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162 Cards in this Set
- Front
- Back
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When does a US Patent End
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20 yrs from earliest domestic event
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What if 1 inventor in a group screws up the oath
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Only that 1 inventor has to sign the supplemental oath
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Notice of omitted items
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a minimum requirement is missing. Won't get filing date until cured.
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What is the scope of "comprising"
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everything in spec and their equivalents
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What is the scope of "consisting"
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limited to what is written
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What is the scope of "consisting essentially of"
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what is listed & their equivalent that don't materially change the app
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What is the form of markush claims
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"chosen from the group consisting of" coupled with "and"; "or"
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What can be cited in a reissue
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anything including new material and all the old objections/rejections
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Who can ask for a reissue
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only the owner
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How can you broaden claims after your patent issues
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Ask for a reissue within 2 yrs of patent issuing
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Recipe for reissue
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make an offer to surrender the original patent; get consent from assignee, copy of spec & claims & new oath & fee on one side of paper (new oath says that there is at least 1 error with original patent); pay fee; file IDS
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What if you fail to file a divisional during restriction practice
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You cannot file a continuation to claim the other disclosed invention
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Amendment format during reissue/reexam
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add - underlined; deleted - square brackets; they are cumulative
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Differences b/t reissue/reexam
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can broaden claims in a reissue; can file a continuation in a reissue
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What can be cited in a reexam
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only patents and other printed publications
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Can you get extensions during a reissue
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Yes, but only for cause (have to ask ahead of time)
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What can a certificate of correction be used for
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fixing typos; fixing inventorship after issue; fixing claim of priority
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When can priority be fixed using a certificate of correction
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When a proper claim has been made and perfected in a prior app
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What is the claim in a design app
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the ornamental design for (name of invention) as shown in the drawing
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What are the maintenance fees for a design app
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none
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What does the preamble in a design application have
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name of inventor and name of invention
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What is the term for a design app
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14 yrs from issue
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What type of figures can be submitted
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B/W photographs & Color drawings
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What is the amount of time for foreign design app priority
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6 months
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What type fo plants can't be patented
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bacteria & tuber propogated (Jerusalem artichoke or potato)
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What are the requirements for a patentable plant
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invented it yourself or discovered it in a cultivated land; and asexually reproduce the plant
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How many figues can you submit
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2 sets of drawings & 1 B/W photocopy
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How many claims are in a plant patent
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one
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What can an examiner request for a plant pattent
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a specimen
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How can you overcome a rejection from an identical claim in another app
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cancelling claim from one application
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How can you overcome a rejection from an obvious variant in another application
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filing a terminal disclaimer
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When do you get a restriction
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When the inventions are each able to support separate patents and are either: (1) independent - subjects are unconnected in design, operation, or effect; (2) distinct - capable of separate manufacture, use, or sale & patentable over each other
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How can you avoid a restriction for an old app
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For apps pending at least 3yrs prior to June 8, 1995, restriction can be avoided by paying a fee if same restriction was not brought prior to June 8, 1995 & applicant did not cause the restriction to issue.
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How can you choose patent terms for older apps
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If an app issues that was filed prior to June 8, 1995, can choose 20yr from filing or 17yr from issue
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A process and apparatus are distinct if it can either be shown that:
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(1) Process can be calimed by a materially different apparatus or by hand or; (2) apparatus can be used in a materially different process
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An apparatus and product are distinct if it can either be shown that
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(1) Apparatus is not the obvious one for making the product and can be used ot make other products; (2) Product claimed can be made by a materially different apparatus
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How is double patenting possible and what are the types
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Possible only if common inventor or assignee; types are same invention and obviousness
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What is same invention double patenting
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you claim something that is indistinguishable from what is claimed in a prior app; need to cancel claim
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What is obviousness double patenting
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occurs if you file a series of successive applications of successively better inventions; you can file a terminal disclaimer
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What 4 things can be patented
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a machine; a manufacture(a thing you turned into something); a composition of matter(paint, drug); process
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Can an examiner use prior art against you that published after your filing date
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Yes, but only to show the state of the art at the time of filing
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Can abandoned apps be used as prior art
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yes, but only if they were published or referenced in a published document
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When is a thesis considered published
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when it is cataloged
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When is an oral presentation considered published
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if copies of the presentation handed out to the public
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When is something sent in the mail considered prior art
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On date of receipt
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Steps for figuring out a 103 rejection
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Determine scope and content of prior art, determine PHOSITA, see if PHOSITA would have seen to combine the prior art or if prior art says to combine, see if PHOSITA would have arrived at your invention by combining
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How can you rebut 103 rejection
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secondary considerations - unexpected results, commercial success, longfelt need, failure of others
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112 first paragraph requirements
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(1) written description - sufficiently described to show that inventor owned at filing; (2) enablement - PHOSITA would not have to engage in undue experimentation in relation to field
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Can you use negative limitations in claims
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Yes, but only in chemical patents
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How do you start a patent appeal
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Send notice and pay money
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How long after you send your notice is your appeal brief due
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2 months after the PTO receives the notice
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Can you extend the appeal brief due date
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Yes, by up to 5 months for a total of 7 months
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How long are the due dates after the appeal brief is filed and are they extendable
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2 months and they are extendable for cause
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What must the appeal brief contain
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name of real party of interest; identify related appeals or interferences; status of claims; status of all amendments; summary of invention; arguments directed toward each and every invention; appendix of claims actually on appeal
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After you file your appeal brief, what can the examiner do
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allow your patent or send you an examiner answer
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What can you do after you receive the examiner answer
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Within 2 months you can file a reply brief and/or request an oral hearing
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After the board decides your appeal what can you do
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(1) If all rejected & board affims, you have 2 months to appeal to CAFC or dist ct; (2) Affirmed in part & reversed in part - same as above, but allowed will issue if you do nothing; (3) board can issue own grounds for rejection - you can then reopen prosecution before examiner or ask board for reconsideration
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Can you defer issuance
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Yes, but only for a month and only for good reason
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PTO can withdrawl patent from issue because
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mistake by PTO; violation of duty to disclose discovered by PTO; discovery of unpatentability; interference is required
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Inventor can withdrawl patent from issue because
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filing a continuation; getting an IDS considered; a claim is unpatentable (have to include a statement identifying unpatentable claims and include an amendment and explanation why amended claims are now patentable)
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When are maintanence fees due
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3.5, 7.5, 11.5
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What is the term for a utility app
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if filed before June 8, 1995 - 20 yrs from filing or 17yrs from issue; if filed or continued after June 8, 1995 - 20 yrs from filing
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What are the minimum requirements for PTE
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app filed on or after May 29, 2000, overall pendency longer than 3 yrs, and another specific event
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How long do you have to wait for first action or hearing to qualify for PTE
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14 months
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How long do you have to wait for a PTO response to qualify for PTE
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4 months
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How long do youh have to wait for a successful appeal to qualify for PTE
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4 months
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How long do you have to wait for an app to print to qualify for PTE
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4 months
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How can you cut off your PTE eligibility
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file a continuation
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How long do you have to challenge PTE calculation
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6 months from issue
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What is the term for a plant app
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if filed before June 8, 1995 - 20 yrs from filing or 17yrs from issue; if filed or continued after June 8, 1995 - 20 yrs from filing
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What is needed for US app reasonable royalties
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app going to publish, tell infringers what is infringing what claim; infringed claims in app have to be substantially similar to final claims
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What is needed for PCT app reasonable royalties
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having english translation on file & giving notice
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How do you enter the PCT national phase via international application
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send a copy of your international app and fee by 30 months; oath and trans can come up to a month later
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How do you enter the PCT national phase via US application
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file regular US app within 30 months of priority and claim priority from PCT
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What do you need to get a PCT filing date
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request, designation, name of applicant, spec, sig of 1 inventor
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What can show up later when filing a PCT application
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abstract & money
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What is the deadline for changing PCT priority claim
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16 months of very original priority or 4 months of filing PCT
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What is the unity of invention PCT standard
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distinct inventions will be kept together if their point of novelty is the same (i.e. composition & method of making the composition)
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What is a PCT 102(e) date
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apps filed before Nov 29, 2000 - FOT rule, on or after is international filing date if designates US and publishes in English
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What is the 102(b) date for a PCT
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international filing date
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What is the term of a US patent stemming from PCT
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20 yrs from international filing date
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What is the time limit on getting a PCT started
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12 months from priority
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When are the preliminary opinion and international search report published
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16 months from filing international app
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When is the international app published
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18 months from priority
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What is the deadline for filing PCT amendment and phase 2 examination request
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22 months from priority or 3 months from preliminary opinion
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When is the limit for entering the national stage
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30 months from priority
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Who can file an international app at the USPTO
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a us citizen or resident
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How many indicia do you need when filing an amendment and what can be used
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3 - inventor's name, filing date, title, app number, examiner name, group art number
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What is a 131 affidavit used for
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dates
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What is a 132 affidavit used for
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everything, except for dates
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How can you spot a method claim
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a combination of steps using -ing words and the preamble tells where the steps will take you
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How can you spot a product plus process claim
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usually claiming a thing by the method used to create it (i.e. superglue - glue made by the process of mixing A and B in darkness and adding light)
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What are PTO keywords for a design claim
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aesthetic, outward appearance, ornamental appearance
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What does 112 first paragraph require
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written description, enabling, best mode
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What does 112 second paragraph require
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have to particularly point out and distincly claim what the applicant believes he invented
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What does 112 sixth paragraph require
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means plus function claims are contrued according to the spec and spec's equivalence according to a PHOSITA
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What is the test for 103 obviousness
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Graham test - determine scope and content of prior art, determine differences between prior art and invention, determine the level of skill in the prior art. Also need a suggestion to combine references or PHOSITA could see to combine, combination must include everything claimed, need a reasonable likelihood of success. A suggestion of success is all you need.
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What is not patentable under 101
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scientific principles, naturally occuring phenomena, atomic weapons, devices useful only for illegal purposes, method of doing business
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What can you file to avoid abandonment when you receive a final office action
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response, appeal, continuation
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What rule lets you file an amendment after final
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116
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What can be amended after final
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reduce issues on appeal (cancel claims); adopt examiner's suggestions; present claims in better position for appeal
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What is transitional after final and what rule is it
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129 - if facing final in an app pending before June 8, 1993, and facing final rejection after June 8, 1995, pay examiner fee and final is withdrawn (2X)
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What rule is RCE and how do you do it
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114 - can file anytime after the close of prosecution, but before issue fee, abandonment, or end of court action. Need to file request, response, and pay fee.
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What is a CPA
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an RCE for a design app; considered a new app
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What are the free petitions to make special categories
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illness, environment, energy, age, terrorism, superconductivity
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What are the fee petition to make special categories
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prospective manufacture, infringement, safer DNA, HIV, small entity biotech, for the asking (fee, search report, distinguish from search report)
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When can you get a suspension of action
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when no outstanding responses and ask for a definite amount of time (free if cause, fee if no cause)
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Exceptions for automatic extensions
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when PTO says so, appeal, request for oral hearing, anything in an interference, re-exam, IDS, issue fee, notice of omitted items, refund, filing formal drawings
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What is the max deadline for a notice of omitted items
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2 months
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What is the deadline for a refund
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3 months
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What is the deadline for filing formal drawings
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3 months
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What is the 2 month rule
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If you file a reply to a final within 2 months of the final rejection post mark and the USPTO doesn't send you an advisory action within 3 months of postmark; abandonment is extended until the PTO mails the advisory or 6 month deadline, whichever comes first.
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What can you extend for up to 7 months because they aren't statutorily set
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notice of missing parts and appeal brief
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What is the deadline for an examiner amendment
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6 months
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What if you forget to send something in for a re-exam
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you get 1 month to correct it if you orignally file timely
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When does the PTO tell you your app is abandoned after rejection
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7 months after final rejection
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Do you need an extension for an interview
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no
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When do you have a right to an interview
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after the first office action, unless a continuation
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When can you submit amendments
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before any significant action is taken, after first office action, after final, after notice of allowance
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What rule governs amendments after notice of allowance and what is it
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312 - 4 whys - why needed now, why not done before, why it is still patentable, who no new issues presented
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What do you need to do to amend spec in regular US app
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hand in marked section - strike through or double bracket to take out; underline to add
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What do you need to do to amend claims in regular US app
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hand in marked claims - use status indicators; strike through or double bracket to take out, underline to add
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What are rejections
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based on law - 101, 102, 103, 112 - content of claims
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What are objections
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based on rules - 37 CFR … - form of claims
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What can you swear back
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102(a) and 102(e)
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Where do 102 events and publications have to occur
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events in US, but publications anywhere
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When can an inventor not hurt himself under 102
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102(a) & e
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When is 102(d) a bar
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when an inventor files an app in a foreign country more than 1 yr before the US app and it issues before the US app is filed
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What is the 103C obviousness exception
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cannot use a 102 e,f,g reference against the entity who owns or is assigned it
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What is 102(g)(1)
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interference when 2 applicants make the same exact invention (same disclosure and claims) - first to invent wins if not ASC (abandon inferred for short here)
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What is 102(g)(2)
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interference when someone makes the same thing prior in US and was not ASC, only 1 person applies
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What is the window to record an assignment
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3 months
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What child application is an assignment not good for
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CIP
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What form does an assignment need to be in to be legal
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written
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What is the time to file for a notice of missing parts
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2 months, extendable to 7
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What is a certificate of mailing good for
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anything except a new application, papers for an interference, and PCT
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What is obviousness type double patenting, is it statutory, how do you get around it.
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when your invention is an obvious varient of a commonly owned previously filed invention, it is non statutory, you get around it by filing a terminal disclaimer.
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What is same invention type double patenting, is it statutory, how do you get around it.
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It occurs when one commonly owned/invented invention has the same scope of claims as examined application, it is statutory, you cannot file a terminal disclaimer to get around, must cancel claims.
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What are the dates for maintenance fees
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from issue: 3.5, 7.5, 11.5
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Term of a design patent
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14 from issue
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Term of an utility patent
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20 years from filing
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What is the unextendable time period for filing a DOE and NASA statement
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30 days
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What is the normal shortened statutory period for responding to a restriction requirement
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1 month
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What is the deadline for responding to a notice of missing parts
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2 months
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What is the period for responding in a reexamination
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2 months
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What is the period for all deadlines on appeal
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2 months
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What is the time for filing a petition after decision on reconsideration by examiner
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2 months
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What is the unextendable period to pay issue fee
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3 months
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What is the unextendable period to file formal drawings
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3 months
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What is the deadline after issuance for copying claim of issued patent or published application for interference
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1 year
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What is the foreign priority deadline for an utility application
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1 year
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What is the foreign priority deadline for a design application
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6 months
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Time limit for reviving patent lapsed for failure to pay maintenance fee
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2 years
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Date on which US apps are automatically published and IAs potentially can accrue a 102(e) date
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Nov 20, 2000
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What foreign inventive activity can you use to swear back
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invention completion date
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What is the WTO date
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Jan 1, 1996
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What is the NAFTA date
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Dec 8, 1993
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What is the date of the 1997 rule changes
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Dec 1, 1997
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What are the deadlines for claiming priority in a PCT
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Can be added or changed within 16 months of priority and MUST be made within 4 months of the international application date
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When can Art 19 amendments be made & what can they cover
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they can cover the claims & are made after the international search report and written opinion are returned (16 months)
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When can Art 34 amendments be made and what can they cover
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they can be made by the later of 22 months from IA date or 3 months after search report is mailed
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when is the deadline for the demand for preliminary examination
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30 months
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