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178 Cards in this Set
- Front
- Back
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35 USC 102 (a)
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You are entitled to a patent unless:
someone else did it before your date of invention provably. -known or used by others in this country -patented/described in a printed publication in this or a foreign country before the invention thereof by the applicant for a patent. an inventor can never prevent himself from obtaining a patent under 102(a) |
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Invention is?
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Conception + RTP or CRTP (this is the filing date)
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Known or used by others
35 USC 102 (a) |
Known: has to generally know how it works. Not just mere knowledge
Used: used by public/known by the general public. Not secret use |
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35 USC 102 (b)
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You are entitled to a patent unless:
-invention was patented or described in a printed publication ANYWHERE OR -in public use or on sale in this COUNTRY more than ONE YEAR prior to the date of the application for patent in the U.S. this has to do with the public domain. these inventions go into the public domain if a patent is not obtained within a one year of these events. -public use or sales activity must take place in the US |
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When is public use a bar?
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when in the U.S.
Mere knowledge of the invention by the public does not warrant rejection under 102(b) |
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Exception to 32 USC 102(b) - The Experimental Use Exception
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Experimental use in public is an exception to public use or sale bar in 102(b).
Factors to consider. This is personal to the inventor. Your own work cannot be held against you. Can not look at another's work. |
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What is an offer to sale?
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If the offeree thought reasonably that you were offering to sell the product
Requirements: invention must be ready for patent -- must be capable of being done/RTP or capable of being RTP. Inventor's consent is not necessary |
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35 USC 102(c)
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entitled to patent unless you have abandoned an invention.
Not the same as abandoning a patent application requires you pubilically disparaging your work Saying in a journal that you've tried something and it did not work out. Not the mere passage of time. |
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35 USC 102(d)
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If I file in Canada, what US is telling you is that you have one year to file your patent in the US. If more than 12 months you are at risk of losing right to patent in the US IF the foreign patent issues before you filed your US patent.
Design patents - only 6 months Requires 1. Foreign application 2. Passage of 6 (design) or 12 months 3. Issuance of foreign patent 4. Must be the same applicant 5. same invention If you don't act in a year, you are giving up foreign priority The fact that the patent does not publish does not matter |
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35 USC 102(e)
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(1) covers published applications and look at the date it was filed
(2) covers published patents and looks at the date it was filed relies on the earliest effective filing date - any priority being asserted - this is a CIP, division of... patent office goes all the way back to the earliest filed application. |
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Exception to 32 USC 102(b) - The Experimental Use Exception
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Experimental use in public is an exception to public use or sale bar in 102(b).
Factors to consider. This is personal to the inventor. Your own work cannot be held against you. Can not look at another's work. |
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What is an offer to sale?
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If the offeree thought reasonably that you were offering to sell the product
Requirements: invention must be ready for patent -- must be capable of being done/RTP or capable of being RTP. Inventor's consent is not necessary |
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35 USC 102(c)
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entitled to patent unless you have abandoned an invention.
Not the same as abandoning a patent application requires you pubilically disparaging your work Saying in a journal that you've tried something and it did not work out. Not the mere passage of time. |
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35 USC 102(d)
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If I file in Canada, what US is telling you is that you have one year to file your patent in the US. If more than 12 months you are at risk of losing right to patent in the US IF the foreign patent issues before you filed your US patent.
Design patents - only 6 months Requires 1. Foreign application 2. Passage of 6 (design) or 12 months 3. Issuance of foreign patent 4. Must be the same applicant 5. same invention If you don't act in a year, you are giving up foreign priority The fact that the patent does not publish does not matter |
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35 USC 102(e)
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(1) covers published applications and look at the date it was filed
(2) covers published patents and looks at the date it was filed relies on the earliest effective filing date - any priority being asserted - this is a CIP, division of... patent office goes all the way back to the earliest filed application. |
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Types of Access
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A. Interference File
B. Status C. Attorney, Applicant & Assignee D. Abandoned Unpublished Application E. Assignment Records |
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General Rule for Access
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Both unpublished pending and abandoned applications are maintained in confidence by the PTO, and access and copies can be had only for certain exceptions.
All issued patent files and published application files are available to the public for viewing and copying. This includes reissue files and reexamination files. |
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Express Abandonment to Avoid Publication under 37 CFR 1.138
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may require petition under 1.138(c)
need 4 weeks remaining before publication order to succeed PTO suggests such petitions should be faxed directly to the Pre-Grant Publications Division |
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Access - When is an Interference File accessible/not accessible
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An interference file is available if the interference involves:
a patent, reissue, or application which has been issued as a patent if: (1) the interference has been terminated OR (2) an award of priority has been made. e.g. interference was declared between 2 pending US applications. An award of priority was made to one of the applications and that application issued last week. Access to the interference file and copies of that file may now be obtained upon written request and payment of a fee for the copying, but could not have been obtained prior to publication or issue of the patent application file. |
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Files which are always available are
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1. patents and published applications
2. reexamination 3. reissued patents 4. interference files with an award of priority or if interference terminated and patent issued |
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Three ways to obtain a foreign filing license are?
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1. 6 months passed since US filing
2. Granted on filing receipt 3. Petition |
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What is the filing date?
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The filing date of a National application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
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NATIONAL APPLICATIONS (35 U.S.C. 111) VS. NATIONAL STAGE APPLICATIONS ( 35 U.S.C. 371)
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Nonprovisional and provisional applications are national applications. Treatment of a national application under 35 U.S.C. 111 and a national stage application (a national application which entered the national stage from an international application after compliance with 35 U.S.C. 371) are similar but not identical. Note the following examples:
(A) Restriction practice under MPEP § 806+ is applied to national applications under 35 U.S.C. 111(a) while unity of invention practice under MPEP Chapter 1800 is applied to national stage applications only. National Stage applications do not get a filing date until the Oact or Declaration is filed and the filing fee is paid. Date for National Stage application originally published in a foreign language is the date that the last of the translation, oath and fee are submitted. (B) National nonprovisional applications filed under 35 U.S.C. 111(a) without an executed oath or declaration *>, basic< filing fee>, search fee, or examination fee< are governed by the notification practice set forth in 37 CFR 1.53(f) while national stage applications filed without an oath or declaration or national stage fee are governed by the notification practice set forth in 37 CFR 1.495. |
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All plants are patentable except those which are
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1) bacteria or 2) tuber
propagated. Tuber-propagated plants are potatoes and Jerusalem Artichokes, i.e., plants where the part which propagates is what you eat The plant must either have been invented or discovered in a cultivated state and asexually reproduced. |
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Asexual reproduction
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i.e. reproduces without seeds, can reproduce without seeds thereafter
inventor must a sexually reproduce the plant |
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In order to establish the" optional" international preliminary examination, the
applicant must make a "demand" for the preliminary examination by |
the later of
three months from issuance of the international search report and the written opinion of the ISA, or 22 months from the priority date |
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To pursue the respective designated "national" phases, further action is
required before each of the "designated offices." For example, before entering the national phase in the United States, the applicant must: |
1. Pay the required national fees,
2. Furnish a translation of the international application, and 3. Submit the required oath or declaration. |
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fees or translations only need to be submitted to the designated Offices by when?
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the expiration of 30 months from the priority date
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international phase consists of the following parts
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1. Filing of the international application by the applicant, and its processing
by the "Receiving Office," 2. Establishment of the international search report by one of the "International Search Authorities" ("ISA"), 3. A preliminary non-binding written opinion sent to the Applicant by the ISA as to novelty, inventive step, and industrial applicability, and 4. Publication (electronically) of the international application along with the international search report. 5. There is also an optional fifth step, namely the establishment of an international preliminary examination that results in a second written report entitled "International Preliminary Report on Patentability." |
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When is the National Phase application due?
What are the different parts to the application? |
must be furnished to the U.S. Patent Office by the end of the 30th month (whether or
not a"demand" for preliminary examination has been made) after either the filing date or the priority date, whichever is earlier 1. a copy of the international application; and 2. the national filing fee. These elements cannot be submitted late and these deadlines cannot be extended. The oath and translation must also be provided to the designated Office but can be filed later with the usual surcharge. |
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102(e) for Foreign Applications before and after 11/29/00
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PRIOR to 11/29/00
PCT app w I.A. filing date because 102(e) prior art when the USPTO rec'vs: 1. fee is pd 2. decl or oath is filed 3. translation submitted even if, later on, the application enters the U.S. National Phase and both publishes and issues in the U.S.! the date exists as the 102(e) date once the US patent based on the I.A. has ISSUED On or AFTER 11/29/00 102(e) prior art: 1. only when US is designated 2. pubished in English It is the published application that recv's the 102(e) date (when appropriate) NOT the issued patent --> See MPEP - 706.02(f)(1) - Examination Guidelines for 35 U.S.C 102(e) as amended by Technical Amendments Acts of 2002 |
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International App - what can be submitted late?
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Fee and Abstract may be submitted late
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Int'l App - what is an "Applicant?"
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"Applicant" means inventor or owner.
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Int'l App - standard for restriction
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The standard for restriction is based upon unity of invention and the U.S.
restriction rules do not apply. |
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A PCT (international) application filed at the U.S. Patent Office must have:
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1. at least one "applicant" who is a U.S. national or legal resident;
2. English description (specification, claims, and drawings if necessary); 3. Request for treatment as an international application; 4. designation of at least one country (automatic), which can be the U.S.; 5. priority claim (if appropriate); and 6. abstract (may be submitted later). |
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Rules for protest
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Any member of the public can file a Protest against the issuance of any
application. An attorney can file a protest without naming his or her client. A Protest specifically identifying an application will be entered in the file if: 1. It is timely submitted (normally before Final Rejection or Allowance); and 2. It is served upon the applicant. The Protest will be considered by the examiner if, in addition, copies of references, a listing of those references, translations of non-English papers and a concise explanation of relevance is provided. Amazingly, no fee is required unless it is the second Protest filed by the same party (or their associates). (A single "realparty- in-interest" may not file serial cumulative protests.) The protestor cannot participate in the prosecution and no further submission will be considered. The protest can be based upon any part of §102 or any other statutory requirement which is alleged not to be satisfied. A protest can be filed throughout the pendency of a Reissue. |
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Third-Party Participation Mter Publication
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37 CFR 1.99 permits patents and printed publications to be submitted by third
parties, but does not allow any activity that amounts to a protest or opposition by the third party. A third-party submitter puts together a set of no more than 10 patents or printed publications and sends it to the USPTO indicating the application number, etc. so that the submission is directed to the correct file. No discussion of the references or the claimed invention is permitted. In addition, service on the applicant is required. The entire set of materials needs to be submitted no later than two months after publication of the application (or mailing of a notice of allowance), unless, of course, the references could not have been provided earlier. In such case, a petition seeking later consideration of the materials and an explanation of the delay is required. |
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Who Has the Duty to Disclose
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Each individual associated with the filing of an application has a duty of candor
and good faith in dealing with the Office. These individuals include: 1. each inventor; 2. each attorney and agent who prepares or prosecutes the application; and 3. everyone else who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application. The duty extends only to individuals, not to corporations. |
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subject matter courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to
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abstract ideas, laws of nature and natural phenomena
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four enumerated categories of patentable subject
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process, machine, manufacture, or composition of matter
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utility requirement of section 101.
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The USPTO's official interpretation of the utility requirement provides that the utility of an invention has to be (i) specific, (ii) substantial and (iii) credible
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The second paragraph of 35 U.S.C. 112 contains two separate and distinct requirements:
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(A) that the claim(s) set forth the subject matter applicants regard as the invention, and (B) that the claim(s) particularly point out and distinctly claim the invention
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How does not fail to comply with the first requirement of 35 U.S.C. 112, second paragraph
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when evidence including admissions, other than in the application as filed, shows that an applicant has stated what he or she regards the invention to be different from what is claimed (see MPEP § 2171- § 2172.01).
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How does not fail to comply with the second requirement of 35 U.S.C. 112, second paragraph
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when the claims do not set out and define the invention with a reasonable degree of precision and particularity. In this regard, the definiteness of the language must be analyzed, not in a vacuum, but always in light of the teachings of the disclosure as it would be interpreted by one of ordinary skill in the art. Applicant's claims, interpreted in light of the disclosure, must reasonably apprise a person of ordinary skill in the art of the invention.
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Determine Whether the Claimed Invention Complies with 35 U.S.C. 112, First Paragraph Requirements
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The first paragraph of 35 U.S.C. 112 contains three separate and distinct requirements:
(A) adequate written description, (B) enablement, and (C) best mode. |
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written description requirement
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an applicant's specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention
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Enabling Disclosure
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An applicant's specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The fact that experimentation is complex, however, will not make it undue if a person of skill in the art typically engages in such complex experimentation.
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Best Mode (MPEP § 2165)
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Determining compliance with the best mode requirement requires a two-prong inquiry:
(1) at the time the application was filed, did the inventor possess a best mode for practicing the invention; and (2) if the inventor did possess a best mode, does the written description disclose the best mode such that a person skilled in the art could practice it. See MPEP § 2165 et seq. for additional guidance. Deficiencies related to disclosure of the best mode for carrying out the claimed invention are not usually encountered during examination of an application because evidence to support such a deficiency is seldom in the record. |
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Prima facie case of lack of utility
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(i) An explanation that clearly sets forth the reasoning used in concluding that the asserted utility for the claimed invention is not both specific and substantial nor well-established;
(ii) Support for factual findings relied upon in reaching this conclusion; and (iii) An evaluation of all relevant evidence of record, including utilities taught in the closest prior art |
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Different types of utiity
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"practical utility," "substantial utility," or "specific utility" to refer to this aspect of the "useful invention" requirement of 35 U.S.C. 101
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comprising
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synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
allows for additional steps phrase "group of" are presumptively open-ended. "mixture"is also open-ended |
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"consisting of"
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"group consisting of" is a closed term, which is often used in claim drafting to signal a "Markush group" that is by its nature closed. Id.
excludes any element, step, or ingredient not specified in the claim. |
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"consisting essentially of"
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limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention
during prior art search "consisting essentially of" will be construed as equivalent to "comprising." |
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"having"
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must be interpreted in light of the specification to determine whether open or closed claim language is intended.
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What is the date a foreign patent usually becomes a prior art reference?
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The date the patent is available as a reference is generally the date that the patent becomes enforceable. This date is the date the sovereign formally bestows patents rights to the applicant. In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978). There is an exception to this rule when the patent is secret as of the date the rights are awarded
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When can an abandoned patent application be prior art reference?
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when it has been appropriately disclosed, as, for example, when the abandoned patent
[application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under [former Defensive Publication rule] 37 CPR 1.139." An abandoned patent application becomes available as prior art only as of the date the public gains access to it. the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent >or U.S. patent application publication< may be relied on in a 35 U.S.C. 102(e) rejection based on that patent >or patent application publication< if the disclosure of the abandoned application is actually included or incorporated by reference in the patent. if the subject matter of the abandoned application was not available to the public as of either the parent's or the child's filing dates, it cannot be relied on in the 102(e) rejection |
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Is secret use prior art under 102(a)
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secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under 35 U.S.C. 102(a)
"The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use." |
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Test for public use under 102(b)
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The public use bar under 35 U.S.C. 102(b) arises where the invention is in public use before the critical date and is ready for patenting.
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Foreign priority date under 102 (e)
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35 U.S.C. 102(e) is explicitly limited to certain references "filed in the United States before the invention thereof by the applicant" (emphasis added). Foreign applications' filing dates that are claimed (via 35 U.S.C. 119(a) - (d), (f) or 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as 35 U.S.C. 102(e) dates for prior art purposes.
In contrast, applicant may be able to overcome the 35 U.S.C. 102(e) rejection by proving he or she is entitled to his or her own 35 U.S.C. 119 priority date which is earlier than the reference's U.S. filing date. Note that certain international application (PCT) filings are considered to be "filings in the United States" for purposes of applying an application publication as prior art. See MPEP § 706.02(a). |
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. See MPEP § 2143 for a discussion of the rationales listed above along with examples illustrating how the cited rationales may be used to support a finding of obviousness. See also MPEP § 2144 - § 2144.09 for additional guidance regarding support for obviousness determinations. |
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Rebuttal evidence to Obviousness
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(A) one of ordinary skill in the art could not have combined the claimed elements by known methods (e.g., due to technological difficulties);
(B) the elements in combination do not merely perform the function that each element performs separately; or (C) he results of the claimed combination were unexpected. |
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Written Description Test
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To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention
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Where does written description mostly come up?
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To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention
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Priority req't for 112 first paragraph
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Under 35 U.S.C §120, the claims in a U.S. application are entitled to the benefit of
the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C §112, first paragraph in the earlier filed application. Under 365 U.S.C §119(a) or (e), the claims in a U.s. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C §112, first paragraph |
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Test for Enablement
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is the experimentation needed to practice the invention undue or
unreasonable? Accordingly, even though the statue does not use the term "undue experimentation," it has been interpreted to require that the claimed invention be "enabled" so that any person skilled in the art can make and use the invention without undue experimentation. The focus of the examination inquiry is whether everything within the scope of the claim is enabled. |
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Factors for undue experiementation
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(A) The breadth of the claims;
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill in the art; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. |
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A claim limitation will be interpreted to invoke 35 US.c. §112 paragraph 6 if it
meets the following three-prong analysis: |
1. Amend the claim to include the phrase "means for" or "step for" in
accordance with these guidelines; or 2. Show that even though the phrase" means for" or "step for" is not used, the claim limitation is written as a function to be performed and does not provide any structure, material, or acts which would preclude application of 35 U.s.c. §112 paragraph 6. |
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A reexamination can be filed "at any time" really means
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"any time during the period of enforceability of a patent." The period of enforceability is the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action ( 35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, citations may be submitted after the statute of limitations has expired, as long as the patent is still enforceable against someone.
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If a reexamination is pending, the examiner will not enter the citation until the pending reexamination proceeding has been concluded, unless
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submitted by
(A) by the patent owner, (B) by an ex parte reexamination requester who also submits the fee and other documents required under 37 CFR 1.510, (C) by an inter partes reexamination requester who also submits the fee and other documents required under 37 CFR 1.915, (D) in an ex parte third party requester's reply under 37 CFR 1.535, or (E) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding. T |
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The prior art which may be submitted under 35 U.S.C. 301 (reexam) is limited to
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"written prior art consisting of patents or printed publications."
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Reexam or protests requires explainatin of how the person submitting the prior art considers it to be pertinent and applicable to the patent, as well as an explanation of why it is believed that the prior art has a bearing on the patentability of any claim of the patent.
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Reexam
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Any request for reexamination must include:
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Any request for reexamination must include:
1. A statement pointing out each substantial new question of patentability; 2. Identification of every claim for which reexamination is sought, and a detailed explanation applying the art to the claims; 3. A copy of every patent or publication relied upon; 4. A copy of the specification and claims with two columns per page on one side only; and 5. A certificate that the patent owner has been served if filed by someone other than the patent owner. The reexamination fee can be paid later, but, unlike applications, the date of the reexamination filing is the date the complete fee is received. |
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Rules re inter partes reexam only apply to applications filed on or after ___________.
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The rules regarding inter partes reexam only apply to applications filed on or
after November 29, 1999. However, the MPEP devotes the entirety of Chapter 2600 to this topic, so be ready for at least one look-up on this topic! |
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After a reexam is oppened, the patent owner must respond within ___ months.
Is an extension avail? how long? |
2 months response
Since the 2-month period is the minimum provided by statute, first extensions may be granted up to one (1) month based upon good and sufficient reasons. Further extensions should be granted only in the most extraordinary situations; e.g., death or incapacitation of the representative or owner. |
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Correction of Patent Drawings in a Reexam
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37 CFR 1.530(d)(3) sets forth the manner of making amendments to the drawings. Amendments to the original patent drawing sheets are not permitted, and any change to the patent drawings must be in the form of a new sheet of drawings for each drawing sheet that is changed. Any amended figure(s) must be identified as "Amended" and any added figure(s) must be identified as "New." In the event a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled."
Where the patent owner wishes to change/amend the drawings, the patent owner should submit a sketch in permanent ink showing proposed change(s)/amendment(s) in red, for approval by the examiner. The submitted sketch should be presented as a separate paper, and it will be made part of the record. |
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maintenance fees
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The United States requires that maintenance fees be paid at 3% , 7'12 and 11'12
years after issue in order for patents filed on or after December 12, 1980 to remain in effect. |
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Any hope for a patent owner who forgets to pay maintenance fees after the 6 month grace period?
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A patent which has lapsed for failure to pay the maintenance fee can be revived
within 24 months following the six-month grace period (i.e., up to 6 years, 10 years and 14 years, respectively, after issue), provided the failure to pay was either unintentional or unavoidable. |
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When will the US provide the status (pending, abandoned, published or issued) of any application?
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1. When access can be obtained; or
2. when the application is identified by serial number and filing date in a published patent document (foreign OR US) or a US application open to public inspection; or 3. when the app is in the nat'l phase of a PCT application in which US has been indicated as receiing state, ie, designated a request |
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Who can always get status?
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Inventor -- Eventually owner can stop the inventor (assignment).
Attorney - power of attorney - assignee can revoke |
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Abandoned file is accessible when?
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Kept if referred to in a document that is otherwise available
referenced in an application that is open to public inspection (usu used by US gov't or public interest entities -- want the info to get our as soon as possible) even if not yet published when is is mentioned in a published PCT application which designates the US |
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Unpublished pending applications accessible when?
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1. when the owner is using the patent application to interfere w a competitor's business (telling ppl you will sue them when your patent issues so you better buy from you instead of a competitor which would be infringing)
2. When a patent relies upon the application for priority - get to look at unpublished patent application 3. when the app is incorporated by reference into a patent or published application - can look at just the piece that is IBR |
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Can you see assignment records?
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If you can see underlyin application -- you can see assignment
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Secrecy Orders
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Is there a national security interest part of the subj matter of this application? If so, a secrecy order issues.
Covers that application or subsequent version (e.g. CIP) |
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Foreign Filing License Req't and How do You Get it
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req'd when invented in the US and would like to file outside the US
what matters is WHERE it was invented. Invention req's Conception and RTP (usu constructive RTP) Who do you get them ? Any US app include an implicit request for a foreign filing license. File an application and it shows up on your filing receipt 2. file any sort of patent application and wait 6 months -- automatically have a foreign filing license 3. ask for one - don't want to file in the US and so you put toghether what will become your foreign application and you request a foreign filing license. The ppl from the Pentagon will look at it. Takes a day or two. Then you can file outside the US |
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What if you do not get a foreign filing license?
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Nothing happens and no one probably cares.
If you file in the US later, no one probably checks. HWR, might come up when enforcing patent in litigation. Patent will NOT be enforceable BUT, can file a petition at the US patent office requesting a retroactive filing license, IF: find out about mistake and ask to fix it. Must say in statement "there is no deceptive intent" |
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Statements to DOE/NASA time to respond
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Have non-extendable 30 days to respond
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Are design applications published?
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No, only when issued.
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What do you need to submit to obtain a filing date for a national application v. national state application
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National Application:
1. Spec 2. Claim 3. Drawing ONLY. Fee, Oath, and Translation can come later National State 1. Spec 2. Claim 3. Drawing 4. Fee 5. Oath 6. Translation |
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What do you need to submit to obtain a filing date for a national application v. national state application
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National Application:
1. Spec 2. Claim 3. Drawing ONLY. Fee, Oath, and Translation can come later National State 1. Spec 2. Claim 3. Drawing 4. Fee 5. Oath 6. Translation |
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What do you need to submit to obtain a filing date for a national application v. national state application
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National Application:
1. Spec 2. Claim 3. Drawing ONLY. Fee, Oath, and Translation can come later National State 1. Spec 2. Claim 3. Drawing 4. Fee 5. Oath 6. Translation |
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Restriction Standards for National and National Stage Applications
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National - Discretion
National Stage - Unity of Invention |
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correction of inventorship
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Rule 1.48(a) - adding or deleting inventor:
1. petition only a statement of lack of deceptive intent (no proof required) signed by person being added or each person deleted. 2. oath or declaration executed by each of the actual inventors 3. fee 4. written consent of the assignee, if nec Rule 1.48 (b) - deleting an inventor whose invention is no longer being claimed: 1. petition incl statement that inventor's contribution is no longer being claimed, and 2. fee Rule 1.48(c) - adding an inventor whose contribution is now being claimed (was not before) -petition incl a stmt signed by ea inventor being added and that inventorship amendment is nec by the amendment to the claims AND without deceptive intent -oath/declaration by the actual inventors -fee -written consent of assignee, if nec ===Under 1.48(B) and (C) --> inventorship was correct when filed, but changed through prosecution 1. amendment and petition incl statement that the inventorship error occurred without deceptive intent of any and all omitted inventors, and 2. fee Rule 1.48(D) - Provisional Application- omitted inventors are ADDED 1. petition incl stmt by deleted inventors that the error occurred without deceptive intent on the part of the deleted inventors 2. fee 3. written assent of assignee Rule 1.48(E) - Provisional Application - DELETING inventors Rule 1.48(f) - once an executed declaration is submitted by any of the inventors, inventorship is fixed. Correction After Issuance 37 CFR 1.324 petition no deceptive intent written assent of assignee NO new oath or declaration |
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correction of inventorship - rubric
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ACE - Rule 1.48(A), (C), and (E) need written consent of the assignee
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Can you have a provisional app for a
utility design plant application? |
Yes
No Yes |
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When is the typical situation to use a divisional?
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When Office issues a Restriction, so you are claiming distinct and independent invention carved out from a pending application
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CIP
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typically adding information - an improvement, something is new
multiple filing dates |
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Continued Prosecution Application
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-Design only continuation
1.53(d) - designs only/parent dies -- Can file a divisional or continuation under sub (d) parent stops existing the moment the CPA is filed. Always have option to file a 1.53(b) "begin again" |
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RCE
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paying money to continue prosecution of the same application.
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Priority - Provisional and Foreign
How can you reset 1yr? |
35 USC 119
Can get priority if non-provisional "shares information" with the provisional/foreign application Provisional - file, expires, file again, no limit on how many you can file Foreign - must be within 1 yr of FIRST foreign filing. reset by Filing, withdraw, file in the same country |
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How do you get domestic priority?
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application must be co-pending and one common inventor
mention provisional application in your non-provisional application (as the first sentence "this is a cont of serial number of # filing date" |
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How do you get foreign priority?
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Make a claim
submit a certified copy no translation nec unless you need to rely on the application to prove prior possession of invention against prior art |
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Timing to tell patent office about priority
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msut tell patent office you are entitiled to priority within 4 months of filing app OR 16 months of priority date, whichever is later.
OR payout big money ($1200) only way to fix after issuing, is to file a reissue |
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when is a new assignment req'd to be filed with the PO in a continuation application?
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when a CIP is filed
A continuation and divisional do not req' a new assignment |
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What can potentially happen if an assignee fails to record the assignment
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1. The first buyer fails to record the assignment within three months or prior
to the second assignment, whichever is later (Le., there is a three-month grace period, in which the first buyer does not have to record); and 2. The second buyer took for consideration (i.e., it was not a gift or bequest ... i.e., transferred by will); and 3. The second buyer did not know of the first sale (i.e., purchased without notice). |
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How many names can be on a power of attorney?
how to get around this? |
10 names
use the customer number associated with a number of attorneys DO NOT do both |
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Revocation becomes effective when?
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Revocation of the power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE)
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Withdraw becomes effective when?
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You withdraw - you want yourself out of the prosecution, you and client come to an impass
The withdrawal is effective when approved rather than when received. |
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Rule for withdrawing
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1. given reasonable notice to the client, prior to the expiration of the reply
period, that the practitioner(s) intend(s) to withdraw from employment; and 2. delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and 3. notified the client of any replies that may be due and the time frame within which the client must respond. |
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What do you do if you have an office action and cannot reach your client?
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You can:
1. do nothing 2. file a continuation 3. suspension of prosecution you can NOT act |
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Which of the following
statements is true with respect to the application as a consequence of the death of the inventor? |
(A) The application matures to a patent after timely payment of the required
fees. (B) A new power of attorney must be submitted so that you can continue to represent the remaining inventor. (C) A petition to make special must be filed to expedite issuance of the patent. (0) A new application must be filed naming the heirs of the deceased inventor and the remaining inventor. (E) The application is automatically abandoned upon the death of the inventor. |
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What's the difference btwn filing date and filing receipt
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Filing date:
1. spec 2. claim 3. drawing Filing receipt - once all rec'v 1. spec 2. claim 3. drawing 4. fee 5. oath 6. translation |
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Actions you can take without paying a fee
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1. File a protest;
2. File a Petition to Make Special based upon illness, the environment, energy or age. (In the environment of a Rest Home, illness, ~ and lack of energy are free.); 3. Access issued, published, and certain abandoned files; 4. File a timely response to an Official Action or Restriction Requirement; 5. Timely file an IDS; 6. Conduct an Interview; 7. Obtain a Certificate of Correction to correct a Patent Office mistake; 8. File a Supplemental Declaration or Supplemental Amendment; 9. File a Petition Requesting Withdrawal of an Incorrect Holding of Abandonment; 10. File comments in response to the Examiner's Reasons for Allowance; and, 11. File a Citation of Prior Art under 35 U.S.c. § 301. |
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Small entity qualifies:
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1. An independent inventor who has not assigned, granted, conveyed or
licensed (and is not under an obligation by law to do so) any rights to someone who is not a small entity. If one of several inventors does so, or is obligated to do so, all stop being small entities; 2. A nonprofit organization, recognized as such by the IRS, or a non-profit or public accredited university, either in the U.S. or abroad; or, 3. A small business concern as defined by the regulations of the Small Business Administration. Basically, the regulations define such a concern as one which employs, together with its affiliates, no more than 500 people (including part-time and temporary workers) and which has not assigned, granted, conveyed or licensed, or contracted to do so, any rights in the invention (except on an un-executed security interest) to someone or something which is not a small entity. The number of employees is determined by averaging the number during each of the pay periods for the last 12 calendar months. |
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Fees not reduced for small entity fees
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1. Petition and processing fees (other than revival);
2. Document supply fees; 3. Certificate of Corrections fees (no fee due for Patent Office mistakes); 4. Request for Reexamination fees; and 5. International (PCT) fees. |
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Date given by PTO when document sent Express Mail v. Federal Express v Mail
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Express Mail is given the "Date-In" date in all occassions
Federal Express is given the Date rec'v by the PTO. Mailing is given the Date rec'v by the PTO. |
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Can using Express Mail change the date for Notice of Appeal? How?
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The date for Ntc of Appeal will be "Date-In" Date, and if sent any other way will be the Date received by the PTO
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Basic requirements of Oath or Declaration
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Each application must include an original oath or declaration by the inventor(s)
that: 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. The inventors must also state their citizenship and both their residence and Post Office address. The oath or declaration need not be in English but must be in a language understood by the applicant. If filed in a language other than English (and not using a pre-printed USPTO form), a non-English oath must be accompanied by a translation, together with a statement that the translation is accurate. |
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Is a fee required for a supplemental declaration?
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No
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Break down of a Jepson claim
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long preamble -- prior art --, the improving comprising... --> point of novelty
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Rules for Incorporation by Reference
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Can incorporate by reference from anywhere HOWEVER, to incorporate "essential" material you can only reference an issued US patent OR US published application
CANNOT be a foreign patent or application, a publication, or US patent which itself incorporates by reference essential material from another patent Material is "essential" if it is nec to comply w statutory req'ts of disclosure |
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Abstract Rules
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Separate sheet of paper
no more than 150 words Directed to entirety of Disclosure not what is claimed part of 112 Can amend the abstract, but must say that it contains no new matter |
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When can you get a filing date without including a drawing?
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When a drawing is not needed.
nature of the invention admitted of illustration by a drawing, although a drawing was not necessary for an understanding of the invention |
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A patent application filed in the PTO has 10 claims. Claims 1, 2 and 3 are
independent claims directed to a product. Claim 4 is an independent claim directed to a process of making the product. Which of the following would be an acceptable form for a dependent claim 5 as originally filed? (A) A product as claimed in claims 1-3, wherein ... (8) A product as claimed in claims 1, 2 and 3, wherein ... (C) A product as claimed in claim 1 and 2 or claims 3 and 4, wherein ... (D) A product as claimed in claim 6 or 7, wherein ... (E) A product as claimed in anyone of claims 1, 2 or 3, wherein ... |
E
Not D bc depends on claim after it |
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When you improperly incorporate by reference "essential" material found in a publication, what can you do to correct it?
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Amend the specification to include the material incorporated by reference,
and accompany it with an affidavit stating that the amendatory material consists of the same material incorporated by reference. |
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On Tuesday August 30, 2008, a chef who had been developing an automatic
kitchen pot-stirring device became aware of a magazine article published on February 28, 2007. The article disclosed a pot-stirring device that was not as good as the chef's invention. The chef rushed to the U.S. Patent and Trademark Office and filed a patent application with a filing date of August 31, 2008. The chef also filed a counterpart patent application in a foreign patent office on March 1, 2009. On Monday April 3, 2009, the foreign patent office cited the 2007 magazine article in a communication in the counterpart foreign application. On Monday May 1, 2009, the examiner in the PTa issued an Office action containing only a restriction requirement. On Monday July 3, 2009, the chef filed an election with traverse in opposition to the PTa restriction requirement. No PTa Office action treated the patentability of the chef's claims before Tuesday August 1, 2009. On August 1, 2009, the PTa issued an Office action withdrawing the restriction requirement and including a Notice of Allowance. On Friday September 1, 2009, the chef paid the issue fee. On Tuesday October 2, 2009, a U.S. patent issued to the chef. Sometime in 2009, the chef prepared a package containing: - an information disclosure statement fully disclosing the 2007 magazine article; - a petition requesting consideration of the 2007 magazine article; - a petition for extension of time, citing Rule 136; - no certification; and - no fee. What was the last day that the chef could have filed the package in the PTO and definitely be entitled to consideration of the 2007 magazine article in the U.S. application filed on August 31, 2008? (A) May 1, 2009. (B) June 1, 2009. (C) July 3, 2009. (D) July 31, 2009. (E) August 31,2009. |
(D) July 31, 2009.
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Leo serves as patent liaison
between the inventors and a registered patent agent, Mary, who has been retained by Mama Mia's. Does Leo have a duty to disclose that information to the PTO |
Yes
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NAFTA & WTO
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NAFTA: inventive conduct (C + RTP) on or after 12/8/93 can be used to swear behind by affidavit prior art
WTO: inventive conduct (C + RTP) on or after 1/1/96 (or date country became signatory to the WTO) can be used to swear behind by affidavit prior art NOTE: Activity outside the US NEVER becomes prior art. ONLY printed publications and patents are 102 prior art MPEP 715.07(c) |
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§102(e), (f) AND (g) EXCEPTION
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can be wiped away as ref if reference and app were subj to common ownership at the time of the second invention
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Which of the following statements is not true:
(A) The one month limit to complete a response found incomplete can be extended. (B) An application can be accepted for filing and given a filing date even though the inventors are not identified. (C) Claims, which are cancelled by a Preliminary Amendment filed with the application, are not counted in determining the additional claim fee(s). (D) The substance oftelephone discussions with an examiner must be made of record in the application file. (E) A double patenting rejection can be made only if the two applications have at least one inventor in common. |
(E) A double patenting rejection can be made only if the two applications have at least one
inventor in common. if two apps have a common inventitive entity ok |
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Your client GS Inc. is the owner of an application which is nOW allowed as a result of your skill in drafting claims and prosecuting applications. You are instructed to pay the issue fee and you transmit the properly filled out form to the Patent Office the day before the three month deadline together with your check. Unfortunately due to your bad eyesight you send a check which is $1 less than the amount due. Your letter accompanying the payment broadly authorizes the Patent
Office to charge any additional fees which may be due to your deposit account, which contains ample funds. The result will be: |
Where it is clear that an applicant actually intends to pay the issue fee and required publication fee, but the proper fee payment is not made, for example, an incorrect issue fee amount is supplied, or a PTOL-85B Fee(s) Transmittal form is filed without payment of the issue fee, a general authorization to pay fees or a specific authorization to pay the issue fee, submitted prior to the mailing of a notice of allowance, will be allowed to act as payment of the correct issue fee.
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Your client Warren John filed an application in the U.S. Patent Office on April 27, 2006. Because
he was not familiar with the Patent Office procedures and because he felt the need to file immediately, half the specification was in French. The specification, however, does have sufficient disclosure to satisfY the requirements of35 USC 112. At the end of the application was the statement "I, Warren John, the inventor, want to have a patent on my invention as I have described it above? I am a great manl The world owes me a patentl". He submitted a check to cover the fee, but the check bounced. Having done this, he retained you and instructed you to act for him and preserve his rights to the extent possible, and at the least expense. The most appropriate action would be to: (A) Prepare and file in English an application with a proper claim and pay the proper fee. (B) Expressly abandon the application and then prepare and file in English an application with a proper claim and pay the proper fee. (C) Obtain a translation of the French portions of the application, have the inventor execute a proper oath or declaration, respond to the Notice of Missing Parts, and pay the proper fees in due course, and then prepare and file a preliminalY amendment to add claims covering the invention and revise the specification. (D) Prepare a petition to the commissioner asking that the application be aecepted as filed because it was prepared and filed pro se. (E) Advise your client that the application he has filed is too defective to be corrected and that he has forfeited any right to a patent. |
(C) Obtain a translation of the French portions of the application, have the inventor execute a
proper oath or declaration, respond to the Notice of Missing Parts, and pay the proper fees in due course, and then prepare and file a preliminalY amendment to add claims covering the invention and revise the specification. |
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Which of the following is true:
(A) A statement with respect to a translation being submitted in response to a Notice of Missing Parts must state that the translation is accurate and that the translator is fluent in both English and the language being translated. (8) If the inventors identified in a non-provisional application which is filed without an oath or declaration differs from the inventors who execute the oath or declaration subsequently filed, the inventorship must be corrected under Rule 1.48(a). (C) A provisional application (claiming foreign priority from a U.K. application) can be filed under Rule 1.53( c). (D) A five month automatic extension of time to file an appeal brief in an appeal ofa utility application is always possible. (E) A newly executed oath must always be submitted in filing an application under Rule 1.53(b). 29 |
(D) A five month automatic extension of time to file an appeal brief in an appeal ofa utility
application is always possible. |
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Your client Jenny Smith comes to you with happy news. IBM has taken a non-exclusive field of
use license under her pending application which has an issue fee due. No money was received and . she is unsure when payment might be received, if ever. At the time the application was filed you ( filed a Small Entity Declaration. You should now: (A) Notify the Patent Office of the change in status. (B) Repay the amounts saved in filing and prosecuting the application as a Small Entity. (C) Do nothing because Small Entity status is not lost by the grant of a non-exclusive license. (D) Pay the issue fee as a Small Entity and consider repayment when money is received from IBM. (E) Ask IBM to pay the issue fee. |
(A) Notify the Patent Office of the change in status.
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Prima Face case of Obviousness
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1. all elements present
2. likelihood of success (will work) 3. rational to put these all together |
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How to rebut a prima Face case of Obviousness
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1. To establish by arguments and/ or submission of facts that the examiner is
wrong; or 2. To submit facts which rebut the prima facie showing by either establishing an earlier date of invention or by establishing that the totality of facts show the invention is not obvious. Only two basic arguments can be made against an obviousness rejection: 1. A person of ordinary skill in the art would not make the combination suggested by the examiner as obvious; and/ or 2. The resulting combination is not the claimed invention. |
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Patentable subject matter is defined in what section? What are they?
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Patentable subject matter is defined in 35 U.S.c. §101 as any new and useful:
1. Process (which is the same as method); 2. Machine (which is a collection of elements); 3. Manufacture,or 4. Composition of matter. |
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method patentable?
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cannot get a claim on a method not associated with a machine (just about)
method that is purely mental |
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What is covered by sect 101
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patentable subject matter and utility - useful for some purpose
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RCE is under what statutory authority
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35 USC 132(b)
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Is an RCE a new application? Is a CPA?
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NO, YES
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Due dates for the following cannot be extended even for cause:
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IDSs
ii. Any due date set by statute (such as the six-month absolute deadline for replying to Official Actions). iii. The issue fee can now, by statute, be paid late upon a proper showing, but it cannot be extended. iv. The deadline for responding to a Notice of Omitted Item(s). v. The three-month deadline to obtain a refund for a fee paid as a large entity. vi. Filing Formal Drawings at time Issue Fee is paid. |
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Automatic extensions cannot be obtained in six circumstances. These should
be memorized or you should at least know where to look this up in the MPEP. |
i. Where the Office Action so states;
ii. A Reply Brief (responsive to an Examiner's Answer in an Appeal to the Board of Patent Appeals and Interferences); iii. A request for an oral hearing in an Appeal; iv. Responding to a decision of the Board; v. Anything in an interference; and vi. Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must be filed before that date due. |
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Standard for Restriction
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will restrict if respecitve inventions are independnet or distinct
independent - can be used separately; can use them together but you don't have to distinct - can be patented over each other |
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Double Patenting compares?
Two types? |
claims from one app to another
apps are commonly owned or commonly invented Same invention - claiming the same thing in the other app. cannot get around this objection. you can either get rid of one app, merge them together Obvious - claims not identical, but one is obvious in light of the other. You can merge apps, or file a terminal disclaimer Terminal Disclaimer -- 1) respective apps will be owned by the same entitiy for ever ---> OWNERSHIP, not licensing 2) which ever patent has the shorter term will be the patent term for both patents |
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how is 102(e) different from Double Patenting
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102(e) is disclosure based, not claim based. This is called a provisional application
provisional rejection - bc co-owned, and not published. how do you get rid of it? abandonment, excluding affidavit, my own work you are trying to reject (has to be work of another), antecedent declaration Double patenting -- compare claims, either same claims (statutory double patent) or obvious-type double patenting (judicial created double patent) |
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A patent application was filed on April 1, 2004 on an invention which was
conceived on February 28, 2002 and reduced to practice with due diligence on August 8, 2003. The examiner rejected all of the claims in the application under 35 USC 103 as being obvious over Hoppe in view of Goodman. The examiner stated that it would be obvious to modify the structure disclosed and claimed by Hoppe as suggested by Goodman. Hoppe is a Canadian patent which issued on January 5, 2003, and is based on a Canadian application filed on March 18, 2002. Goodman is a U.S. patent which issued September 20, 2004, and is based on a U.S. application filed on February 5, 2002. Which of the following would be a proper response to the rejection? (A) Argue that because Goodman issued after the filing date of the application, it is not prior art and therefore cannot be used in combination with Hoppe. (B) File an antedating affidavit to swear behind Hoppe and request allowance of the claims. (C) Argue the patentability of the claims with regard to the teachings of Hoppe and Goodman individually and in combination. (0) Present only arguments as to why Hoppe does not teach the claimed invention since the rejection of the claims will stand or fall with the outcome of the argument presented as to the primary reference. (E) Present an argument that one of ordinary skill in the art would not be able to modify Hoppe with Goodman as suggested by the examiner because Goodman issued after Hoppe, and thus would not have been available at the time Hoppe became a patent. |
(C) Argue the patentability of the claims with regard to the teachings of Hoppe
and Goodman individually and in combination. |
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You are a registered practitioner and Malcolm Kercher has come to you to
determine whether he has a patentable invention. He discloses to you that he has developed a composition that can be used as bait for a conventional mouse trap. He explains to you that his composition is so effective that one need only wait minutes to lure mice to the trap. You explain to Kercher that you cannot give a patentability opinion until after a preliminary search has been made of the prior art. You have a search made and find that Kercher's composition is a well known wheel bearing lubricant that has been in use for over 20 years. What should be your best advice to Kercher? |
New use of a known compound is patentable if not obvious.
File a U.S. patent application with claims directed to a method of using the composition as bait. |
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You are prosecuting an application with ten claims. Claims 2-5 are dependent on
independent claim 1, while claims 7-10 are dependent on independent claim 6. On May 10, 2004, the examiner finally rejected claims 1-5 in the application. The remaining five claims were indicated by the examiner as being allowed. The examiner set a three month shortened statutory period for response. A proposed amendment to the final rejection was filed in the PTa on August 1, 2004. The amendment proposed to rewrite claim 1 to add a limitation not suggested by the prior art. Today, November 2, 2004, you received an advisory action dated October 28, 2004 in which the examiner refused to enter the proposed amendment. Given only these facts, which of the following actions, if any, taken on November 9, 2004 will prevent the application from becoming abandoned? (A) File an amendment canceling the rejected claims and include a request for a three month extension of time with the appropriate fee. (B) File a file wrapper continuation of the application with the appropriate filing fee and the proposed amendment. (C) File a notice of appeal and a request for a one month extension of time along with the appropriate fees. (0) File a petition to the Commissioner to waive the six month statutory period and request a four month extension of time. (E) File a supplemental response arguing the patentability of the claims as proposed to be amended in the response filed on August 1, 2004. |
(A) File an amendment canceling the rejected claims and include a request for a
three month extension of time with the appropriate fee. |
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Which one of the following statements is an incorrect reason for holding a patent
application abandoned? (A) Failure to respond within the shortened statutory period of response set in an Office action or any extension thereof. (B) Failure to file a complete response to every ground of rejection after the examiner has given applicant further time to file a complete response. (C) Failure to appeal an adverse decision of the Board of Patent Appeals and Interferences affirming the examiner even though the examiner's rejection of some of the claims has been reversed. (D) The patent agent or attorney of record files a letter of express abandonment. (E) All of the above. |
(C) Failure to appeal an adverse decision of the Board of Patent Appeals and
Interferences affirming the examiner even though the examiner's rejection of some of the claims has been reversed. Examiner will make an examiner's amendement removing all unallowed claims |
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What should happen in the following instances when an appeal has been dismissed?
(A) Claim 1 is allowed; claims 2 and 3 are rejected. (B) Claims 1 - 3 are rejected. (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. |
1215.04 Dismissal of Appeal [R-8]
If no brief is filed within the time prescribed by 37 CFR 41.37, the appeal stands dismissed by operation of the rule. Form PTOL-461 ** notifying the appellant that the appeal stands dismissed is not an action in the case and does not start any period for reply. If no claims stand allowed, an application is considered as abandoned on the date the brief was due. If claims stand allowed in an application, the failure to file a brief and consequent dismissal of the appeal is to be treated as a withdrawal of the appeal and of any claim not standing allowed. The application should be passed to issue forthwith. Unless appellant specifically withdraws the appeal as to rejected claims, the appeal should not be dismissed until the extended period (5 months of extension are available under 37 CFR 1.136(a)) to file the brief has expired. Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations: (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only. (B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned. (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned. (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. The examiner should cancel claims 1 and 2 and issue the application with claim 3 only. |
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On November 19, 2005, inventor Wilson filed a patent application in the PTa. On
December 1, 2007, a patent was granted to Wilson. Claim 1 in the patent reads as follows: "A widget comprising A, B, C and a member selected from the group consisting of D and E." In 2008, reexamination of the Wilson patent was ordered. During reexamination, the examiner rejected claim 1 as being anticipated by the Murr reference. Murr discloses a widget consisting of A, B, C and D. An antedating affidavit has been prepared showing that on April 4, 1988, Wilson conceived his claimed invention in Missouri. The affidavit further shows that coupled with due diligence beginning in March of 2004, Wilson reduced his invention to practice in Kansas on May 1, 2005. In which of the following situations, if any, would the affidavit be effective to overcome the rejection? |
(A) The Murr reference is an article in a magazine which was first received by
subscribers on February 6, 2004. (B) The Murr reference is a U.S. patent granted on May 18, 2008 on an application filed in the PTa on March 19, 2005, and the patent discloses and claims" a widget consisting of A, B, C and D." The patented file contains a Rule 132 affidavit showing that Widgets consisting of A, B, C and D were first placed on sale and successfully marketed in the United States on May 30,2004. (C) The Murr reference is a U.S. patent granted on January 12, 2008 on an application filed in the PTa on March 2, 2003, and the patent discloses, but does not claim, "a widget consisting of A, B, C and D." (D) The Murr reference is a U.S. patent granted on January 5, 2008 on an application filed in the PTa on April 2, 2005 which discloses, but does not claim, "a widget consisting of A, B, C and D." The patent is a continuationin- part (C1P) of an original application filed in the PTa on February 2, 2003, but abandoned on April 16, 2005 for failure to prosecute. The original application only supports" a widget consisting of A, B, C and E." (E) None of the above. |
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Does the patent office look at the date of the oath?
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NO, can be over 3 months prior to filing the application
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Can a design app relate to a provisional?
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NOOOOO!
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At what point are you no longer in prosecution in the appeals process?
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After final practice governed by 1.116
Still prosecute after filing Notice of Appeal but NOT after filing the Brief |
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Interviews:
Before filing Before first office action After Final Rejection |
-Not allowed
-A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action **>is encouraged where< the examiner determines that such an interview would advance prosecution of the application. -Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. In sum, an interview is a matter of right after first action, discretionary after final, and rarely appropriate before first action |
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Does an applicant have a right to an interview AS A MATTER OF RIGHT after final rejection?
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No.
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When must the request for an extension of time be filed in a reexamination proceeding?
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In a reexamination proceeding, requests for extensions of time must
be filed on or before the day on which action by the patent owner is due pursuant to 37 CFR § 1.550(c). |
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Application A was filed after November 29, 2000. Reference X and application A were
commonly owned at the time the invention of application A was made. In accordance with the patent laws, rules and procedures as related in the MPEP the prior art exclusion of 35 USC 103(c) can be properly invoked to obviate which of the following rejections? |
§ 103(c) can only
be invoked when the reference only qualifies as prior art under 35 U.S.C. § 102(f), 35 U.S.C. § 102(g), or 35 USC 102(e) for applications filed on or after November 29, 1999, the application and the reference were commonly owned, or subject to an assignment to the same person, at the time the invention was made, and the reference was used in an obviousness rejection under 35 U.S.C. § 103(a). |
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Tribell files a patent application for her aroma therapy kit on November 29, 1999, which
issues as a patent on August 7, 2001. She tries to market her kit but all of her prospects are concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a registered practitioner for advice on what to do to improve her ability to market her aroma therapy kit. At the consultation the practitioner learns that in the original patent application, Tribell had a number of claims which were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. The practitioner also determines that the claims in the patent obtained by Tribell were narrower than the broader invention disclosed in the specification, and the cited references may not preclude patentability of the broader invention. Which of the following is the best course of action to pursue in accordance with the patent laws, rules and procedures as related in the MPEP? |
Tribell should file a reissue application under 35 USC 251 within two years of the
issuance of the patent, broadening the scope of the claims of the issued patent. An applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue. See In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). (D) is incorrect. MPEP § 201.06. In order to claim benefit under 35 U.S.C. § 120 to a parent application, a divisional application must be filed while the parent patent application is still pending. |
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When, in accordance with the patent laws, rules and procedures as related in the MPEP,
is a supplemental oath or declaration treated as an amendment under 37 CFR 1.312? |
With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312.
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“twice or finally...rejected” limitation
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The limitation of “twice or finally...rejected” does not have to be
related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. |
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process steps. The claim is rejected over a publication under 35 USC 102(b) and 103. Assume
for this question that the publication reasonably appears to show the identical shoe, but describes a different method of making the shoe. What is the proper procedure to try to overcome the rejection in accordance with the patent laws, rules and the procedures as related in the MPEP? |
"To the extent that the process limitations distinguish the products over the prior
art, they must be given the same consideration as traditional product characteristics." In re Hallman, 210 USPQ 609, 611 (CCPA 1981). Thus, (C) is correct because applicant can show by factual arguments and/or declarations or affidavits under 37 CFR § 1.132 that the method of making produces a different product and that the differences are unobvious. the patentability of product-by-process claims is based on the product itself. |
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Rule 99
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§ 1.99 Third-party submission in published application.
(a) A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner. (b) A submission under this section must identify the application to which it is directed by application number and include: (1) The fee set forth in § 1.17(p); (2) A list of the patents or publications submitted for consideration by the Office, including the date of publication of each patent or publication; (3) A copy of each listed patent or publication in written form or at least the pertinent portions; and (4) An English language translation of all the necessary and pertinent parts of any non-English language patent or publication in written form relied upon. (c) The submission under this section must be served upon the applicant in accordance with § 1.248. (d) A submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section. A submission under this section is also limited to ten total patents or publications. (e) A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier. Any submission under this section not filed within this period is permitted only when the patents or publications could not have been submitted to the Office earlier, and must also be accompanied by the processing fee set forth in § 1.17(i). A submission by a member of the public to a pending published application that does not comply with the requirements of this section will not be entered. (f) A member of the public may include a self-addressed postcard with a submission to receive an acknowledgment by the Office that the submission has been received. A member of the public filing a submission under this section will not receive any communications from the Office relating to the submission other than the return of a self-addressed postcard. In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a submission under this section. |
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Product by process rule
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MPEP § 2113, under the heading “Product-
By-Process Claims Are Not Limited To The Manipulations Of The Recited Steps, Only The Structure Implied By The Steps,” states “’even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).” The issue is whether the claimed mixture Y is the same as or obvious over the patented mixture Y. The patentability of a product-by-process claim is determined on the basis of product characteristics, not process steps |
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17. A patent application was filed on November 1, 2000 for the invention of J.J. Smithy. The
application has no priority or benefit claims to any other application. Claims in the application are separately rejected under 35 USC 102 as being anticipated by each of the following references. Which reference can be properly applied under 35 U.S.C. 102(e) in accordance with the patent laws, rules and procedures as related in the MPEP? (A) A WIPO publication of an international application under PCT Article 21(2), which has an international filing date of October 3, 2000, was published in English and designated the United States. (B) A U.S. patent by J.J. Smithy that has a filing date of September 5, 2000. (C) A U.S. application publication under 35 U.S.C. 122(b) by inventor Jones that was filed on August 8, 2000. (D) A journal article by Marks published on October 11, 2000. (E) All of the above. |
C
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Applicant filed a provisional patent application in the USPTO under 35 USC 111(b) on
Tuesday, November 30, 1999. On Tuesday, November 28, 2000, applicant filed a nonprovisional application in the USPTO under 35 USC 111(a) that properly claimed priority under 35 USC 119(e) to the filing date of the provisional application. On Wednesday, November 29, 2000, applicant filed an international application for patent in the USPTO under the Patent Cooperation Treaty that designated the United States and properly claimed priority to both the provisional and the nonprovisional applications. On Friday, July 28, 2001, applicant filed a national stage application in the USPTO under 35 USC 371, providing all of the requirements under 35 USC 371 and properly claiming benefit to the filing date of the provisional application under 35 USC 119(e) and the nonprovisional application under 35 USC 120. The national stage application was published on Tuesday, January 30, 2002 and issued as a patent on Tuesday, February 4, 2003. Assuming no patent term extension or adjustment, the patent term ends on the date that is 20 years from which of the following dates in accordance with the patent laws, rules and procedures as related in the MPEP? |
20 years from the earliest non-provisional U.S. filing date -- 11/28/00.
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25. A registered practitioner files a nonprovisional utility application in 2000. In 2002, the
practitioner files a continuation-in-part application and claims benefit of the filing date of the 2000 application for the 2002 application. Thereafter, the practitioner amends the 2002 application to include claims that were not present in either the originally filed 2000 application or the originally filed 2002 application. The primary examiner properly concludes that the added claims are not supported by the original disclosure in either application. Which of the following is in accord with the patent laws, rules and procedures as related in the MPEP? (A) The added claims are rejected for lack of written description under 35 USC 112, first paragraph. (B) The added claims are rejected as new matter under 35 USC 132. (C) The added claims are denied benefit of the filing date of the 2000 application. (D) (A) and (B). (E) (A) and (C). |
ANSWER: (E) is the most correct answer. Both (A) and (C) are correct. MPEP
§ 2163.01, under the heading “Support For The Claimed Subject Matter In The Disclosure,” states that “[I]f the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack of written description under 35 U.S.C. 112, first paragraph, or denial of the benefit of filing date of a previously filed application.” (B) is incorrect. MPEP § 2163.01 states that unsupported claims “should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that originally presented.” (D) is incorrect because (B) is incorrect. Let’s see, what happens to “new matter”. It is tossed out. But how and where depends on where the new matter shows up. If it is anywhere except the claims, you obtain an objection, and are instructed to remove the new matter. However, if you add new matter to the claims, they are rejected under 112, 1st as lacking support. Here the new matter was added to the claims only, and will be rejected. To add insult, the claims will not have support in either version of the application. So E) is the best answer. |
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In accordance with the patent laws, rules and procedures as related in the MPEP , which
of the following paper is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8? (A) An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country. (B) An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country. (C) An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action. (D) A request for continued examination (RCE) under 37 CFR 1.114. (E) An appeal brief. |
ANSWER: (A) is the most correct answer. See MPEP § 512, which states “The
Certificate of Mailing procedure does not apply to papers mailed in a foreign country.” (B) is not correct. See MPEP § 512. Certificate of transmission procedure applies to correspondence transmitted to the Office from a foreign country and an amendment is not prohibited from being transmitted by facsimile and is not precluded from receiving the benefits under 37 CFR § 1.8. (C) is not correct. See MPEP § 609, subsection “Time for Filing.” An IDS will be considered to have been filed on the date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR § 1.8. (D) is not correct. See MPEP § 706.07(h) Comparison Chart. An RCE is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8. (E) is not correct. See MPEP § 1206. An appeal brief is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8 because it is required to be filed in the Office within a set time period which is 2 months from the date of appeal. |
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pending claim, and does not claim the benefit of any earlier application. Which, if any, of the
following items of prior art that have been relied on in various rejections of the claim may be overcome by a suitable affidavit under 37 CFR 1.131 in accordance with the patent laws, rules and procedures as related in the MPEP? (A) A U.S. patent to G that issued on March 27, 2001, has an effective U.S. filing date of January 4, 2000, and does not claim the “same patentable invention” (as defined in 37 CFR 1.601(n)) as the rejected claim. (B) A U.S. patent to P that issued on June 5, 2001, has an effective U.S. filing date of February 1, 2000, and includes a claim that is identical to the rejected claim. (C) A journal article to H published on December 10, 2001, and characterized in the application as “describ[ing] the prior art.” (D) A foreign patent issued to X and Y on November 7, 2001, which claims the same subject matter as the rejected claim and is based on an application filed on January 3, 2001. (E) None of the above. |
ANSWER: The correct answer is (E), "None of the above." (A) is incorrect because the
G patent is a 35 U.S.C. § 102(b) statutory bar. See MPEP § 715 under heading "Situations Where 37 CFR 1.131 Affidavits Or Declarations Are Inappropriate," states "(A) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s effective filing date. Such a reference is a 'statutory bar' under 35 U.S.C. 102(b) as referenced in 37 CFR 1.131(a)(2)." (B) is incorrect because 37 CFR § 1.131 expressly provides that prior invention may not be established under the rule "if the rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in 37 CFR 1.601(n)." 37 CFR § 1.131(a)(1). Regarding (C), see MPEP § 715, under heading " Situations Where 37 CFR 1.131 Affidavits Or Declarations Are Inappropriate," which states "(G) Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964)." Regarding (D), see MPEP § 715, under heading, " Situations Where 37 CFR 1.131 Affidavits Or Declarations Are Inappropriate," which states "(C) Where the reference is a foreign patent for the same invention to applicant or patent owner or his or her legal representatives or assigns issued prior to the filing date of the domestic application or patent on an application filed more than 12 months prior to the filing date of the domestic application. See 35 U.S.C. 102(d)." |
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SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED
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SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED
Affidavits or declarations under 37 CFR 1.131 may be used, for example: (A) To antedate a reference or activity that qualifies as prior art under 35 U.S.C. 102(a) and not under 35 U.S.C. 102(b), e.g., where the prior art date under 35 U.S.C. 102(a) of the patent, the publication or activity used to reject the claim(s) is less than 1 year prior to applicant's or patent owner's effective filing date. >If the prior art reference under 35 U.S.C. 102(a) is a U.S. patent or U.S. patent application publication, the reference may not be antedated if it claims the same patentable invention. See MPEP § 715.05 for a discussion of "same patentable invention."< (B) To antedate a reference that qualifies as prior art under 35 U.S.C. 102(e), where the reference has a prior art date under 35 U.S.C. 102(e) prior to applicant's effective filing date, and shows but does not claim the same patentable invention. See MPEP § 715.05 for a discussion of "same patentable invention." See MPEP § 706.02(a) and § 2136 through § 2136.03 for an explanation of what references qualify as prior art under 35 U.S.C. 102(e). |
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SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
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SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
An affidavit or declaration under 37 CFR 1.131 is not appropriate in the following situations: (A) Where the reference publication date is more than 1 year prior to applicant's or patent owner's effective filing date. Such a reference is a "statutory bar" under 35 U.S.C. 102(b) as referenced in 37 CFR 1.131(a)(2). A reference that only qualifies as prior art under 35 U.S.C. 102(a) or (e) is not a "statutory bar." (B) Where the reference U.S. patent or U.S. patent application publication claims the same patentable invention. See MPEP § 715.05 for a discussion of "same patentable invention" and MPEP *> Chapter 2300<. Where the reference patent and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718. (C) Where the reference is a foreign patent for the same invention to applicant or patent owner or his or her legal representatives or assigns issued prior to the filing date of the domestic application or patent on an application filed more than 12 months prior to the filing date of the domestic application. See 35 U.S.C. 102(d). (D) Where the effective filing date of applicant's or patent owner's parent application or an International Convention proved filing date is prior to the effective date of the reference, an affidavit or declaration under 37 CFR 1.131 is unnecessary because the reference should not have been used. See MPEP § 201.11 to § 201.15. (E) Where the reference is a prior U.S. patent to the same entity, claiming the same invention. The question involved is one of "double patenting." (F) Where the reference is the disclosure of a prior U.S. patent to the same party, not copending. The question is one of dedication to the public. Note however, In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971) which substantially did away with the doctrine of dedication. (G) Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964). (H) Where the subject matter relied upon is prior art under 35 U.S.C. 102(f). (I) Where the subject matter relied on in the reference is prior art under 35 U.S.C. 102(g). 37 CFR 1.131 is designed to permit an applicant to overcome rejections based on references or activities which are not statutory bars, but which have dates prior to the effective filing date of the application but subsequent to the applicant's actual date of invention. However, when the subject matter relied on is also available under 35 U.S.C. 102(g), a 37 CFR 1.131 affidavit or declaration cannot be used to overcome it. In re Bass, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973). This is because subject matter which is available under 35 U.S.C. 102(g) by definition must have been made before the applicant made his or her invention. By contrast, references under 35 U.S.C. 102(a) and (e), for example, merely establish a presumption that their subject matter was made before applicant's invention date. It is this presumption which may be rebutted by evidence submitted under 37 CFR 1.131. (J) Where the subject matter corresponding to a lost count in an interference is either prior art under 35 U.S.C. 102(g) or barred to applicant by the doctrine of interference estoppel. In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA 1965); In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). See also In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the principles of res judicata and collateral estoppel, applicant was not entitled to claims that were patentably indistinguishable from the claim lost in interference even though the subject matter of the lost count was not available for use in an obviousness rejection under 35 U.S.C. 103). But see In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing party to an interference, on showing that the invention now claimed is not "substantially the same" as that of the lost count, may employ the procedures of 37 CFR 1.131 to antedate the filing date of an interfering application). On the matter of when a "lost count" in an interference constitutes prior art under 35 U.S.C. 102(g), see In re McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not prior art under 35 U.S.C. 102(g) as to the loser of an interference where the count was lost based on the winner's foreign priority date). Similarly, where one party in an interference wins a count by establishing a date of invention in a NAFTA or WTO member country (see 35 U.S.C. 104), the subject matter of that count is unpatentable to the other party by the doctrine of interference estoppel, even though it is not available as statutory prior art under 35 U.S.C. 102(g). See MPEP § 2138.01 and § 2138.02. 37 CFR § 1.131 expressly provides that prior invention may not be established under the rule "if the rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in 37 CFR 1.601(n)." 37 CFR § 1.131(a)(1). |
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An application naming X and Y as joint inventors, filed on April 3, 2002, has a single
pending claim, and does not claim the benefit of any earlier application. Which, if any, of the following items of prior art that have been relied on in various rejections of the claim may be overcome by a suitable affidavit under 37 CFR 1.131 in accordance with the patent laws, rules and procedures as related in the MPEP? (A) A U.S. patent to G that issued on March 27, 2001, has an effective U.S. filing date of January 4, 2000, and does not claim the “same patentable invention” (as defined in 37 CFR 1.601(n)) as the rejected claim. (B) A U.S. patent to P that issued on June 5, 2001, has an effective U.S. filing date of February 1, 2000, and includes a claim that is identical to the rejected claim. (C) A journal article to H published on December 10, 2001, and characterized in the application as “describ[ing] the prior art.” (D) A foreign patent issued to X and Y on November 7, 2001, which claims the same subject matter as the rejected claim and is based on an application filed on January 3, 2001. (E) None of the above. |
E
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“35 U.S.C. 102(g) may form the basis for an ex parte rejection if:
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“35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject
matter at issue has been actually reduced to practice by another before the applicant's invention; and (2) there has been no abandonment, suppression or concealment. |
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102(e) subject matter cancelled in application
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cancelled subject matter does not get a 102(e) date, but can be 102(a)
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Timing for correcting claim of priority in a PCT app
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Effective July 1, 1998, applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau >(IB)< within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date.
can correct priority if provided that the failure to file the application within the priority period was in spite of due care or unintentional |
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section of regulations explaining whether fax is allowed
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See 37 CFR 1.6(d).
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7, Amendments to the claims of a peT application:
(A) May be made within three months from the date of transmittal of the International Search Report, or the expiration of twenty-two months from the priority date, whichever occurs later. (B) May not be made until entry into the National Phase, (C) May be made at any time, (D) Must be approved by the Receiving Office, (E) Are pennitted only to submit additional embodiments, |
a
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A PCT application was filed on October 23, 1996 in the USPTO by an American citizen living in
Paris claiming priority from a French application filed October 24, 1995. The PCT application designated the U.S. On March 22, 1997 a translation of the application is furnished to the USPTO to enter the national stage and the national fee was paid. An Oath was submitted on April 3, 1997. If the U.S. patent issues, it will expire on __ _ and its date as prior art under I 02( e) will be ___ _ (A) October 24, 2015 and March 22, 1997. (B) October 23. 2016 and March 22,1997. (C) October 23.2016 and April 3, 1997. (D) March 22, 2017 and April 3, 1997. (E) April 3, 2017 and April 3, 1997. |
b
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