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24 Cards in this Set

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When are patent applications published?
18 months after filing

(unless applicant has filed nonpublication request)
How may a requester seek information regarding a patent application?
Four Ways:

(1) initiate phone call (telephone call)
(2) visit USPTO's File Info Unit or Tech Center (in-person request at FIU or TC)
(3) submit a written request (petition)
(4) visit USPTO website and enter Patent Application Retrieval system (go online to PAIR)
What are the three main ways the USPTO might provide info to a party in response to a request?
(1) By providing status information

(2) By providing a photocopy of application file

(3) By allowing physical access to application file
Can a patent application be published prior to the end of 18 months?
Yes, at the request of the applicant
When will an application not be published?
If the application is...
(1) no longer pending;
(2) subject to a secrecy order;
(3) a provisional application; or
(4) an application for a design patent
What is status information?
(1) Whether the application is pending, abandoned or patented
(2) Whether the application has been published
(3) The application numerical identifier
(4) Whether another claims the benefit of the application and its status information
What are the two ways in which permission to file a patent application abroad may be obtained?
Either:
- petition for a foreign filing license may be granted
OR
- applicant may wait 6 months
after filing a patent application in the USPTO (when license is no longer required as long as no Secrecy Order has been imposed)
What is a foreign filing license?
A statement in writing from the USPTO granting permission to file an application on an invention in a foreign country
When is a foreign filing license required?
Before filing an application in another country (if invention is made in the US)
In what ways may a foreign filing license be issued?
(1) By indication to the applicant
by presence of “Foreign Filing License Granted”on the filing receipt and a date on which the license becomes effective (scope of license is broad)
(2) By explicit petition (scope of license is indicated on license)
(3) By retroactive license
When is a foreign filing license not required?
If the invention is made outside of the US (even by an American)
Can a foreign filing license be obtained retroactively?
Yes, if an illegal foreign filing occured by mistake and without deceptive intent
What must be included in a petition for a retroactive foreign filing license?
- List of each foreign country in which the unlicensed patent application material was filed
- Dates on which the material was filed in each country
- Verified statement (oath or declaration) containing:
(i) statement that subject matter in question was not under a secrecy order when it was filed abroad and is not currently under a secrecy order
(ii) showing that license has been diligently sought after discovery of the proscribed foreign filing, and
(iii) explanation of why material was filed abroad through error and without deceptive intent without license first having been obtained
- Required fee
What are the penalties for not obtaining a foreign filing license?
Loss of patenting rights in the US and possible fine or imprisonment
How long does a secrecy order last?
A Secrecy Order remains in effect for a period of 1 year from its date of issuance
What is a secrecy order?
An order that the invention be kept secret when granting of a
patent would be detrimental to the national security
What are the three types of secrecy orders?
(1) Secrecy Order and Permit for Foreign Filing in Certain Countries
(2) Secrecy Order and Permit for Disclosing Classified Information
(3) Secrecy Order
What types of files are available to the public for inspection?
- Patents
- Abandoned Published Applications
- Statutory Invention Registrations (SIR)'s
- Reissue Applications
- Reexamination Proceedings
- Interference Files (only after termination of interference or award of priority or judgment entered)
What are the three types of application status?
Pending, Abandoned, Issued
What is an EPO patent application?
European Patent Office application
What is a PCT patent application?
An international patent application (Patent Cooperation Treaty)
What is the purpose of service (telling applicant/owner) to seek access to a patent application?
The purpose is to give the applicant/owner a chance to protest access to the whole file
What is the Patent Term Guarantee?
The Patent Office guarantees that a first action will be made within 14 months, a reply too an official action or an appeal brief within four months, and to issue within four months after the issue fee has been paid
What special circumstances are acceptable when seeking access to pending applications?
- When owner is using the patent application to interfere with a competitor's business
- When the application is referred to in an issued patent
- When a patent relies upon the application for priority