, the address can be in the app itself as long as it is clearly identified. IF there is a discrepancy in addresses this is the order the USPTO uses to find an address: 1. Address on the ADS 2. address in application transmittal 3. oath or declaration (unless power of atty doc is more current) 4. power of atty. 37 CFR 1.33(a) also requires the daytime phone of the party with whom correspondence is directed. Before the oath/declaration is made: Only the party who filed the app can change the correspondance address AFTER the oath/declaration: registered atty or agent of record an assignee (provided under 37 CFR 3.73(b)) all of the applicants under 37 CFR 1.41(b), unless the entire interest has been assigned to an assignee who has taken action under 37 CFR 3.71. 601.05 Application Data Sheets: (37 CFR 1.76 covers ADS, see Charts) The ADS contains most of the important metadata about an app (who the inventors are, correspondence addrs, phone numbers, customer numbers, etc.) It organizes all this info in one place. The ADS can be updated with a supplemental ADS in case there is a need for a correction. The supplemental ADS only has to have corrections made to the original. Note: the supplemental ADS cannot fix the following: inventorship changes (those need to be in re-filed oaths/declarations) correspondence changes citizenship changes. The ADS is not required but is strongly recommended Order of Precedence: When there is conflicting info between oath/declaration & the ADS who wins: If everthing is submitted at the same time: ADS governs Otherwise: the latest submitted information will govern. Remember though: The official names and citizenships of inventors go into the oaths, and they must be corrected via supplemental oaths/declarations. Even though oaths/declarations are the official records, the USPTO will use info on the ADS, so the applicant should file a supplemental ADS as well. The 7 Headers of an ADS: 1. applicant information (the oath/declaration still needs names & nationalities of inventors even if listed here) 2. correspondence info 3. app information (like app number if one has been issued, date information, etc.) 4. representative info (like names, patent office #'s of lawyers or agents) 5. Domestic priority info (claiming benefit/priority of previous US patents) 6. Foreign priority info (same thing but for foreign patents) 7. assignee information. More on Application Data Sheets MPEP 608.01(a) - If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 even if this information is provided in the application data sheet **. If there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors. (See 37 CFR 1.76(d) and MPEP § 601.05.) CFR 1.76 encourages applicants to submit an application data sheet containing bibliographic information: applicant info, correspondence info, application info, representative info, domestic priority info, foreign priority info, and assignee info. A supplemental data sheet may be submitted to correct info previously supplied. Only to be used to correct new info, not inventorship, citizenship, or correspondence address. Inconsistencies between Oath/Declaration and Application Data Sheet - The oath/declaration always governs names and citizenship The application data sheet governs when submitted simultaneously with the oath/declaration The latest filed document is controlling Test takers report the following subject matter on the exam. Know that in case of conflicting information between Application Data Sheet and Oath/Declaration the Application Data Sheet wins, except for naming and citizenship of the inventors, in which case the Oath/Declaration wins. This is true if ADS and oath filed at same time — otherwise the later filed document controls whether ADS or oath, except for naming and citizenship of inventors — in which case oath controls MPEP 601.05(d). 602 The Original Oath/Declaration: [37 CFR 1.63, 1.68 (see Charts)] General Requirements of Oath/Declaration - Declaration must be in permanent ink Must identify each inventor (first and last names), as well as their countries of citizenship Statement that inventors signing 'believe to be first...' Identify application State that oath giver understands contents and duty to disclose Unless the following is provided in application data sheet, oath must provide: 1) inventors' mailing addresses and residence if different, and 2) application number, country, day, month, year of any foreign application to which priority is claimed. If the declaration is filed with the application, it must include one of: 1) name of inventor(s), and reference to an attached spec which is both attached to the oath or declaration at time of execution and submitted with o/d on filing; 2) name of inventor(s); and attorney docket number which was on spec as filed; or name of inventor(s); and title of invention which was on the spec as filed. If the declaration if filed after the specification, it must include one of: 1) application number; serial number and filing date; 2) attorney docket number which was on the specification as filed; 3) title of invention and reference to an attached specification which is both attached to oath/declaration at time of execution and submitted with oath/declaration; or 4) title of invention and with a cover letter id-ing the app for which it was intended by either application number or serial and filing date. If a

MPEP 2600 - Inter Partes Reexamination

What is Different from Ex Parte Reexamination? applicable only to patents issuing from apps filed on or after 11/29/99 if request is granted, first OA is mailed with the order granting request if request is denied, partial refund no interviews are permitted during inter partes reexam 3rd party requestor may respond to patent owner's reply to each office action 3rd party requestor may appeal to the Board or participate in patent owner's appeal to Board a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim is estopped from later Court action on the basis of issues raised or issues that could have been raised in the inter partes reexam Estoppel: Who May Not Request Inter Partes Reexamination? the patent owner a party who previously lost in a court action on a validity challenge to the patent on the basis of issues raised or issues that could have been raised a party who has previously requested an inter partes reexam which has been granted and is still pending a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim was made on the basis of issues raised (or could have been) on previous request Request for, and Service of, Inter Partes Reexamination - Essentially the same as ex parte reexam, except: includes rule 20c2 fee of $8,800 - no small entity discount; certification that R907 estoppel does not apply, and must identify the real party who is making request 3rd Party Requestor Participation in Inter Partes Reexamination - 3rd party requestor may file written comments, once, to patent owner's reply to each OA must be filed within 30 days of receiving service of patent owner's reply to OA no EOT written comment (50 max) must be limited to issues raised in OA & reply citations of additional prior art are limited to those necessary to respond to patent owner's reply and issues raised by examiner in office action Appeal in Inter Partes Reexamination - examiner will issue a notice of right to appeal which is a final action setting forth final grounds for rejection and/or patentability for each claim no amendments are allowed after the issuance of notice of right to appeal parties may then appeal within 1 month of date of notice of right to appeal parties may stipulate and request issuance of notice of right to appeal anytime after patent owner's reply to initial OA if no party appeals, reexam is terminated and inter partes reexam certificate will issue if a party appeals by filing notice of appeal, all other parties may file, within 14 days, a notice of cross appeal Nine-Step procedure (time limits are not extendable) appeal brief - due two months from notice of appeal respondent's brief - due one month from service of appeal brief examiner's answer: no new grounds for rejection (or reopen pros) rebuttal brief - due one month from examiner's answer request for oral hearing - due 2 months from examiner's answer oral argument - 20 mins for examiner and 30 mins for each party decision by board petition for rehearing due one month from initial decision appeal to federal circuit by patent owner Inter Partes Reexaminations in Conjunction with Other Proceedings - like ex parte reexam, patent owner must disclose any other proceedings to examiner Multiple Reexams: may be merged or one proceeding suspended until the other concludes; if inter partes merged with ex parte reexam, inter partes rules govern, but ex parte requestor get no additional rights, and one reexam certificate will issue Reexamination - Interference: Commissioner is empowered to suspend one proceeding until the other is concluded Reexamination - Reissue: may be merged or one proceeding suspended until the other concluded.; if merged with reissue, inter partes rules govern, but requestor can participate; identical papers filed and same claims must be pending in both files, and reissue patent also serves as the reexam certificate Reexamination - Litigation: Commissioner has discretion whether to suspend in view of litigation; patent owner may seek stay of court action until reexam is terminated

35 USC 103

"Obviousness" - Conditions for patentability; non-obvious subject matter 35 USC 103(a) "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made." Combining references - there must be some motivation to combine; the suggestion does not have to be explicit; the reason the reference suggests for combining can be different from the actual reason Invention as a whole must be considered; not an element by element analysis Objective Considerations - affidavits or declarations containing evidence of: commercial success, unexpected results, failure of others, long felt need, skepticism of experts, copying by others 102(e, f, g) cannot be used as a reference (New AIPA) for obviousness when the reference subject matter and the patent app subject matter were owned by the same person or assignable to the same entity at the time invention was made

MPEP 1700 - Miscellaneous

1700 What the Examiner is not allowed to do: Unless the examiner is in the process of actually examining an application (or taking part in an interference or other proceeding on a patent), he should not make any statement on the validity or patentability of claims in a granted patent, or in an app he is not actually examining. -> Validity/Invalidity is up to the courts to decide. (35 U.S.C. 282) 37 CFR 11.10 (who can practice as an agent for 3rd parties at the office; what are restrictions on what ex-employees can do): a. A practionter has to be registered under 37 CFR 11.6 or given limited recognition unde 37 CFR 11.9(a)/(b) (usually when one applicant is designated at a representative for the group). b. Post-employment for USPTO employees: Nobody in the patent examining core or elsewhere in the Office may practice unless he or she signs a written agreement: 1. not to represent knowingly or assist in any manner someone who is: Before the Office In connection with any particular patent or app In which the employee actually participated personally or substantially as an employee (no personal involvement) AND: To not do any representation within a 2 year window of leaving the USPTO if the patent involved was before the office or in any way involved in the Office within a period of 1 year prior to the employee's termination of employment. Document Disclosure Program Retained for 2 years by PTO unless a later application is filed that refers to it; $10 fee; No priority, not a provisional

35 U.S.C. 102(d)

35 U.S.C. 102(d) - A person shall be entitled to a patent unless (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States. To qualify as a reference under 35 USC 102(d), a foreign application that has matured into a foreign patent. Barred from obtaining a patent if (all are yes): 1) Filed more than one year (12 months) before the effective filing date of the US application; 2) Filed by the same applicant, or his legal assigns, as the US application; 3) Issued as a patent or inventor's certificate before the filing of an application in the US (the patent rights granted must be enforceable, but need not be published); and 4) Involves the same invention.

35 USC 102(e)

35 USC 102(e) - "A person shall be entitled to a patent unless (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the inven tion by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the inter national application designated the United States and was published under Article 21(2) of such treaty in the English language;" New AIPA: Disclosure in Earlier Filed Applications (effective November 29, 2000) - A person shall be entitled to an invention unless (e) the invention was described in (not necessarily claimed) 1) An application for a patent, published under §122(b), by another filed in the US before the invention by the applicant, except that the international application filed under the treaty ... shall have the effect under this subsection of a national application published ... only if the international application designating the US was published ... of such treaty in English; or 2) A patent granted on an application for patent by another filed in the US before the invention thereof by the applicant for patent, except that a patent shall not be deemed filed in the US for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a) US Patents can claim the benefit of an IA prior art date and have the IA filing date if: IA was filed on or after 11/29/00; the IA designated the US; and published in English US Application Publications - is prior art of the application's US effective filing date, which can include an IA filing date, if it meets above 3 conditions

35 USC 102(g)

35 USC 102(g) - Prior Invention "A person shall be entitled to a patent unless (g)(1)during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other." Prior Invention The first to reduce to practice (RTP) wins unless 2nd to RTP can prove earlier conception AND diligence from time prior to first's conception to subsequent RTP or filing Publications are not constructive RTP Rule 131 can be used to swear behind prior art

35 USC 112, 6th paragraph

35 USC 112, 6th paragraph - (Means Plus Function Claims) "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Means or Step Plus Function - Although the use of the term "means" or "means for" is often a clear indication that the means or step for function rules apply, the actual determination is base coin whether the element in the claim is set forth, at least in part, by the function that it performs rather than the specific structure, material or acts that perform the function. The examiner has the initial burden of finding a reference containing both the same function and same supporting structure, materials or acts as the applicant's claim.

35 USC 102(a)

35 USC. 102(a) - A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent. Note: 102(a) applies if the invention was known or used before the date of invention (not the filing date) by a 3rd party. Overseas Activities - activities in NAFTA countries (12/8/93) and WTO countries (1/1/96) may be introduced to prove earlier conception and RTP. Overcoming a 102(a) Rejection Prove an earlier date of invention (Rule 31) - 1) Swear behind a prior art reference; 2) Reduction to practice before the application filing date; or 3) Conception and diligence before the prior art reference until RTP Showing the references' disclosure was derived from applicant - use disclaiming affidavits ("an affidavit or declaration under 37 CFR 1.131 antedating the reference") Amend claims, arguing to examiner; of an earlier patent application [provisional, foreign (§119 is ok to establish earlier date of invention), divisional] - "a reply which perfects a claim of priority under 35 U.S.C. 119 (a)-(e) or 35 U.S.C. 120" Filing an application date sheet with specific reference to prior application

MPEP 100 - Secrecy, Access, National Security & Foreign Filing

Access Information on the Status of an Application - is only available to an inventor, attorney of record, assignee of record, or a person with written authority from previous; and includes only the following: · whether the application is pending, abandoned, or patented; · the application number and filing date; and · whether one or more applications claims the benefit of the filing date of the application in question, and, if there are such other applications, the application numbers, filing dates, and their status Power to Inspect Application - no one but the applicant, her legal representative, assignee, or attorney of record may have access to any pending application, except reissue applications, unless written authority is given from one of these parties or the Commissioner. Right of Public to Inspect (patent and application files) Issued Patents - after a patent has been issued, all patent documents and papers relating to the case in the patent file are available for inspection by the public; other information open to the public includes: reissue applications; papers relating to reexamination proceedings; and any interference files, as long as the interference has terminated. Pending Applications - Anyone can view the contents of the application without notice to the applicant, if: 1) the application has been published; 2) the Commissioner determines it is necessary for the proper conduct of PTO business; 3) the application falls in one of the categories (patent issued or a pending application which is incorporated by reference in a US patent); 4) written authority has been granted by the applicant, assignee, or attorney of record; or 5) the application is abandoned, unless 1) it is in the file jacket of a pending application under the CPA regulations, and 2) it is referred to in a US patent; or is referred to in a US app open to public inspection; or claims the benefit of the filing date of a US application open to public inspection; or the applicant has authorized the app to be open to public. Provisional applications - access will only be given to parties with written authority from a named inventor, the assignee, or the attorney. Reissues - all reissues filed after March 1, 1977 are inspectable by public. Reexams - All requests for reexams are available to public. Decisions of PTO - will be made public if: commissioner believes the decision has important precedent value, and none of the involved parties object within 2 months. Petition - any member of public may petition to access a pending or abandoned application. Secrecy, National Security and Foreign Filing Secrecy Order - prevents disclosure of the subject matter to anyone without the express written consent of the Commissioner. Remains in effect for one year and can be renewed. National Security - must always be filed in home country first Foreign Filing Licenses - there are two ways to get permission to file abroad: 1) file a petition for a foreign filing license; or 2) wait six months after filing an application. A retroactive license may be pursued if an unlicensed foreign filing has occurred through error and without deceptive intent. In order to obtain a retroactive license, the applicant must provide a list of countries the application has been filed. A foreign filing license may be revoked by the PTO, and foreign filings that occurred prior to the revocation need not be abandoned.

35 U.S.C. § 145

Appeal Option § 145. Civil action to obtain patent An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134 (a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.

MPEP 900 - Prior Art, Classification and Search

Commercial review courses seldom cover material in MPEP Chapter 900 rationalizing that historically, this material is not tested on the Patent Bar Exam. Recent test takers have noted that the following subject matter from Chapter 900 does appear on the Prometric Patent Bar exam: Overview How do examiners search for prior art? The examiner, upon understanding the invention disclosed and claimed in the application, searches the prior art which may be disclosed in patents and other published documents. Any such document used in the rejection of the claim is called a reference. [MPEP 904] In all Continuing Applications, the examiner should review the parent application and this fact should be made part of the record. A first search should be adequate enough not to require a second search for priori art. A second search may be necessitated by amendments of to check priori art cited in the first PTO action subsequent to the initial prior art search. In the first action on the merits of an application, the examiner shall make an initial endorsement, in black ink on the file wrapper, of the classes and subclasses of domestic and foreign patents, abstract collections, and publication in which the search for prior art was made. The examiner must also identify other information collected and sources in which the search for prior art was made, and also indicate the date(s) on which the search was conducted. General search guidelines Conducting a thorough search of the prior art requires three distinct steps by the examiner that are critical for a complete and thorough search: 1) identify the field of search, 2) selecting the proper tool(s) to perform the search (discretionary), and 3) determining the appropriate search strategy for each search tool selected (discretionary). Three Reference Sources Required - Determining the field of search the examiner must consider domestic patents (including patent application publications), foreign patent documents, and non-patent literature. Conducting searches at the USPTO Office - A test taker reported the following answers to a question on the Prometric Patent Bar: displaying a user pass in the TC search facility removing patent publications from their shoes re-shelving materials yourself or leave them for contract staff to handle 900: What are the sources that the Examiner will look at for Prior Art? (sort of an extension of material in 700): 1. Canceled matter in other patents: Once matter is canceled it is not available under 102(e) (since it is no longer part of a patent that actually gets granted). However, it is still considered to be published prior art that is effective as of the publication date of the app or patent, and it is therefore still available under 102(a). 2. Abandoned U.S. applications: For abandoned apps that are actually published, the app is available under 102(a),(b) as of the publication date. It is also available under 102(e) as of the earliest effective filing date. For abandoned apps that never get published, if the abandoned app is referenced by another U.S. app, it will become available as a public document and be available as 102(a)(b) prior art. 3. Pending U.S. applications: The pending app is available under 102(a)(b) as of the publication date, and is available under 102(e) as of the earliest effective filing date. 4. Granted U.S. Patents: Granted patents are effective under 102(a)(b) as of the date of patenting, and under 102(e) as of the earliest effective filing date. (One thing: could this mean that the 102(a)(b) date actually changes from a pending app to the finally granted one???) 5. Foreign Patent Docs: Foreign patents, or other publicly available foreign patent materials (like patent apps that have been 'laid open') are all available under 102(a)(b) as of the date the material becomes public. 6. Non-Patent Publications: All printed publications are available as references as of their publication date. 7. Published U.S. Abstracts, Abbreviatures, & Defensive Publications (Including SIRs): All of these publications are available and may be used under 102(a)(b).

MPEP 2200 - Citation of Prior Art and Ex Parte Reexamination of Patents

Citation of Prior Art What? Presentation of prior art patents and/or printed pubs to the PTO for placement in a patent's file Why? To ensure that art will be considered in subsequent reissue or reexamination proceedings Who? Any person, including the patent owner, but not examiners When? May cite prior art that has a bearing on the patentability of any claim of a particular patent at any time during period of enforceability of patent (expiration date plus 6 years) Restrictions? Citations of prior art will not be entered into a patent's file during a pending reexam, unless submitted by the patent owner; another reexamination requester; or as part of a 3rd party requestor's reply. Filing Procedure - Must include: cover sheet identifying patent, issue date and patentee; list of pertinent prior art (not already of record in patent file); explanation of pertinence of prior art cited, including application to at least one claim of the patent; If by 3rd party - Certificate of Service or duplicate copy of papers NO FEE "Poor Man's Reexam" May also include: copy of each piece of prior art (English translations if necessary) affidavits or declarations relating to prior art documents (e.g., explaining effective date of art) If by patent owner - explanation of how claims of patent differ from cited prior art PTO Handling of Prior Art Citations - forwarded to relevant Tech. Center if citation is proper and was filed by patent owner, it is entered into file if citation is proper and was filed by 3rd party, it is entered into file, and notice and duplicate copy of papers (if filed) sent to patent owner if citation is proper and was filed by 3rd party, but patent is under reexam, it is put in storage until reexam is terminated, notice sent to 3rd party (if known), and notice and duplicate copy of papers sent to patent owner if citation is not proper and was filed by patent owner, it is returned to owner if citation is not proper and was filed by 3rd party, notice is sent to 3rd party, notice given to patent owner, duplicate copy of papers sent to owner, and original copy returned to 3rd party (if known, else to owner) Ex Parte Reexamination of Patents A reexamination of a patent is a mechanism for correction of scope and contents of patent because there exists a substantial new question as to the patentability of one or more claims therein based on other patents or printed publications. (Do not mistake with reexam of an application.) Who can request an ex parte reexam? Commissioner on his own accord; patentee; or any interested 3rd party (corp. or individual). Mechanics of an ex parte reexam request - must be in writing, giving a statement pointing out each substantial new question of patentability: proper basis - patent or printed pub serving as a basis for 102a,b,e,f,g,103 and DP; and admissions by patentee, but only in combination with patents or printed pubs; improper basis - 112, fraud, or on-sale or public use bars under 102(b) Fee - no small entity discount Submit: copy of patent with any disclaimers, CoC, or reexam certificates issued in the patent; and copy of each patent and printed pub relying upon (and English translation) Must identify claims for which reexamination is sought and the pertinence of prior art being submitted to each such claim If by 3rd party, certificate of service to patentee or duplicate copy of papers if service was not possible; and preferably copy of power of attorney if filed by attorney/agent for 3rd party If by patentee, may also file proposed amendment; request will be considered on claims of issued patent; prosecution will begin, if reexam is granted, based on amended claims Timing - must be filed within period of enforceability of patent PTO will give requester notice and time (typically 1 month) to respond if request contains any defects Ex Parte Reexamination Procedure - request is announced in OG Assigned to same Art Unit (but usually not same examiner) PTO must decide whether to grant reexam within 3 months of request If Denied (no substantial new question of patentability): order denying reexam is sent to requestor and patentee requester may petition for reconsideration once within one month of initial decision initial decision and decision on petition is final and nonappealable requester receives partial refund If Granted: examiner will issue an order granting reexamination to requestor and patentee that states each substantial new question of patentability with respect to specific claims and prior art; and her position with respect to each issue raised by requestor in the proper form examiner's position may be same or different from requestor's Patentee may file R181 Petition to vacate reexam order if they believe grant was improper During reexam, all communications by patentee or 3rd party requestor to the PTO must be served on the other party During reexam, file is open to public for inspection Owner's Statement - patentee may file owner's statement within 2 months of, but not before, order granting reexamination EOT is typically one month and are only available for good cause (R550c) owner's statement must particularly point out why claims are patentable over prior art, and may include an amendment Requestor's Reply to Owner's Statement - If owner's statement is filed, 3rd party requestor may file a reply brief within 2 months EOT is not available for filing reply reply is limited to issues raised in owner's statement reply may include additional prior art and printed pubs (see previous) reply is the requestor's last chance to participate in ex parte reexam Special Characteristics of Ex Parte Reexamination Prosecution - reexam proceedings are conducted with special dispatch all claims are examined for 102 and 103 issues without deference only new or amended claims are also examined for 112 issues duty of disclosure applies interviews are only allowed after first OA, and patent owner must file statement of reasons presented during interview in a separate paper or in next reply to OA correction of inventorship is allowed reexaminations are never abandoned no filing of continuation apps is allowed only patent owner can appeal to the Board (not 3rd party) appeal process is the same as inter parte prosecution except for EOT (on or after 11/29/99, must be final rejection) Ex Parte Reexamination Office Actions - First OA should be completed within one month and mailed within 6 weeks of filing/due date of: owner's statement if no 3rd party requestor; or reply if 3rd party requestor First OA should address all claims; not include any restriction requirements; and only raise 112 issues as to new or amended claims Issues beyond scope of reexam should be noted by examiner, but not addressed, with suggestion for reissue Reply to first OA is typically due in 2 months (1 month if reexam ordered by court or stayed) with only good cause EOT (must be filed before due) Reply is same as ex parte prosecution, but amendments must be in [ Rule 530 d-j format] Failure to file reply to an office action results in termination of reexam and issuance of reexam certificate in accordance with last office action; rule 137 petition (unintentional or unavoidable) is the only way to revive Second OA is typically final Conclusion of Ex Parte Reexamination - if examiner issues a final rejection, 2 month period for patent owner to reply or appeal if first response to a final rejection is a reply, patent owner get automatic one month EOT if no final rejection or appeal, examiner will issue a notice of intent to issue a reexam certificate (NIRC) which states reasons for allowance no issue fee is required after ex parte reexam reexam certificate is published in OG intervening rights (as in reissue) exist Multiple Reexamination Requests - if subsequent request involves the same prior art cited in first reexam, it is automatically granted if subsequent request involves different prior art than that cited in first reexam, a decision whether to grant is made on its own merits if there is more than a three month difference between the date of a second request and the expected issue date of a reexam certificate in the first proceeding, the group director will merge first and subsequent reexams and suspend issuance of reexam certificate from first proceeding. When merged, patent owner must file original, identical papers in both files; same claims must be pending in both files; and examiner will issue identical OA in both files; but multiple reexam certificates will issue. if date of second request is within three months of expected issue date of reexam certificate in first proceeding, the group director will not normally merge proceedings, but any subsequent request will be decided with respect to new claims issuing from first reexam Ex Parte Reexaminations in Conjunction with Other Proceedings - patent owner must disclose any other proceedings to examiner (e.g., litigation, reissue and interference) Reexamination - Interference: reexam is typically not stayed for resolution of interference Reexamination - Reissue: typically two proceedings are merged, reissue rules apply and reissue patent also serves as a reexam certificate Reexamination - Litigation: If litigation is stayed pending reexam or if court orders reexam, then certain time periods are shortened in reexam proceedings; final decision by court that claims are invalid or unenforceable is binding on PTO

MPEP 1400 - Correction of Patents

Correction of Patents (MPEP 1400) by PATENTBAR on DECEMBER 8, 2007 · 4 COMMENTS in MPEP 1400 Chapter 1400: Fixing Mistakes in Already Issued Patents: (See 35 U.S.C. 251) Certificates of Correction A certificate of correction is a mechanism to correct minor, non-substantive inconsistencies between the application as prosecuted and the patent ultimately issued (clerical corrections). A certificate of correction cannot be used to add new matter or for patents that require substantive reexamination. Who can request a certificate of correction? If mistake is by the PTO: Commissioner acting sua sponte - on his own accord; Commissioner acting on information provided by 3rd party; or the patentee or assignee - no fee required. If mistake was applicant's fault: the patentee or assignee may request so long as error was made in good faith; fee required. 3rd Party - PTO has no duty to act upon or respond to 3rd party request for a certificate of correction; patentee is given opportunity to respond; 3rd party papers will not be entered into file wrapper. What type of errors are correctable via a certificate of correction? Minor Errors - grammatical and typos in spec or drawings; if PTO's mistake, they have discretion not to issue certificate of correction and instead, may place request in file for public notice purposes Errors that Affect Understanding or Interpretation - misspelled words, error in name, missing text, wrong formula or equation Serious Errors (rare) - PTO may issue a corrected patent Certificate of correction procedure - Applicant's or PTO's mistake - request made to certificate of correction branch of PTO; identify patent number and issue date; identify how errors occurred; include fee if not PTO's fault (no small entity discount); identify action requested (certificate of correction, corrected patent, letter in file); use of PTO form is encouraged Special certificate of correction procedures - Rule 324 Petition to Correct Inventorship Errors: requires statement from each inventor being added that error occurred without deceptive intent on their part; statement from each inventor named (including those being deleted) agreeing to change; statement by all assignees agreeing to change; and fee court order can also change Inventorship Assignee Name Correction: Rule 183 Petition with fee; statement that failure to include was inadvertent; request that R3.81(a) be waived; and copy of Notice of Recordation of Assignment Priority-Related Errors - certificate of correction is proper to correct, only if: 1) domestic or foreign priority properly claimed but not printed on face of patent; 2) foreign priority perfected in a (non-design) parent application but not claimed in patented continuing application; 3) 119(e)/120 domestic priority not claimed in app filed before 11/29/00 , but co-pending app to be added by certificate of correction is identified in app papers; or 4) 120 domestic priority not claimed in app filed on or after 11/29/00, but co-pending app to be added by certificate of correction is identified in application papers (requires R78(a)(3) - unintentional delay - and surcharge Legal effect of a certificate of correction - Retroactive - becomes part of patent, and dates back to original issue date Disclaimers What is a disclaimer? A disclaimer is a mechanism for any (full or partial) owner of a patent to disclaim "too much" patent protection originally received. Two Types: Statutory - patentee give up subject matter by disclaiming one or more claims of patent Terminal - patentee gives up a portion of the entire patent's term Why use a disclaimer? patentee discovers one or more claims are invalid (e.g., too broad) or defective and desires to delete such claims form the issued patent must be without deceptive intent (i.e., discovery must be subsequent to patent's issuance) patentee desires to dedicated one or more complete claims to the public; disclaimer is irrevocable and binding on the patentee/assignee's successors in interest each joint inventor can only disclaim his percentage of the patent Patent Disclaimer Procedure - Addressed to correction of patents branch of PTO Identify Patent Number Identify claims or term to be disclaimed Identify disclaimant and their ownership interest in the patent Include R20(d) Fee - small entity discount applies Signature by patentee/assignee or attorney Disclaimer is placed in file, attached to patent, and listed in OG Terminal Disclaimer filed in an application is revocable until patent issues Terminal Disclaimer filed in an application does not carry over to continuations (unless it says so), but it does carry over to CPAs and RCEs Reissue What is Reissue? Reissue is a mechanism for correction of scope and contents of patent, which requires substantive examination. "The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy." A reissue patent offers to surrender original patent, at which point you file an amended application for the unexpired term of the original patent. Grounds for Reissue - In order to broaden claims, must file for reissue within two years from the issue date of original patent Cannot introduce any new matter error in specification or claims, which occurred without deceptive intent, that renders patent wholly or partially inoperative or invalid Commissioner may issue one or more patents based on reissue app (can file RCE, continuation and divisional apps off a reissue, but no CIP) What Errors Can Reissue Correct? any inaccuracy or error which could have been corrected by amendment during prosecution or by filing a continuation in the original app can also correct errors normally done by certificates of correction or Disclaimer only if incidental to Reissue process can conform drawings to spec and vice versa - this is not new matter can cure inadvertent failure to claim a statutory class of invention can cure errors in Inventorship not curable by certificates of correction (e.g., lack of consent or all parties do not agree) can cure errors in priority not curable by certificates of correction, but if patent issued from an application filed on or after 11/29/00: cannot cure failure to claim 119(e) priority (to provisional); and to cure foreign or 120 domestic priority in non-design patent requires a R78(a)(3) petition and the R17(t) surcharge cannot cure R56 or 112P1 (best mode) violations, or totally defective oath Types of Reissue - Broadening - when patentee discovers claims are too narrow new or different claims are sought that read on subject matter not read on by original claims; new claims directed to different statutory class of invention; even if some elements of a claim are narrowed, as long as any element is enlarged must be disclosed and enabled in original app spec; two year time limit to file reissue (not to present broader claims) all parties (assignees and inventors) must agree Recapture Doctrine - applicant cannot broaden claims in an attempt to reclaim subject matter given up by a narrowing amendment, argument or cancellation in original application Narrowing - when patentee becomes aware of prior art seeks to amend claims may act like a disclaimer if any claims are eventually canceled Same Scope seeking to add claims of same scope is improper may seek, however, to correct indefiniteness errors Interference patentee may seek to present new claims to provoke an interference (copying claims from another issued patent) Reissue Application Filing Mechanics - a copy of the patent spec (double column, single-sided sheet format), including the claims, and a clean copy of the drawings a copy of any disclaimers, CoC, or reexamination certificates issued in the patent, and disclose any other proceedings in which patent is or was involved may file an amendment either on a separate sheet of paper or by "cutting and pasting" copy of patent. (All [deletions] and additions in spec must be noted; All deletions and additions in text of amended claims must be noted; statement of which claims are cancelled, and separate sheet with status of all claims; and Amendments to drawings must be shown on separate sheet and noted in red with "amended" label. Added drawings must have the "new" label. Deleted drawings must be completely enclosed in brackets and "cancelled.") must include statement of offer to surrender original patent; the actual ribbon original; or state that it is "lost or inaccessible," at filing Oath stating: applicant believes patent is wholly or partially inoperative or invalid by reason of claiming more or less, or defective spec or drawings; error arose w/o deceptive intent; specifying at least one error; all info required by R63; AND all assignees consent or statement that there's no assignee must be signed by all assignees, if any unless seeking to enlarge the scope of claims in which all inventors must sign as well small entity discounts apply Prosecution of a Reissue Application - Reissue app prosecution is identical to examination of "normal" apps, with one exception: file is open to public for inspection and comment upon filing reissue app, notice is published in OG, file is publicly accessible and 3rd parties may file R291 protest (2 months from OG) filing a reissue app: reopens prosecution as to all claims; allows prior art of record to be reapplied; and there is no presumption of validity reissue apps are granted special status duty of disclosure applies Effects of a Reissue Patent - Filing Date: given effective filing date of original app Result: after reissue app process, patentee may end up with original, broadened, narrowed, or no patent at all Issuance: when reissue patent issues, original patent is surrendered Expiration: expires when original patent would have expired Maintenance: fees based on original issue date and payable on same schedule Infringement: no effect for reissue patent claims that are common, or substantially identical, to original patent claims Intervening Rights For New Claims: between issue date of original patent and reissue patent, there is an absolute continued right to use or sell products manufactured before date of reissue and covered by new claims for those who actually relied on the original patent. Court may fashion equitable remedy for products manufactured after date of reissue if substantial preparation was made prior to reissue grant. Correcting an issued Patent (part 1) (1400-1412.01) Reissue Applications: These are filed to correct errors in the patent that was published. Examples: Claims were too narrow or too broad The disclosure had innacuracies Applicant failed to or incorrectly claimed foreign priority Applicant failed to or incorrectly made reference to a prior copending application (like in a CIP, Divisional, or CPA situation). HOWEVER: A reissue does not work if the patent does not properly claim priority over a prior PA (35 U.S.C. 119(e)). (If the later app was filed on or after 20001129) 1403: Time & Diligence: Usually if filed within 2 years of issue the Reissue request is not considered late or non-diligent due to delay. Prior to the 2 year limit, reissue apps that are seeking to broaden the scope of claims will not be rejected merely for not having been filed diligently (examiner will not reject on those grounds). After 2 years, reissue apps are not allowed to broaden claims (although other types of reissue apps could occur). 1405: Reissue and the Patent's Term (Lifespan): 35 U.S.C. 251 says that the reissue just fills out the rest of the term of the original patent (like a built-in terminal disclaimer, a reissue is just to fix problems with the original patent, it can never extend the term of patent protection). For example: say we eliminate a claim to benefit from an earlier app that was shortening the term of the current app. This is still not extending the term of the app from its original length. 1410: What goes into a Reissue App: (37 CFR 1.171, 1.173(a)) A full copy of the original app in full must be included in double-column format. (Just retyping the spec is not enough, a true copy) A special reissue oath or declaration; it must comply with 37 CFR 1.163 (like normal) and additionally 37 CFR 1.175 (extra for this oath/decl). If the patent has been assigned, the reissue app must also have the consent of the assignee. How to actually amend the reissue app to correct errors: 1. Physically incorporate changes by cutting & pasting into the copy of the original (remember to use the underline and formatting used in other amendments as seen in 37 CFR 1.173(d)). 2. By providing a separate amendment paper along with the app. 1411/1412: Remember: NO NEW MATTER IN A REISSUE APP! Also, the reissue app must be for the same general invention. However, remember that the court will look at the original disclosure as a whole, so this means that the reissue could contain claims over subject matter that was not claimed in the original patent. As long as the original subject matter supports the new claim (with no need for new subject matter) then a new claim can be allowed in the reissue app too. More on Reissue (Including when broadening claims is allowed) (1412-1450) 1412.02: Denying a Reissue when it tries to 'recapture' previously canceled Subject Matter. When the original patent was granted because the applicant actually gave up subject matter (like narrowing claims, adding limitations) then later on a reissue app is not allowed to 'recapture' this material that was already surrendered. There are 3 steps for this test: 1. Are the reissue claims actually broader than the original patent, and if so how are they broader? if yes: 2. Do the broadened claims actually relate to subject matter that was previously surrendered. Substep 1: Did the original app actually have surrendered material, this can come from amended claims, earlier rejection reasons, arguments the applicant made, anything in the record showing how the patent was narrowed. Substep 2: If there actually was surrendered material, do the broadened reissue claims actually rely on that material in order to meet the basic description/enablement/best mode & definiteness requirements of a claim? 3. Finally, if the claims were materially narrowed in other ways to avoid recapture they should not be denied, but if they were not narrowed enough, the reissue claims should be rejected. For example, a reissue claim cannot broaden scope of the claims back to what it was for a previously rejected & canceled claim that was tried in the original app. (No do-overs on trying to get broad claims) Also, look for omissions of limitations that were necessary for overcoming prior art. The reissue claims cannot omit limitations after the patent is granted if they were necessary the first time. 1412.03: Steps for rejecting recapture claims: 1. 35 U.S.C. 251: Remember: There is a 2 year limit from the original issue on the time to make a reissue app if it is going to broaden claims. However, reissue apps can be chained together as long as they are all broadening so: Original app + 18 month for 1st broadening reissue app + 18 months for 2nd broadening reissue app is allowable even though the final reissue app is > 2 years after the original issuance date. 2. Caveat on what 'Broadening' Means: A 'broadened' claim means that a claim is now broader than any claim in the original patent, so for example, a dependent claim that has been given a larger scope in the reissue is still not broadened because it must still have all the limitations of its parent independent claim (assuming the parent independent claim was not itself broadened too). Remember: A broadened claim must be greater than the scope of each & every claim in the original patent. 1412.04: Correcting the Inventorship via Reissue: While it is allowable to correct inventorship via reissue, it is preferable to simply use a certificate of correction to fix errors. (37 CFR 1.324). The certificate can be used if: 1. the only change to the patent is to correct inventorship; and 2. all parties agree and inventorship is not contested. However, if other changes need to be made or there is a contention over inventorship, reissue may work: Since changing inventorship is not broadening claims, the assignee of the entire patent may swear the oath/decl for this change. However, if the reissue will also change claims, then all the inventors need to sign. 1413: Drawings: (37 CFR 1.173) Just as with the spec, a clean copy of all the original drawings must be included with the reissue app For making amendments to the drawings for reissue: you are not allowed to physically alter the original drawings at all. Instead, if there is a need for a new drawing, it should be submitted on a replacement sheet (clearly labeled with figure numbers being updated). Each replacement must have 'Amended', 'New', or 'Canceled' at the bottom of the sheet (depending upon what is happening to the drawing in question). Optionally, the applicant may also include annotated versions of the amended drawings. 1414: Content of Reissue Oath/Decl: (This is the extra material in 37 CFR 1.175 that is required in addition to the 1.63 oath/decl material). 1. A statement that the applicant believes the original patent to be wholly/partially invalid: because of defective spec/drawing OR because the claims are either > or <> 2. A statement of at least one error that is relied upon as a basis for reissue. 3. A statement that all errors being corrected occurred without deceptive intent by the applicant; and 4. All the information required in 37 CFR 1.63 (the normal oath material). 1415: Show me the $$ (fees): There are: filing, search, and examination fees for a reissue just as for a normal patent. Also, if the reissue app is > 100 pages or has too many claims, the excess size & claims fees apply too. Just as with a normal app, it is not necessary to pay the fees on the filing date, but if done > 20050701 there is a surcharge for paying these fees at a later date. The app size fee for reissue apps kicks in at > 100 sheets and an extra fee for each 50 sheets over that (rounded up). Claims: For patents after 20041208 the reissue app is treated as: all claims in original patent +- claims in the reissue. So if the final reissue will have > 3 independent claims, and/or > 20 dependent claims, then the 37 CFR 1.16(i) fees apply for excess claims. 1415.01: Maintenance fees on the original patent: The patentee must still pay maintenance on the original patent even if a reissue is pending. If the patentee has not paid these fees under 35 U.S.C. 41(b); 37 CFR 1.20, then the patentee is not allowed to file for reissue. (sort of like abandonment only after the patent is granted). 1416: In the old days the applicant had to actually give up the original 'ribbon copy' of the patent when seeking reissue, 37 CFR 1.178(a) says that is not necessary. 1417: Using a reissue to properly claim foreign priority (35 U.S.C. 119(a)-(d)): EVEN IF THE CLAIM WAS PROPER IN THE ORIGINAL APP: The claim must be properly re-asserted in the reissue application as well. When the claim for foreign priority is being perfected only in the reissue app (it's new): As long as the claim is only being perfected (like a missing copy of the foreign filing is provided in the reissue) this is allowed. In this case, the original app tried to claim foreign priority, but was deficient, so perfecting the error in the reissue is allowed. 1418: Notification of other prior/concurrent proceedings: Under 37 CFR 1.178(b) the applicant must inform the USPTO about any previous or copending actions that relate to the patent, and what the outcome of previous actions was. Also, since the oath/decl of 37 CFR 1.63 is signed, the applicants have the same disclosure requirements as for a normal patent app. 1441: Reissue apps are given priority, but 2 month Delay Period: Reissues get treated as 'special' apps to speed up the reexamination. However, there is normally a 2 month delay from the date on which the reissue app is published to when examination begins. This is to allow the public to read & comment on the published reissue app. 1450: Restriction Requirements: Just as with a normal app, the examiner may require the applicant to elect a species if the new claims in a reissue app are claiming separate & distinct inventions. There can be divisionals that come out of reissue apps (see next lesson). More on Reissue: Divisionals & RCEs from Reissue; Disclaimers; Certificates of correction (1451-1490) 1451: Divisional Reissue Apps (types of Continuation Apps where the reissue parent is copending): 1. These can be required by the examiner under 37 CFR 1.176(b) when new claims are directed at separate & distinct inventions. OR 2. The applicant can elect to make a divisional on his own under 37 CFR 1.177. Requirements: The original reissue app itself must contain a cross reference to divisionals in the first sentence of the app. (If it does not, the examiner will make an objection and require that the app be amended with the referecences). Other Continuation Reissue Apps (Like RCE's) As long as the continuation complies with

United States Court of Appeals for the Federal Circuit (CAFC)

Decisions of the BPAI can be further appealed to the United States Court of Appeals for the Federal Circuit (CAFC) under 35 U.S.C. § 141. The decisions of the CAFC may also be reviewed on a discretionary basis by the United States Supreme Court. The U.S. Supreme Court is the ultimate authority on the judicial standards for patentability. United States district courts relating to: Patents, including appeals arising from an action against the Commissioner of Patents and Trademarks under 35 U.S.C. § 145

MPEP 400 - Representative of Inventor or Owner

Executing Representation An applicant for a patent may apply on his or her own behalf, pro se, or may be represented by a registered attorney or agent. An applicant may appoint a registered attorney or agent as a representative by: executing a power of attorney or authorization of agent, or having a registered attorney/agent appear in person before the PTO, or signing a paper on behalf of the applicant before the PTO. The PTO only recognizes individuals as registered attorneys or agents; it does not recognize law firms. Correspondence with the PTO The applicant must provide one correspondence address. The correspondence and fee addresses may be different. If after one attorney is appointed, another attorney is appointed without revocation of the power of the first attorney, PTO letters will be sent to the later. Customer Number A customer number may be assigned to a particular applicant. Customer numbers are a convenience and provide 1) a correspondence address, 2) a fee address, and 3) list of the practitioners with power of attorney. The last provided customer number determines correspondence address. An applicant can appoint practitioners merely by reference in the power of attorney to the customer number. A representative can be added or removed practitioners from the list associated with the customer number. Telephone Correspondence The power to hold a phone interview is discretionary by the examiner. An attorney should call the examiner if the call will be beneficial to advance prosecution. If the attorney or representative is in the DC area, an interview can be conducted in person. 37 CFR 10.18(b) Every paper filed to the practitioner must be personally signed by the practitioner except those required to be signed by the applicant. By signing a paper before the PTO, the practitioner is making the certifications required by 37 CFR 10.18(b). (All papers signed must be truthful.) Advising a client of these requirements is not required, but is recommended. Changing Representation: Change, Revocation, or Resignation Applicant May Change/Revoke Representation When an applicant or assignee is represented by a registered agent or attorney, he or she may change or revoke his or her representation at any time for any reason. Change or revocation becomes effective on the date it is received by the PTO. An assignment will not itself operate as a revocation or authorization, but the assignee of the entire interest may revoke previous powers and appoint another attorney or agent. Revocation of the power of the principal attorney revokes powers granted by her to other attorneys. Papers giving or revoking a power of attorney require signature by all applicants or owners unless they are accompanied by a petition giving sufficient reason as to why such papers should otherwise be accepted. Each of these parties must also sign all subsequent replies submitted to the PTO. For example, if A has given power of attorney to Smith and B has not, replies must be signed by Smith and B. If A and B has each appointed their own attorney, replies must be signed by both attorneys. Attorney May Resign (pending restrictions) The representative of the applicant may resign with some restrictions. A withdraw is effective when approved rather than when received. So the applicant has sufficient time to obtain other representation, the Commissioner usually requires that there be at least 30 days between 1) approval of withdraw and the end of a reply period, or 2) the expiration date of the period which can be obtained by a petition for extension of time. Situations Where Representation Ceases Principal Attorney's Power Terminates at Death Death of the inventor terminates the power of attorney given by him. A patent applied for by an inventor who later dies may issue to his legal representative. Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. [MPEP 409.01. See also 37 CFR 1.422.] If the Inventor is Dead, Insane or Unavailable If the inventor is dead, refuses to execute an application, cannot be found, or is insane or otherwise legally incapacitated, an application may be made by someone other than the inventor. If at least one inventor is available, the available inventors can apply. If a joint inventor refuses to join in an application or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the non-signing inventor. The oath in such application must be accompanied by a petition showing the last known address of the unavailable inventor or representatives of deceased inventors. A non-signing inventor may subsequently join the application. If no inventors are available, an assignee, or an interested party may be able to apply. Whenever all the inventors and legal representatives of deceased inventors refuse to execute an application or cannot be reached after diligent effort, a person or corporation may make an application. An inventor may subsequently join the application. The oath in such application must be accompanied by a petition showing: The applicant is one to whom the inventor agreed to assign the invention or the applicant shows a sufficient proprietary interest; and Such action is necessary to preserve the rights of the parties or such action is necessary to prevent irreparable harm; and The last known address of the inventors or representatives of the deceased inventors. Proof of Unavailability - The oath in such an application must be accompanied by a petition fully describing exact pertinent facts, and in the case of unavailable representative of a deceased inventor, proof of his authority as representative. Statements based on hearsay will not normally be accepted. Proof of Refusal - The circumstances of this refusal must be specified in an affidavit by the person to whom the refusal was made stating the time and place of the refusal. When there is a written refusal, a copy of the document must be made part of the affidavit. It must be demonstrated that a bona fide attempt was made to present a copy of the application papers to the non-signing inventor for signature. When there is only 1 inventor who is not available to sign the oath, or if there are NO inventors available to sign: If inventor is dead, insane, legally incapacitated, refuses to execute the oath, or cannot be found, an app may be made by someone other than the inventor (see 409.03(b) & 37 CFR 1.47(b) for the rules needed) Under 37 1.47(b) the following are only allowed when no inventor is available applicant must take the normal oath required under 37 CFR 1.63, 1.64, 1.175 Applicant must state relationship to the inventor (37 CFR 1.64) Applicant must have proof that inventor (1) cannot be found after a diligent effort to find him; OR (2) refuses to execute oath & sign the app Last known address of the inventor must be stated The applicant needs to make the prima facie case that: (1) invention has been assigned to him; OR (2) inventor agreed in writing to assign the invention to the applicant; OR (3) otherwise demonstrate a proprietary interest in the subject matter of the app (show reason for why the applicant should be allowed to get the patent) Applicant must prove that filing the app without any inventors is necessary (1) to preserve rights of parties; OR (2) to prevent irreparable damage. When there are multiple inventors but some are available while others are not: 37 CFR 1.47(a): all of the available inventors have to file on behalf of themselves (just like normal) AND: Make an oath or declaration on behalf of non-signing joint inventors (37 CFR 1.64) The non-signer must either refuse to sign, or be unlocatable after a 'diligent' search All of the inventors must still be listed A blank line by the non-signing inventors' names will be treated as having been signed on their behalf by the other inventors. The application must have proof that non-signing inventors: cannot be found or reached after diligent effort || refuses to execute the oath Last known address of non-signing inventor When an atty dies: The power of atty is revoked (duh) but more importantly, if the atty who died was the principal atty who assigned powers to other people, their power terminates too. Proof of the Proprietary Interest (for 37 1.47(b) apps when no original inventor is signing): The invention has to be assigned to the applicant || Inventor has agreed in writing to assign the invention || applicant has otherwise sufficient proprietary interest in the subject matter to justify filing the app Non-signing Inventor's Rights: The non-signing inventor may protest the designation as an inventor, and is allowed to inspect any part of the app itself (even if not published). The non-signing inventor may also have his own agent or atty to inspect the record. Representations to the USPTO (See 37 CFR 1.4(d)(4) in the Charts, also 37 CFR 10.18): 37 CFR 1.4(d) (4) says that representations to the USPTO (of any kind of filing, by either a patet practitioner or another party) constitute a certification under 37 CFR 10.18(b), and violations of the certification can be punished under 37 CFR 10.18(c). Practioners who violate the rule may also face disciplinary action too. What 37 CFR 10.18(b) states there are 2 certification: 1. that statements made in a filing are subject to 37 CFR 1.68 2. Rule 11(b) under the FRCP applies to all filings too. (YAY CivPro!) Finally: If you want to accuse another party of infringement, it is a violation of FRCP Rule 11 to do so without first obtaining & examining the accused infringing device.

MPEP 2300 - Interferences

General Claims must not be identical, but they must have the same subject matter Inter partes proceeding between [2 patent applications] or [1 patent and 1 application] §1.131 cannot be used to "swear behind" a patent claiming the same invention; but it can be used to swear behind a patent disclosing same invention Senior party has earliest effective filing date and becomes the Defendant A party wins if they were first to conceive and diligent starting before the other party's conception and later filing date Provoking an Interference Applicant may provoke by: proposing a count (mock claim); presenting or identifying a claim (in an application) corresponding to count; identifying other pending application (issued patent); and explain why interference should be declared Applicant can copy a claim from another pending application or issued patent verbatim at the suggestion of examiner Timing - provoking an interference with an issued patent must normally be done less than one year from issue date; good faith EOT; if published and applicant's filing date was after publication, the copying must be done less than one year from publication date When two applications are involved, examiner will not suggest copying if more than 3 months difference in filing dates if simple; and 6 months if not simple Once interference is filed, each party has access to opponent's file If interfering applications or application/patent have the same inventive entity or common assignee, then double patenting rejection is proper Failure to comply with suggestion (usually non-extendable 1 month) acts as a disclaimer to uncopied subject matter Declarations must be filed only with an issued patent/pending application interference Parties may voluntarily settle before interference terminates by filing written agreement with PTO Burden of Proof The issue in an interference between applications is normally priority of use, but the rights of the parties to registration may also be determined. The party whose application involved in the interference has the latest filing date is the junior party and has the burden of proof. When there are more than two parties to an interference, a party shall be a junior party to and shall have the burden of proof as against every other party whose application involved in the interference has an earlier filing date. If the involved applications of any parties have the same filing date, the application with the latest date of execution will be deemed to have the latest filing date and that applicant will be the junior party. The issue in an interference between an application and a registration shall be the same, but in the event the final decision is adverse to the registrant, a registration to the applicant will not be authorized so long as the interfering registration remains on the register. There is a higher standard of proof if the patent is already issued (clear and convincing) compared to if two applicants are pending (preponderance). See the PTO here, http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_657.htm

MPEP 500 - Receipt and Handling of Mail and Papers

General Addressing of Correspondence - no penalty, expect to the general solicitor, to addressing the mail to the wrong area within the PTO Hand Delivery - all correspondence except relating to pending litigation can be hand delivered Express Mail - if USPS "Post Office to Addressee" service is used, use date of deposit Facsimile - date stamped is the date that the transmission is complete at the PTO (EST). If fax is not received, it can still receive the date that it was sent if sender provides statement that fax was sent and the provides the sender's report confirming transmission. Fax is usually acceptable after an application has commenced including: CPAs amendments declarations petitions issue fee transmittals authorizations to charge deposit account Fax is not acceptable for: document that is required by statute to be certified application or other doc for obtaining an application filing date drawings under certain rules judge order interference agreements some interference correspondence secrecy related international application copy of application and fee to enter national stage request for reexam Internet - Permissible communication includes all situations except those which otherwise require a signature, or replies to office actions. When email is used, a printed copy must be given a paper number and entered into PALM. Written authorization is required for PTO employees to communicate via internet with an applicant for reissues and reexams. Signature Requirements - original signatures are generally not required. Copies are not permitted for: 1) docs that relate to registration practice before the PTO in patent cases, 2) enrollment and disciplinary investigations, and 3) disciplinary proceedings Date of Receipt of Correspondence Express Mail - date stamped with the date it is deposited; requires "Express Mail Post Office to Addressee" Facsimile - date stamped on date the transmission is complete (EST) Certificate of Mailing or Transmission - only applies if paper is received after the applicable deadline has passed. If date on certificate meets the deadline, it's considered timely. The PTO will still stamp the correspondence with the actual date of receipt. This date stamp will be used for all other purposes including calculations of future deadlines Cannot use certificate of mailing - obtaining an app filing date, including CPA; interferences; agreements of interfering parties; international application; UPS or FedEx; etc. Contents - requires a signature; must be attached or part of document; if on separate sheet, it must be signed and clearly identify the paper it's with, including filing date and serial number; each document must have a separate certificate. Lost Mail or Transmission - will be considered timely if applicant: 1) promptly notifies Office that it was sent, 2) supplies a copy of the original correspondence and certificate, 3) and provides a statement that attests on personal knowledge on timeliness Filing Date Application Number and Filing Receipt - will be assigned to applications upon receipt. A filing receipt with application number and filing date will be returned upon receipt at the PTO of the 1) specification, including claims, and 2) drawings. The filing receipt is mailed when a determination is made that the application meets minimum requirements. Provisional applications - a filing receipt will be sent upon receipt of specification and required drawings. A cover sheet or letter identifying application as a provisional is required to prevent the provisional from being treated as a regular application. Completeness of Original Application (to get a filing date) - Regular, non-Provisional: 1) specification, 2) claim, and 3) drawing. Provisional: 1) specification, 2) drawing, and 3) cover sheet. Verification of Receipt The PTO will verify receipt upon applicant's request. This does not verify completeness or guarantee a filing date. Return Receipt of other papers - should clearly identify the paper for which receipt is requested. Postcards - should include reference to: applicant's name or ID number, title, number of pages of specification, claims, drawings, oath/declaration if included, provisional cover sheet (if provisional), amount and manner of paying the fee Payment of Fees Refunds - only fees paid by mistake or in excess of that required at the time of payment are refundable - provided electronically Deposit Accounts - minimum deposit of $1,000 is required to establish an account; each month the minimum balance must be restored promptly to avoid a $25 service charge; charges to accounts with insufficient funds will not be accepted; the PTO will immediately suspend an overdrawn account and will not accept any more charges against it until the proper balance is restored and $10 service charge is paid Authorization to charge deposit account - authorization must be clear and unambiguous; an applicant may make a general authorization that will apply to all fees that may be addressed during the pendency of the application Small Entity Status - 50% reduction of fees Applies to: 1) Independent Inventor, 2) Small Business (< 500 employees), and 3) Nonprofit Organization Applies to following fees: filing fees; EOT, revival, and appeal; issue fees; statutory disclaimer; maintenance fees Does not apply to: petition and processing; document supply; certificate of correction; request for reexam; miscellaneous and charges under 1.21; international app To claim small entity status - must file statement containing: signature; statement of qualification as small entity; statement regarding transferred rights; English language/translation. Small Entity Status (SES) must be claimed on each patent app filed by the inventor, including continuations. Refunds for paying full fee are given if statement is filed within 3 months of the payment of the full fee. How can a patent app be deposited at the USPTO? (37 CFR 1.5, 1.6) Usually done either by Express Mail, or by using the Electronic Filing System (EFS) P.O. Box 1450, Alexandria, VA, 22313-1450 Hand delivery: Hand delivery is not allowed to the TC directly except for papers that are under a secrecy order. As of Dec. 1, 2003 all official patent app related correspondance should be delivered to the Customer Window. the app itself cannot be faxed What reference info is needed for filing papers related to a patent app? All correspondence related to an already-filed national patent app must include the ID of the application number, or (usually if the application does not have a number yet) the serial number and filing date assigned to app by the USPTO. Rules on mailing to the USPTO, and on when mail is "received": Express Mailing: 2 major types, Post office to Addressee and Post Office to Post Office. The type to use for filing an app is Post office to Addressee where the 'addresee' is the USPTO In Express mailing, the sender completes a label, with the post office completing part for the "date in" address. The important point is that the "date in" will be used by the USPTO, so if the mail is labeled by the post office as (for example) Jan. 15, 1998, then that is the date the USPTO will use for the filing, not the date that the mailing actually arrives at the USPTO office. When is a fax actually considered as "received" by the USPTO? Normally it is "received" on the date that the fax completes transmission to the USPTO using the USPTO's local time (not the timezone of the sending party). If a fax completes on a weekend or federal holiday, the USPTO will consider it "received" on the next business day There is an exception, if the sender has a Certificate of Transmission then the fax is considered received as of the date of the certificate of transmission instead. This is covered in detail later, it may apply to some actions taken under deadlines with the USPTO. When is is OK to fax and when is it NOT OK? (502.01; 37 CFR 1.6(d),(f) in Charts): When faxes are not permitted: docs that statute requires to be certified National patent app and drawing (provisional or non-provisional) or any correspondence needed to get a filing date, other than a CPA under 1.53(d) (CPA's are the main exception to the rule in not being allowed to file apps by fax) Color drawings, unless the drawings are being submitted along with the issue fee (the patent is being issued) Correspondence relating to an interference when the judge orders files to be delivered by hand or express mail Agreements between parties to an interference under 35 U.S.C. 135(c) Correspondences in contested cases that are before the Board of Patent Appeals, unless expressly authorized by the board. Any correspondence in an app under a secrecy order and directly related to the material covered by the secrecy order (some parts of the patent might not be under the secrecy order and might be OK). International patent apps. (same as national apps, no faxing) The copy of an international app and fee that are necessary to bring an international app into the national stage. Requests for reexamination. What about email? (502.3) Internet communication is at the discretion of the applicant, and without written authorization by the applicant the USPTO will not respond via email to any Internet correspondence containing information subject to cofnidentiality requirements (see 35 U.S.C. 122) Interviews: Interviews that need to take place between examiner and applicants (usually done in person or on the phone) unless there is express authorization. What is needed for a signature on documents? (502.02; 37 CFR 1.4(d)) Handwritten Signatures: What you expect, needs to be done in permanent, dark ink. S-Signature: These are signatures made by electronic or mechanical means, and they are inserted between forward-slash marks (/sig/). S-signatures can be used in paper, fax, TIFF files, for patent apps and patent reexamination proceedings. However, S-signatures do not authorize e-mail correspondence. For patent practitioners, the S-signature also must include the practitioner's registration number. EFS Character Coded Signatures: These signatures are used with the USPTO's Electronic Filing System (EFS). Filing Receipts (503, 505): Main filing receipt: If the application has the sufficient parts (description, at least 1 claim, necessary drawings) to receive a filing date, the filing receipt contains the: (1) app #; (2) filing date; (3) confirmation #; (4) suggested class & TC. For some apps it also contains: (1) continuing data; (2) national stage data; (3) foreign priority data; (4) foreign filing license data; (5) small entity status data; (6) the anticipated date of publication. Make sure to check the filing receipt for inaccuracies, if there are inaccuracies, then the USPTO may be notified to request a correction. Postcard receipts: Except for filings, the USPTO usually will not give a receipt for filing papers. For any kind of filing (including patent apps that get the full receipt seen above) the filing party can include a stamped, self-addressed postcard that identifies each item in the filing. The USPTO will stamp this postcard and then mail it back to the filing party. The postcard gives a much faster (but unofficial) confirmation that the USPTO has received paperwork. Also, it can act as proof that the USPTO received documents which can be useful if the USPTO loses a filing. However, note that the postcard must specifically identify the items in the filing for it to act as prima facie evidence that those items were received by the USPTO. Official Date Stamps: (37 CFR 1.6 in charts) The USPTO stamps filings with the date of receipt known as the Office Date stamp. If the deadline for an action is on the weekend or federal holiday, the action is considered timely if the receipt is by the next business day. As seen above, for express mailing the date put on by the post office will be used as the Office Date, not the date upon which the document actually arrives at the USPTO. If an app has the necessary components for a filing date, then the the Office Date is taken as the filing date. For a non-provisional App what is needed to get a filing date: There must be a specification containing: description of the invention (37 CFR 1.71), at least 1 claim (37 CFR 1.75), and any necessary drawings (37 CFR 1.81(a)) for the invention. If all the inventors are not listed & signed on for the oath or the app. fee is not paid upon filing, then the OIPE will send out a notice to complete those along with a surcharge (37 CFR 1.16(f)) For any app after July 1, 2005, if any: filing, search, or examination fee is paid AFTER the filing date, then the same 37 CFR 1.16(f) surcharge is added on. App Size Fees (add more pages, pay more $$): Under 37 CFR 1.16(s) any app under 35 U.S.C. 111 after Dec. 8, 2004 exceeding 100 pages pays an extra fee, with more fees added for each additional 50 pages. Prescribed Filing Fee (37 CFR 1.51(b)(4)): Extra fees for filing > 3 independent claims (37 CFR 1.16(h)), for filing > 20 claims (37 CFR 1.16(i), filing multiple dependent claims (37 CFR 1.16(j)). Filing date: most important date in the life of the patent! If the above is not complete, the applicant receives a notice to file missing items in order to get a filing date. However: If the USPTO does not grant a filing date, the applicant may file a petition to argue that the app was sufficient to get a filing date. There is a fee associated with the petition that may be refunded if the applicant is successful in arguing the app was complete. Drawings in nonprovisionals: Drawings generally have to be publishable since apps are published after 18 months (except design apps that never get published) If drawings are not suitable for publication, the OIPE (Office of Initial Patent Examination) will normally notify the applicant to submit acceptable drawings (usually within 2 months of filing the app). For a provisional App what is needed to get a filing date: Papers must include a description of the invention, and a drawing if necessary, no need for claims. Once again, if filing is incomplete applicant is notified and the filing date will be when applicant corrects the filing. Review: provisional apps must be specific enough in subject matter so that later nonprovisional apps may get the benefit of the earlier filing date! What to do when the USPTO loses your files: 1. The USPTO sends a notice (3 month response period with automatic 3 month extension under 37 CFR 1.136(a) available) to applicant or patentee that docs have been lost. 2. Most common response: Provide a copy of all correspondence between applicant & USPTO, a listing of the correspondance, and a statement that the copy is a complete & accurate copy of the record, and if the applicant is aware of any missing documents not in the copy. 3. Alternate response: Hand-delivering all the correspondence between applicant & USPTO, providing the statement that all papers and complete and accurate, and stating whether the applicant is aware of any missing papers. 4. OR: IF the applicant does NOT possess a copy of the correspondence, the applicant may respond by stating it does not have the copy. 5. If none of 2-4 are done, then after the deadline passes for the notice, if there is no reply then the app is considered abandoned. Note: for patentees that already have the patent, this deadline does not abandon the granted patent however. Show me the $$: How to pay fees to the USPTO: Cash, check, or money orders (in U.S. $$) Credit Card: AMEX, Master Card, Discover, Visa There is a special Credi Card Payment Form that is not included with normal records of filings (and therefore not open to normal inspection by the public). The form is not strictly necessary, but if the CC info is put into the app in any other way, then the CC info will be open to public inspection along with the rest of the app. (The Credit Card Payment Form lets you keep CC information separate from the app that will eventually be published!) Deposit Accounts: (direct-transfer accounts)(See 37 CFR 1.25 in charts) 1st Type: minimum deposit of $1K and may be used for paying any fee. 2nd Type: minimum deposit of $300, used exclusively for ordering copies of patents. For either account, each month the USPTO will send out a statement if the account needs to be refilled with $$ and a service fee is the balance went below minimum values. Papers will specify an account to use for fees, there can be a specific auhtorization for just 1 payment, or a broader general authorization so that all fees that come up during a patent app get charged to an account. The notice for general authorization should be in the cover letter of the patent app. LIMITS: Only fees in 27 CFR 1.16-18 are covered in a general authorization, fees in 37 CFR 1.19-21 are NOT covered. Also: authorization to charge an issuing fee (37 CFR 1.18) may only be filed AFTER THE MAILING OF NOTICE OF ALLOWANCE. How to claim Small Entity Status: (509.02, see 37 CFR 1.27(a) in Charts) A "small entity" may get reduced fees including 50% off: app filing fees, time extensions, revival, appeal fees, patent issue fees, statutory disclaimer fees, & maintenance fees on patents. Other fees: not reduced Who Gets it: Individual inventor who has not & is under no obligation to assign, grant, convey, or license any rights on the inventions to parties that don't also qualify as small entities. A "small business concern" Non-profits, especially universities. Any small entity may get the reduced benefits as long as the party is a small entity in its native country. How to claim status: At time of filing of app or of payment of first fee, applicant must file an assertion to small entity status: 1st: file a written assertion stating that applicant is a small entity (simple written assertion, may be signed of atty/agent of record, atty/agent not of record acting in a representative capacity, assignee, or applicant (only 1 inventor or partial assignees need to sign affirmation)) 2nd: assertion by payment just pay the exact amount a small entity should pay and this acts as an assertion that the applicant is a small entity. The general authorization to charge to an account is NOT sufficient for this assertion, unless it also expressly states to charge the exact amount for the small entity filing fees as well. After asserting SES, the party may continue to pay small-entity fees up until the issuance fee or a maintenance fee is due (even if the status of the applicant changes in the meantime). At the time of issuance fee or maintenance fee, the continuing entitlement to SES has to be reestablished (showing that the party is still a small entity) to get the lower rates. The SES needs to be established in every patent where the applicant is eligible for it. Notification of status Change: If an applicant has his status change, the applicant should notify the USPTO at a time upt ot or including the payment of issue fee or maintenance fee. The applicant should inform the USPTO, simply paying the larger fee is not sufficient to properly change status. Refunds: If a small entity pays a large-entity fee, there is a non-extendable 3 month period to request a refund. The request must have an assertion that the applicant is a small entity. Even more savings on filing of Utility Apps after Dec. 8, 2004: If the small entity files by electronic means then the under 35 U.S.C. 41(a)(1)(A) the SE gets a 75% reduction in filing fee (to encourage using EFS). Effective: On or after Dec. 8, 2004. -> Only Applies to Utility patent apps, not plant, design, reissue, or provisional apps. Express mailings, Certificates of Mailing, & LOST MAIL Certs of Mailing or Transmission: (37 CFR 1.8 in Charts) When there is a deadline for filing a response, the USPTO will allow a Certificate of Mailing (for Express Mail) or a Certificate of Transmission (for faxes) to be sent with the response in order to have the USPTO use the earlier date on the certificate. The certification just states the date on which the paper was sent. For mailing there will also be a stamp applied by the post-office. For faxes, Certifications require a signature (by themselves) so if there is a paper that needs a signature on its own, there must be 2 sigs (one for the certification, one for the paper actually being filed) The certification is usually stamped directly onto the paper being submitted. The stamp should be clearly visible on the first page of the paper (but does not need to be on every page). Sometimes the certfication will be on a separate page that should be securely attached to the paper being submitted. EACH paper being submitted must have its own certification. So even if there are 2 or 3 papers in one mailing envelope, each one needs a separate certification. Certifications are also useful when a doc never reaches the USPTO. The applicant may promptly petition the USPTO with the following: a showing that the mailing label number was on each document sent. a true copy of the original documents, showing the mailing number a copy of any returned postcard receipts a copy of the Express Mail label (see express mailing for more info) When does the Cert apply to get the earlier date? Except for the situations listed below, when the USPTO wants a correspondence within a set time period (deadline) then by following the proper procedure for a certificate of mailing or transmission, the appli

MPEP 2500 - Maintenance Fees

Must identify patent number AND patent application number Reminders are sent to FEE address, if any, otherwise to the correspondence address Reinstatement If unintentional, can pay within 24 months after grace period with petition (small entity fee) and showing that entire delay was unintentional; plus surcharge fee (no small entity discount) If unavoidable, can pay any time after grace period with petition and showing; plus fee Intervening rights from after expiration of patent until reinstatement of patent Does not apply to plant and design patents Can pay 6 months early or 6 months late; late payment = expiration of patent Can be paid via fax, mail, or Internet Anyone can pay

MPEP 2700 - Patent Terms and Extensions

Patent Terms Patents filed before 6/8/95 - term is greater of 20 years from filing date or 17 years from issue date. Foreign and provisional priority not counted when determining filing date for term purposes. Utility and plant applications filed on or after 6/8/95 - term begins on issue date and lasts for 20 years from filing date. Design patents - term is 14 years from issue date. Patents resulting from international applications -term ends 20 years from date of filing international application. CPAs - term is based on filing date of prior application or, for chain of CPAs, filing date of application immediately preceding the first CPA in the chain. Patent Term Extensions No patent term extension for applications filed before 6/8/95 - On or after 6/8/95 and before 5/29/2000 - PTO delay: can be extended 5 years for delays in issuance due to interference; secrecy; successful appeal. Pre-market Regulatory Review (e.g., FDA review) 5 years + 5 years (PTO delay). Patents issued on applications filed on or after 5/29/00, including CPA (but not design or reissue) - no limit on total length of adjustment. Applicant has one chance to request reconsideration of initial determination, but may also obtain judicial review. If the delay is due to PTO - day by day patent term adjustments for failure to: 1) initially act on an app within 14 months; 2) respond to a reply or appeal by applicant within 4 months; 3) act on app with at least one allowable claim after BPAI or court decision within four months of decision; 4) issue app after issue fee is paid and all other req.'s are satisfied; and 5) issue patent within 3 years of actual filing date of app (unless delay is caused by applicant requested RCE, interference, secrecy order, or appeal). Other delays - day by day: interferences; secrecy orders; successful appeals to BPAI or fed court. Limitations on AIPA term adjustments - where overlapping, no adjustment beyond actual days issuance was delayed; adjustment will be reduced by amount of time applicant failed to engage in reasonable efforts to conclude prosecution; failures include: requesting EOT; failing to file complete app at date of filing; failure to fulfill national stage req.'s ; app is not in proper form; filing papers prior to one month before examiner mails office action - necessitates a supplemental action by PTO; supplemental reply; amendment after NOA; and further prosecution via a continuing app eliminates any adjustments that may have been accumulated in the parent.

35 USC 101

Patentable Subject Matter - MPEP 2100 What is patentable subject matter? "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title." [35 USC 101] To be patentable an invention must fall into one of the following statutory categories: 1) machine - e.g., new gizmo 2) manufacture (combination of materials) - e.g., new widget (gardening tool, computer chip) 3) composition of matter - e.g., new chemical composition or metal alloy 4) process (a new method for doing something) - note: special sub-category product by process A claim cannot cite more than one of the statutory categories above (i.e., it is inappropriate to refer to a machine and composition of matter in the same claim). Patentable Product: a new, useful and non-obvious machine, manufacture, or composition of matter (see statutory categories 1-3 above). Process: a new, useful and non-obvious way of doing something, making something, or using something. A process may be patentable even though the resulting product itself is not. Also, a process claim must include steps; it cannot claim the result without any steps (see comment below). Product-by Process: patentability is based on the product, not the process. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious over a product in the prior art, the claim is unpatentable even though the prior product was made by a different process. Living subject matter is patentable: human intervention is necessary (e.g., genetically engineered material) Also patentable are claims directed to a practical application of a natural phenomenon Not Patentable - examples Naturally occurring living subject matter or raw materials Inventions for which the broadest reasonable interpretation encompasses a human being Mathematical, physical and natural laws Processes that depend on natural laws, abstract ideas, etc. without some claimed practical application Computer-related, descriptive material; this is copyrightable How that matter must be expressed in an applicant's disclosure; Claim Interpretation During examination, claims must be "given their broadest reasonable interpretation consistent with the specification." The words of the claim must be given their "plain meaning" unless they are defined in the specification. The transitional phrases "comprising," consisting essentially of," and "consisting of" define the scope of a claim with respect to what unrecited additional components if steps, if any, are excluded from the scope of the claim. [MPEP 2111.03] Comprising - non-exclusive language Consisting essentially of - limiting language* Consisting of - exclusive language* *revised from dk's comment below

MPEP 300 - Ownership and Assignment

Patents are intangible property and personal property. They can be assigned or licensed by submitting/filing a notarized document (recording the assignment) to the USPTO. (An assignment must be recorded within 3 mos. with the USPTO from the date of execution.) Assignability of Patents and Applications The rights of a patent or pending patent may be assigned to another party of the United States by means of a notarized document. The assignment is void unless it is recorded at the PTO within 3 months of its execution. Barring any agreement to the contrary, each of the joint owners of a patent may exercise the rights of a patent holder without the consent or accounting to the other owners. Accessibility of Assignment Records All assignment documents relating to patents and registrations of trademarks are open to public inspection. Assignment records of pending or abandoned patent applications generally are not available to the public and may only be viewed upon written consent of the applicant or assignee. Recording of Assignment Documents Assignments of applications, patents and trademark registrations will be recorded in the PTO. Each applicant must: Provide an original or certified true copy of the assignment Provide an English language translation signed by the translator if the assignment is in a foreign language Include all appropriate fees Provide a cover sheet for each assignment Facsimile Submission of Assignment Documents The PTO permits assignments and other documents affecting title via facsimile. The date of receipt is the date the complete transmission is received in the PTO. Any assignment related document submitted by facsimile must include: An identified application or patent number One cover sheet to record a single transaction Payment of the recordation fee by a PTO deposit account The following documents cannot be submitted by facsimile: Assignments submitted concurrently with newly filed patent applications Documents with two or more cover sheets Requests for corrections to previously recorded documents Requests for "at cost" recordation services Documents with payment of the recordation fee by credit card Amendments and assignment documents can be submitted with fax. new applications cannot be filed via fax, and an assignment filed concurrently with a new application cannot be filed via fax. Documents with multiple cover sheets cannot be faxed, corrections to already filed documents cannot be faxed, and payment via credit card cannot be faxed. You must have a PTO serial number for the application and PTO deposit account to fax. Fax must include the single cover sheet, the serial number and deposit number. Assignment of Divisional, Continuation, Substitute, Continuation-In Part and Provisional Applications In the case of a division or continuation, a prior assignment recorded against the original application is applied. A prior assignment of the original application is not applied to the substitute or continuation-in part application. When a perfected application based on a provisional application contains subject matter not disclosed in the provisional application, a new assignment must be submitted with respect to this later application. Basically, If you add new matter, you need a new assignment. Restrictions on PTO Employees Employees of the PTO shall be incapable, during the period of their appointment and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any rights or interest in any patent, issued or to be issued by the PTO.

MPEP 1000 Petitions

Petitions (MPEP 1000) by PATENTBAR on NOVEMBER 29, 2007 · 0 COMMENTS in MPEP 1000 Petitions are generally covered in MPEP Chapter 700. MPEP Chapter 1000 addresses the following points regarding petitions: Petitions must be filed within 2 months in ex parte (regular, reexam, reissue), and it does not stay time to reply to outstanding rejection. MPEP §1002.02 identifies which PTO official has authority. §1.182 - situations not specifically provided for in the rules - decided on merits §1.183 - waiver of a rule not required by a statute in an extraordinary situation where justice requires Chapter 1000: Filing Petitions under 37 CFR 1.181, 1.182, 1.183: 1. 37 CFR 1.181: These are petitions that can be filed in response to any requirement of the examiner that is not subject to an appeal. (appeals are about the merits of the case (e.g. claim rejection), the petitions are usually about other matters). REQUIREMENTS: A statement of facts involved, the points to be reviewed, and the action requested. There may be supporting briefs & affidavits along with the fact statement. If the petition is in regards to an action or requirement made by the examiner, then the petition may have to wait until after the examiner has already had a request for reconsideration in regards to the matter (like for example, if the examiner has made a restriction requirement, the applicant filed a request to reconsider, and the examiner still made the restriction requirement). The requisite petition fee! (see 37 CFR 1.17) TIME: The petition must be filed within a 2 month non-extendable time period from when the original action that is the subject of the petition occurred. 2. 37 CFR 1.182: This is sort of the gap-filler, when a petition is not expressly allowed in other rules, it can be filed under 1.182. The same requirements seen above for a 1.181 petition apply here too. 3. 37 CFR 1.183: This is a petition to suspend or waive a rule. These are reserved for extraordinary situations, don't expect to see these often. Meet the 1.181 requirements too.

MPEP 1600 - Plant Patents

Plant patents aren't test frequently on the Prometric Patent Bar Exam. Know the following highlights: Must be asexually reproduced Bacteria is not a plant Only one claim allowed Two color (if necessary) copies of drawings Claim the plant, not the fruit of the plant No advertising allowed No maintenance fees 1600: Plant Patents: What types of Plants can be patented? Asexually propogating plants are the only kind that may be patented. If a plant reproduces exclusively via pollination/seeding it is not covered (Exception: Some plants can reproduce both sexually & asexually, they are allowed for plant patents). Tubers (like Potatoes, Jerusalem Artichokes) are not allowed to be patented. "Tuber" is used in its horticultural sense. "Plant" is not used in the strict scientific sense so single-cell organisms are not considered 'plants' even if they reproduce asexually. Plants: It is possible to get a utility patent (35 U.S.C. 101) on a plant instead of the plant patent (35 U.S.C. 161) so plant patents are not exclusive to utility patents (although you have to choose one or the other). Term: The term for plant patents is the same as for utility patents: 20 years from the effective filing date. Elements of the patent: Description: The description should have a complete description of the plant, and fully describe the characteristics that make it different from other species of plant or antecedents. The terms used should be scientific botanical terms, not general terms seen in nursery guides. The genus and species name of the plant (in Latin, not genus & species as in generic claims) should be part of the ADS & description (see 37 CFR 1.163) As long as the plant is mentioned, if the description of the plant turns out to be deficient, the applicant is allowed to amend or even completely replace the description to make it sufficient and this is not considered new matter. (It would only be considered new matter if the description were actually for a different plant than the one originally specified). Drawings: (37 CFR 1.165, 1.84): The drawings must be complete and disclose all distinctive characteristics of the plant being claimed (if those characteristics are capable of being visualized). Color: For plant apps, color drawings are allowed with more freedom (no need to file 1.84 petitions). The applicant must provide 2 color copies of any color drawings or photos of the plant. These copies are not required at the filing date (only one original is needed to get a filing date) but examination will not begin until the copies are given to the USPTO. There is no 37 CFR 1.165 requirement for a B&W photocopy of photos on plant applications. Specimens: The applicant may be required to produce specimens that are at the correct level of development for the office to examine.

MPEP 1900 - Protests

Protests are made by member of public who thinks granting patent would be improper. Protests may be filed against a pending application or reissue and must specifically 1) identify application # or serial #, 2) contain a listing a evidence, 3) explain relevance of each evidence, 4) include a copy of each evidence (in English), and 5) provide certificate of service or duplicate copies to PTO. Timing Must be prior to first of either: 1) mailing of Notice of Allowance or 2) 18 month publication date Within 2 months of announcement of filing of reissue application in OG (extension of time available) If after final Notice of Allowance or publication, service to applicant is all that can be done; PTO discards it Protestor's Rights One chance to submit protest Cannot participate in prosecution process after filing protest Cannot file additional papers unless they could not have been filed earlier Applicant typically has 1 month to reply if requested by examiner

MPEP 2400 - Biotechnology

Recent test takers report that submittal of nucleotide and/or amino acid sequence in an application (from MPEP 2422) appears on the Prometric Patent Bar Exam. The following sections of 37 CFR 1.821 are tested: Applicants must provide 1) a paper copy of the sequence, 2) a computer-readable copy of the sequence, and 3) a statement that the paper copy and computer readable copy are identical with an application that discloses nucleotide and/or amino acid sequence. 37 CFR 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications. (c) Patent applications which contain disclosures of nucleotide and/or amino acid sequences must contain, as a separate part of the disclosure, a paper copy disclosing the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of §§ 1.822 and 1.823. This paper copy is hereinafter referred to as the "Sequence Listing." Each sequence disclosed must appear separately in the "Sequence Listing." Each sequence set forth in the "Sequence Listing" shall be assigned a separate sequence identifier. The sequence identifiers shall begin with 1 and increase sequentially by integers. If no sequence is present for a sequence identifier, the code "000″ shall be used in place of the sequence. The response for the numeric identifier 160 shall include the total number of SEQ ID NOs, whether followed by a sequence or by the code "000." (e) A copy of the "Sequence Listing" referred to in paragraph (c) of this section must also be submitted in computer readable form in accordance with the requirements of § 1.824. The computer readable form is a copy of the "Sequence Listing" and will not necessarily be retained as a part of the patent application file. If the computer readable form of a new application is to be identical with the computer readable form of another application of the applicant on file in the Patent and Trademark Office, reference may be made to the other application and computer readable form in lieu of filing a duplicate computer readable form in the new application if the computer readable form in the other application was compliant with all of the requirements of these rules. The new application shall be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified. In the new application, applicant must also request the use of the compliant computer readable "Sequence Listing" that is already on file for the other application and must state that the paper copy of the "Sequence Listing" in the new application is identical to the computer readable copy filed for the other application. (f) In addition to the paper copy required by paragraph (c) of this section and the computer readable form required by paragraph (e) of this section, a statement that the content of the paper and computer readable copies are the same must be submitted with the computer readable form, e.g., a statement that "the information recorded in computer readable form is identical to the written sequence listing."

MPEP 1100 - SIR

Statutory Invention Registration (SIR) (MPEP 1100) by PATENTBAR on DECEMBER 14, 2007 · 0 COMMENTS in MPEP 1100 This section of the MPEP is seldom tested on the exam. The following is general information regarding SIRs. At any time when an application for a nonprovisional patent is pending (and "complete" per MPEP 1100), an applicant may request that the specification and drawings be published as a statutory invention registration (SIR). A SIR is not a patent and does not have the enforceable attributes as such, but it does have the defensive attributes of a patent. When an SIR is approved, a notice of publication will appear in the Official Gazette. A published SIR will be treated the same as a US patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a patent. (A SIR represents a constructive reduction to practice.) Patent rights to the SIR subject matter are waived upon publication of the SIR. Related applications, such as a divisional or other continuing application, may also lose patent protection. 1100: The Statutory Invention Registration (SIR) System: When filing an NPA, the applicant may request that the spec & drawings of the app be published by the USPTO. This publication is called the SIR, and the spec & drawings become publicly available prior art as of the publication date in the SIR. Usually the SIRs get filed by U.S. governmental agencies to act as defenses against other private parties trying to patent the same invention. An SIR may be filed at time of application, or later on as long as the app is in pendency (37 CFR 1.293). Requirements for an SIR Request: A waiver of the applicant's rights to actually get a patent. (Remember, if in the SIR, the application will NOT become a patent!) The fee ($$) A statement that this app meets the standard 35 U.S.C. 112 requirements (proper description/enablement/best mode with claims that meet the definiteness requirements). A statement that this app meets the formal requirements for printing. The app must have all of the 37 CFR 1.51(b) sections: specs, necessary drawings, claims, oaths/declarations. The SIR is examined, but in a limited capacity, just to see if it meets the 37 CFR 1.293 and 35 U.S.C. 112 requirements. However, there is no prior art search for 102/103 rejections (since this will not issue as a patent, it is not important if other prior art already exists). The USPTO will either publish if the app meets the 112 & 1.1293 requirements, or will refuse to publish at which time the applicant has the standard 3 month SSP (with 37 CFR 1.136(a) extension) to correct the app to get it published. If the app is not corrected, the USPTO will issue a final refusal to publish. If the reason for refusal was not due to a 35 U.S.C. 112 rejection, the applicant may petition under 37 CFR 1.181(b) (including facts, briefs, action request, and fee). If the app was rejected due to a 35 U.S.C. 112 deficiency, then the applicant may actually appeal the holding under 37 CFR 1.295(b).

Board of Patent Appeals and Interferences (BPAI)

Structure The BPAI is primarily made up of an Appeals Division and a Trial Division. The Appeals Division, with 69 Administrative Patent Judges, handles appeals of patent examiner rejections, with sections adjudicating different technology areas. The Trial Division, with 11 Administrative Patent Judges, handles contested cases or interference proceedings.[2] The BPAI is headed by a Chief Administrative Patent Judge, currently Michael R. Fleming, with a Vice Chief, currently James T. Moore.[3] [edit]Procedures An applicant can appeal the examiner's decision to the BPAI. The appeal procedure is described in section 1200 of the U.S. Manual of Patent Examining Procedure (MPEP).[4] Typically, appeals to the BPAI are conducted ex parte. Decisions of the BPAI are typically rendered as an opinion. [edit]Appeals Decisions of the BPAI can be further appealed to the United States Court of Appeals for the Federal Circuit (CAFC) under 35 U.S.C. § 141. The decisions of the CAFC may also be reviewed on a discretionary basis by the United States Supreme Court. The U.S. Supreme Court is the ultimate authority on the judicial standards for patentability. The United States Congress, however, can change the patent laws and thus override a decision of the Supreme Court. An alternative path is a civil action against the Commissioner of Patents and Trademarks in the U.S. District Court for the District of Columbia under 35 U.S.C. § 145. Any appeal arising from such a case would then be directed to the CAFC under 28 U.S.C. § 1295. [edit]Constitutionality In 2007, Professor John F. Duffy, a widely recognized patent law scholar, argued that, since 2000, the process of appointing judges to the BPAI has been unconstitutional, since the judges are appointed without approval by the U.S. Senate.[5]

35 USC - Title 35 of the United States Code

Title 35 of the United States Code is a title of United States Code regarding patent law. Part I--United States Patent and Trademark Office Part II--Patentability of Inventions and Grant of Patents Part III--Patents and Protection of Patent Rights Part IV--Patent Cooperation Treaty Contents [hide] 1 Section 102 2 Section 103 3 See also 4 External links [edit]Section 102 35 U.S.C. § 102, entitled "Conditions for Patentability", describes some of the conditions when a patent should not be granted to an inventor based on the concept of novelty. These conditions generally relate to when an invention is already known publicly. Each subsection of section 102 describes a different kind of prior art which can be used as evidence that an invention is already public. This includes inventions that have already been described in other patent applications or publications. It also includes inventions that have been on sale for more than a year before a patent application was filed. Netscape Commc'ns Corp. v. Konrad is an example of a case that focuses on the public use and on-sale criteria of this section. [edit]Section 103 35 U.S.C. § 103 describes the condition of patentability referred to as non-obviousness. This provides that a patentable invention must not have been obvious to a "person having ordinary skill in the art" in view of the appropriate prior art. The full text of this section of the statute can be found at the USPTO [1] [edit]See also United States patent law [edit]External links Works related to United States Code/Title 35 at Wikisource U.S. Code Title 35, via United States Government Printing Office U.S. Code Title 35, via Cornell University U.S. Code Title 35, section 102, via BitLaw Title 35 rendered in verse

MPEP 2000 - Duty of Disclosure

Who has the duty to disclose: each inventor; attorney; other people "substantially involved." (Members of the public are limited to prior art submissions to protest a pending application.) What: All information "material to patentability" must be disclosed. Excludes favorable material. Includes material information at time application is filed or become aware of during prosecution. How: Disclosure must be in writing; if reissue app, disclosure should be filed with it or within 2 months of the filing thereof. Burden of proof: Preponderance of evidence; when information points to the unpatentability, the claim is prima facie unpatentable. Examiners may not investigate deceptive intent. All claims become invalid or unpatentable where fraud or inequitable conduct is found regarding to any claim.