Nonprovisional Patent Applications - Pi Patent Exam Prep

Front 1

What is required to obtain a filing date under 37 CFR §1.53(b) & (f)? How is it maintained?

Back 1

For filing date:
1. Specification,
2. Drawing if necessary,
3. At least one claim.
To maintain the filing date (may be submitted later):
1. Oath or declaration,
2. Filing fee.

Front 2

Methods of transmitting a patent application for filing in the USPTO:

Back 2

1. Hand delivery,
2. Regular U.S. Mail. The filing data is when the application is actually received by the USPTO,
3. "Express Mail Post Office to Addressee." The filing date is when the application is noted as received by the USPO. Use Express Mail drop boxes at your own risk. Paper(s) express-mailed should have mailing label number as proof (if lost),
4. Electronic.

Front 3

How can you correct a filing date?

Back 3

1. Prompt submission is required,
2. Copy of mailing label,
3. Proof of deposit before last scheduled pickup, if date on label is incorrect,
4. Copies of papers express-mailed, showing mailing label number,
5. Copy of postcard received, if any.

Front 4

Format of a nonprovisional specification:

Back 4

1. Title of the invention,
2. Cross reference to related applications,
3. Statement regarding federally sponsored research,
4. Names of parties to a joint research agreement,
5. Background of the invention,
6. Brief summary of the invention,
7. Brief description of the views of the drawings,
8. Detailed description of the invention,
9. Claims,
10. Abstract,
11. Sequence listing, if on paper.

37 CFR §1.77.

Front 5

May you incorporate by reference essential material from a non-patent document?

Back 5

No. Essential material may only be in an issued US patent or pending US patent application owned commonly with the present application.

Front 6

What does "essential material" mean?

Back 6

It means everything necessary to support the claims, otherwise it is nonessential material.

Front 7

How can essential material be incorporated in a patent if it was originally improperly incorporated?

Back 7

By amendment, along with a statement that the added material is the same as that previously incorporated by reference and includes no new matter.

Front 8

What is the purpose of the deposit of biological material rules?

Back 8

The purpose of the deposit rules is to insure that a deposited biological material is necessary for enablement.

Front 9

Does a deposit create a presumption that the deposit is necessary for enablement?

Back 9

No.

Front 10

When must a deposit of biological material be made?

Back 10

Must be made before, or during the pendency of, the application but no later than 3 months after the Notice of Allowance.

Front 11

What is required if a deposit of biological material is made after filing an application?

Back 11

A statement must be submitted corroborating the fact that the deposited material is the material identified in the application.

Front 12

What is required for submitting a Nucleotide and Amino Acid sequence?

Back 12

A paper copy or compact disc copy, a computer readable copy, and a statement of their identity are required (the identity of the paper, disk).

Front 13

What is the affect of the issuance of a patent with a sequence?

Back 13

Creates a presumption of the listing's compliance with the rules.

Front 14

How are amendments to the sequence listing made?

Back 14

New sheets to the paper copy and/or a new CD copy, together with a statement that they contain no new matter.

Front 15

Can a multiple dependent claim depend from another multiple dependent claim?

Back 15

No.

Front 16

What is the correct wording for multiple dependent claims?

Back 16

Must refer to preceding claims in the alternative. Cannot refer to following claims.

Front 17

When does the USPTO enter a valid multiple dependent claim added by amendment?

Back 17

When the fee is paid.

Front 18

How are fees calculated for multiple dependent claims, or claims depending from multiple dependent claims, or improper multiple dependent claims?

Back 18

The multiple dependent claims and claims depending from them are equal to the number of claims to which direct reference is made. Incorrect claims are counted as one claim.

Front 19

Is an abstract required? For a filing date?

Back 19

The abstract is required for a complete application by 37 CFR 1.72, but not for a filing date.

Front 20

When must a drawing be filed to obtain a filing date?

Back 20

Where necessary for the understanding of the subject matter sought to be patented.

Front 21

Can an applicant obtain a filing date if an unnecessary drawing is required by the examiner?

Back 21

Yes. the examiner requires its submission.

Front 22

What is required for an Oath or Declaration?

Back 22

1. Identify application and inventor(s),
2. State that:
- Inventor(s) has reviewed and understands,
- Is original and first,
- Knows duty to disclose material information.
3. If foreign priority is claimed, identify foreign application(s) on which priority is based, and all earlier-filed corresponding foreign applications;
- Unless identified in an application data sheet.
4. If a CIP, acknowledge duty to disclose.

Front 23

What is a small entity?

Back 23

1. An independent inventor or other individual (e.g. assignee),
2. A small business concern (under SBA standards 500 or fewer employees including all affiliates) or,
3. A nonprofit.

Front 24

How is small entity status claimed?

Back 24

The assertion may be made in the form of a written statement, signed by:
1. A registered attorney or agent,
2. An inventor or,
3. An assignee.

Front 25

When is determination of small entity status determined?

Back 25

At issuance or maintenance.