Mpep 600

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MPEP Chapter 600

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parts, form and content of application

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Oaths and Declarations

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MPEP 602
1. They believe themselves to be the true, original and first inventors;
2. They have reviewed and understand the contents of the application;, and
3. They acknowledge their duty to disclose all information known to be material to patentability of the application.

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What is the difference between an oath and a declaration?

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Oath is done before a notary or its equivalent. Declaration is a statement written under the threat of perjury. ALways interchangeable in patent matters.

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What is a supplemental Oath or declaration?

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Can be completed by fewer than all of the original inventors for correction of errors that apply to less than all of the inventors.
If defective or if you add new claims from specification, need to do the supplemental oath.
MPEP 603

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Rule 1.53(b) or 1.53(d)

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Allow for using a copy of an executed oath for a continuation instead of a freshly executed oath.

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Pre/Post AIA rules on alteration of patent applicaiton relation to oath

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Pre AIA had to throw out
Post AIA can make small modifications and can keep oath. (like typo corrections)

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Notice of omitted items vs Notice of Missing Parts

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Bad thing vs ok thing
601.01(d)
Can keep as is or can get a new date as of the modification. Still have to send a letter if you're doing nothing to keep "as is"

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Claims and Infringement Definitions

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"A claim must contain some element, step or limitation which is not found in any piece of prior art"
"to be an infringement each and every claim limitation element or Step must be present in the alleged infringement"
MPEP 608.01(i)
Rule 1.75

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Punctuation and Capitalization of a claim

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THe claim is the object of the sentence.
Comprising is the minimum of copied to be infringement,
Consisting needs the exact combination for infringement. So no infringement if more elements.
A period ends the claim and a comma or semicolor separates elements or steps. Put an "and" after the comma or semicolon for the final thing.

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Means clause

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Means plus function. Cover corresponding elements in specification and its equivalent.
From 112(f)
Covers any known equivalent at the time of filing.

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What is a method and what is an apparatus?
What does "consisting essentially of" mean?

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An apparatus is a combination of elements and a method is a combination of steps.
-Consisting essentially of means that other things can be present as long as they don't change how the active ingredient acts.

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Independent / dependent

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MPEP 608.01(n)
"as in claim ______"

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Markush and Jepson Claims

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Markush: MPEP 2173.05(h) - alternative language "chosen from the group consisting of...." (use and, not or)
"something is ___, ___ or ____" (use or, not and)
Jepson: MPEP 2129 - describing the status quo and the improvement separately. "The improvement comprising...."

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Multiple Dependent claims

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608.01(n) - a multiple dependent claim can't depend on a multiple dependent
Single dependent claims CAN depend on a multiple dependent claim.
Rule 1.75(c)
ALSO.. MDC's can depend from more than one previous claim in alternative only. "OR" instead of "AND"
MDC's are counted as the number of claims from which it depends. Improper MDC are counted as a single claim.

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Why file an ADS?

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IT IS THE ONLY WAY TO ASSERT PRIORITY
37 CFR 1.76
Also, can put off filing oaths until issue fee if you use an ADS.
(Supplemental DS amends original ADS)

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Abstract

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Abstract of the disclosure. 150 words or less, no legal language.

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Substitute Specificaiton

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Rule 1.125 - patent office can require if amendments applicaiton do at any time before issue fee. Accompany:
1. statement that substitute specification has no new matter
2. Marked up copy of substitute specification showing additions and deletions.

(not available in a reissue or a reexamination)

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Color Drawings
(Photographs?)

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RUle 1.84 - need a petition granted and send 1) fee, 2) 3 sets of color drawings / photographs 3) special paragraph about requesting
MPEP 608.02 - photographs discouraged, but allowed.
PS you have to keep any models you submit and maintain it until the end of the patent life

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Timing for an IDS

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37 CFR 1.97(b),(c),(d)
1. If within 3 mo of filing or done before 1st office action, only IDS necessary
2. IF after 1st action but before final action need either statement or fee. Statement is that you didn't get it or sent late from foreign patent office. Or you've known about it less than 3 months.
3. IF after final action, close of prosecution or allowance, but before payment of issue fee a statement and a fee are required.

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Content for an IDS

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MPEP 609 - Disclose any material information
If argument for a good rejection or is inconsistent or contrary to an argument of a position taken in the patent office
NO translations necessary, but give a statement of relevance.
Need list of individual items submitted. Don't need copies of published us applications or US patents, can give by number only.

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REquest for information

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MPEP 704.1 / 37 CFR 1.105
Failure to reply governed by 1.135, 1.136
Everybody who has a duty to disclose, has a duty to look at the request and determine if they have any information.