Mpep 200

Front 1

What is the difference between the treatment of national and national stage applications?

Back 1

Restrictions practice only applies to national stage applications.
There is a filing date awarded without oath or declaration with national applications.
There is no filing date until oath or declaration is submitted and the fee is paid.

Front 2

Can PCT applications be filed for design or plant patents?

Back 2

No, only for utility patents.

Front 3

What is the difference between a foreign priority applilcation and domestic priority application?

Back 3

The date of a prior art US patent under section 102(e) is its filing date.
The date of prior art for a foreign filing is not its filing date until the patent is issued.

Front 4

Are omitted claims considered prior art under section 102(e) in a US filing that issues as a patent?

Back 4

No, not under 102(e).
Omitted claims under 102(a) will be considered prior art as of the issue date of the patent.

Front 5

What is the difference between 35 USC 119 and 35 USC 120?

Back 5

35 USC 119 has to do with determining priority for foreign applications.
35 USC 120 has to do with determining priority for domestic applications.

Front 6

What happens if the deadline to file an application for a foreign priority application falls on a weekend or holiday?

Back 6

The deadline is automatically extended to the first business day following the weekend or holiday.

Front 7

When is the deadline for filing a design patent originally patented in a foreign country?

Back 7

Six months.

Front 8

When is the deadline for filing a utility patent originally patented in a foreign country?

Back 8

One year.

Front 9

Does the date that a US patent becomes prior art under 102(e) move back as a result of a foreign priority?

Back 9

No.

Front 10

Does a filing in a freign country that is withdrawn, abandoned, or otherwise disposed of preclude priority based upon a subsequent application filed under 35 USC 119?

Back 10

In some cases it does not (e.g. if an application is modified in another country because of incompleteness, then the one year term for filing in the US begins when the application is fully complete, not the original filing date.

Front 11

What must an applicant do to preserve foreign priority?

Back 11

Ask to be given the benefit.
File a certified copy of the original foreign application.

Front 12

What is an EPO application?

Back 12

European Patent Office application

Front 13

Can all countries be eligible for obtaining foreign priority?

Back 13

No, only those in MPEP 201.13.

Front 14

What are the two magic phrases when dealing with correction issues?

Back 14

Without deceptive intent.
With written consent of the assignee.

Front 15

Can inventorship be changed in issued patents?

Back 15

Yes, under rules 1.48(a) and 1.48(b).

Front 16

What does 1.48(a) say?

Back 16

An error occured and inventorship was wrong from the beginning.

Front 17

What does 1.48(b) say?

Back 17

Inventorship was intially correct but amendment or cancellation of claims deletes the contribution of one or more inventors.

Front 18

What does 1.48(c) say?

Back 18

If an application having unclaimed subject matter invented in whole or part by unnamed inventors is claimed, then an amendment of the application should be made to add the unnamed inventors.

Front 19

What must a 1.48(a) filing be accompanied by?

Back 19

A petition including statement of lack of deceptive intent (no proof req) signed by each person being added and each person being deleted.
Oath or declaration executed by actual inventors.
The required fee.
A required written consent of assignee.

Front 20

What must a 1.48(b) filing be accompanied by?

Back 20

1 A petition including statement that the inventor's contribution is no longer being claimed.
2 The required fee.

Front 21

What must a 148(c) filing be accompanied by?

Back 21

1 A petition including statement of lack of deceptive intent (no proof req) signed by each person being added.
2 An oath or declaration by the actual inventors
The required fee.
3 A written consent by the assignee.

Front 22

What do Rules 1.48(d) and 1.48(e) state?

Back 22

Errors of inventorship in provisional applications.
In 1.48(d), inventors can be added.
In 1.48(e), inventors can be deleted in provisional applications.

Front 23

Is a new oath or declaration required when correcting inventorship in a provisional application?

Back 23

No, because oaths or declarations are not filed in provisional applications.

Front 24

What documents in patent applications determine inventorship?

Back 24

The oath or declartion in a non-provisional application, and by inventors listed on the cover sheet in a provisional application.

Front 25

What does the patent office recommend when at least one named inventor is correct (MPEP 201.13)?

Back 25

File a Continuation Application under Rule 1.53(b)

Front 26

In which three 1.48 rules is no new oath or declaration required?

Back 26

Rule 1.48(b), 1.48(d), 1.48(e)

Front 27

What happens if the 1 year due date to replace a Provisional Application falls on Saturday, Sunday or a holiday?

Back 27

The due date is the first working day after the holiday or due date.

Front 28

Are IDS's permitted in provisional applications?

Back 28

No.

Front 29

Can non-provisional applications be converted to provisional applications?

Back 29

Yes, but only within the first year of filing.

Front 30

What 3 or 4 things are necessary in Provisional Applications according to MPEP 201.04(b)?

Back 30

1. A specification satisfying first paragraph of 112.
2 A necessary drawing.
3 A required fee.
4 No oath or declaration required

Front 31

Can an application replacing a provisional application be filed by Express Mail on Saturday, Sunday, or a holiday?

Back 31

Yes, provided your post office will accept it.
You can also wait for the first day after the holiday.

Front 32

What does a cocmplete provisional application comprise of MPEP 201.04(b))?

Back 32

A cover sheet identifying the application as a provisional applicant.
It comprises of the name of the inventor, residence of each invetnor, title of invention, name and registration number of the attorney or agent, the docket number of the filer, and the ccorespondence address.
A specification as prescribed by 35 USC 112.
A drawing when necessary to understand invention.
A required filing fee.

Front 33

What happens if the cover sheet is missing or incomplete of the filing fee is not paid in a provisional applications?

Back 33

A Notice of Missing Parts is sent.
Two months are given to complete filing or else it is abandoned.

Front 34

What is an application without a proper cover sheet identifying it as a provisional application treated as?

Back 34

It is treated as a non-provisional application.

Front 35

Does the time that the provisional application is pending count against the 20 year from effective filing date term of a US Patent?

Back 35

No, the term "parent" is not used to describe a provisional application, but solely in conjunction with 35 USC 120 domestic priority.

Front 36

What type of patent can a provisional application be filed for?

Back 36

A provisional application can be filed only for a utility patent.

Front 37

What are 7 things you cannot do for Provisional Applications?

Back 37

1 Claims.
2 Oaths/declarations.
3Examination or amendment.
4 Weekend/holiday extension.
5 Design applications.
6 Claim for priority.
7 IDS statements.

Front 38

Is a substitute application a copending application?

Back 38

No, a substitute application is an entirely new application.

Front 39

What are 4 types of applications made after the initial?

Back 39

1 Continuation.
2 Continuation-In-Part or C-I-P.
3 Substitute.
4 Divisional.

Front 40

What is a Continuation?

Back 40

Second, third, etc. application by the same applicant for the same invention.
Typically filed to restart prosecution after a Final Rejection rather than appeal.
If Fresh papers with new oath, it is according to 1.53(b).
If Based on parent application using same file (1.53(d)).
Must be filed before parent application becomes abandoned.

Front 41

What is a Continuation in Part or C-I-P?

Back 41

Repeats some substantial portion of all of the earlier applications.
Adds new matter.
Can be filed only with fresh set of papers with new oath (1.53(b)).
Must be Filed before parent application becomes abandoned.

Front 42

What is a Substitute application?

Back 42

Same disclosure as an earlier application.
And it is Not copending with other application.

Front 43

What is Divisional application?

Back 43

It can be filed for a distinct or independent invention carved out of a pending application and claiming only subject matter disclosed in earlier parent invention.

Front 44

What is a C-P-A?

Back 44

Continued Prosecution Application.
It is Defined by Rule 1.53(d).
This has the same serial number as its parent and no reference to the parent is inserted into the specification.

Front 45

What claims are excluded from being carried over in a C-P-A?

Back 45

The election of the parent application.

Front 46

Can C-P-A's be filed for provisional applications or P-C-T applications?

Back 46

No, cannot be filed for provisional applications.
Can be filed for PCT applications but only if they are in a national stage