Patent Bar Preparation

Front 1

From what reference sources can essential material in an application be "incorporated by reference" from?

Back 1

i. Issued U.S. patent; or
ii. Pending U.S. patent application; or
iii. A U.S. patent application publication

Front 2

“Essential material” MAY NOT BE incorporated by reference into an application if it is from?

Back 2

i. Foreign patent or application; or
ii. A non-patent publication; or
iii. A U.S. patent that itself incorporates by reference that “essential material” from another patent

Front 3

When MUST patent Maintenance Fees be paid?

Back 3

3 1/2, 7 1/2, and 11 /12 years after patent issue

Front 4

What are the requied elements of a valid Oath/Declaration?

Back 4

i. Oath or declaration that the claimed inventors believe themselves to be the true, original and first inventors.
ii. Acknowledgement of their duty to disclose all information known to be material to patentability.

Front 5

Under what circumstances can you make your application "special" WITHOUT having to pay a FEE?

Back 5

1. Illness of the inventor
2. Benefits Environment
3. Benefits the availability of Energy
4. Inventor is aged 65 and over
5. Involves superconductivity

Front 6

What are the prima facie elements of Obviousness under 103?

Back 6

1. Motivation or suggestion to PHOSITA to reference or combine the teachings of the references to make the invention.
2. Reasonable expectation of success
3. References have to teach all the limitations/elements of the claim.

Front 7

What are the differences between an Reissue and a Reexamination?

Back 7

i. Reissue may ONLY be requested by patent owner
ii. Any prior art can be considered in a reissue
iii. Broadening of claims allowed in a reissue (limited: only to first 2 years)
iv. Automatic extensions for reissue applications (NOTE: reissues are treated like regular patent applications while reexaminations are NOT)
v. Original patent has to be surrendered in a reissue
vi. Reissue application CAN be abandoned

Front 8

What are the minimum requirements to obtain a filing date?

Back 8

a. A specification
b. A claim
c. A drawing (where appropriate

Front 9

Who can claim "small entity status"?

Back 9

i. An independent inventor or ANY of the named inventors has not assigned, granted, conveyed or licensed or is under NO obligation by law to do so, any rights to someone who is NOT a small entity; OR
ii. A non-profit organization recognized as such by the IRS or an accredited university; OR
iii. A small business that employs <500 people

Front 10

Which PTO files can be viewed by ANY member of the public?

Back 10

i. Patent Reexamination
ii. Patent Reissue Files
iii. Issued Patent Files
iv. Published Application Files
v. Decided/Terminated Interference Files

Front 11

What MUST you do in order to have your patent application "redacted" for publication?

Back 11

1. You must request the redaction in writing WITHIN 16 months of filing.
2. Your redacted copy AT LEAST has to reveal all subject matter included in a foreign application
3. You MUST submit copy of the redacted application to the PTO's Electronic Filing System (EFS)

Front 12

When can the public get an application status update on a patent application?

Back 12

1. Access can be obtained
a. (i.e., not barred by security concerns)
2. Application is identified by serial number and filing date on a PUBLISHED patent document.
3. Application is in the National Phase of a PCT application in which U.S. has been indicated as a receiving state.

Front 13

When can a member of the "public" (as opposed to the inventor, assignee, or patent attorney/agent) view an "unpublished" abandoned patent application??

Back 13

a. Referred to in a U.S. patent or published application
b. Referred to in a U.S. application open to public inspection
c. Referred to in a PCT published application, which designates the U.S.

Front 14

When can a member of the public view an "unpublished" pending patent application?

Back 14

1. CAN be viewed by the PUBLIC where there are “Special Circumstances” such as:
a. When the owner is using the patent application to interfere with Requestor’s (i.e., competitor’s) business; OR
b. When a patent relies upon the application for priority; OR
c. When the application is incorporated by reference into a patent or published application.
i. NOTE: Notice is NOT required IF the Requestor wants to obtain ONLY the parts of the pending unpublished application that have been incorporated into the patent or published application.

Front 15

How can you obtain a foreign filing license to file an application abroad?

Back 15

1. Passage of six months after filing of ANY U.S. patent application
2. By being granted on the filing receipt
3. By the granting of a petition asking for one
a. May be granted “retroactively” AFTER foreign application has been issued IF the “illegal” foreign filing occurred through ERROR and WITHOUT DECEPTIVE INTENT

Front 16

What is the ACE rule for change of inventorship?

Back 16

Basically, changing Inventorship under 1.48 (a),(c),(e) requires the written consent of the assignees of the inventors

Front 17

What MUST you do to change inventorship IF the "inventive entity" named in an application was wrong from the START?

Back 17

i. A PETITION stating “lack of deceptive intent” behind error signed by EACH added or deleted person.
ii. An OATH or DECLARATION executed by EACH of the ACTUAL INVENTORS.
iii. Payment of FEE
iv. CONSENT of assignees of the INVENTOR(S) IF any of them executed an assignment of his rights.

Front 18

What MUST you do to change inventorship where the “inventive entity” named in the application was originally correct BUT amendment or cancellation of a claim DELETES the contribution of one or more of the named inventors in the application?

Back 18

i. A petition with a statement that the inventor’s contribution is NO longer being claimed
ii. Payment of FEE

Front 19

What MUST you do to change inventorship where the “inventive entity” named in the “non-provisional” application was originally correct BUT amendment of the claims adds previously unclaimed but disclosed subject matter, and one or more inventors needs to be ADDED to the application?

Back 19

i. A PETITION stating that the amendment is necessitated by the amendment to the claims and “lacks deceptive intent” signed by ALL inventors ADDED.
ii. An OATH or DECLARATION executed by EACH of the ACTUAL INVENTORS.
iii. Payment of FEE
iv. CONSENT of assignees of the INVENTOR(S) IF any of them executed an assignment of his rights.

Front 20

What MUST you do to change inventorship where an ERROR was made in a “PROVISIONAL” application whereby an inventor needs to be ADDED to the application?

Back 20

i. A PETITION stating that the error “lacks deceptive intent” on the part of ANY of the OMITTED inventors
ii. Payment of FEE

Front 21

What MUST you do to change inventorship where an ERROR was made in a “PROVISIONAL” application whereby an inventor needs to be DELETED from the application?

Back 21

i. A PETITION stating that the error “lacks deceptive intent” on the part of ANY of the DELETED inventors.
ii. Payment of Fee
iii. CONSENT from all the assignees of the INVENTOR(S) IF any of them executed an assignment of his righs

Front 22

What MUST you do to change inventorship on an ISSUED patent?

Back 22

a. A PETITION stating “lack of deceptive intent” signed by ALL inventors ADDED or DELETED
b. A statement by remaining inventors that they agree to the change.
c. CONSENT of assignees of the INVENTOR(S) IF any of them executed an assignment of his rights.

Front 23

What are the requird elements of a Provisional Application?

Back 23

1. A COVER SHEET identifying the application as a PROVISIONAL APPLICATION with name(s) of the inventor(s); residence(s) of inventor(s), title of the invention, name and registration of the agent or attorney, docket number of the filer, and correspondence address.
a. IF COVER SHEET is ABSENT, application will be treated as a “non-provisional” application.
2. Specifications
3. Drawings

Front 24

What is required in order for you to take the priority date of a provisional application?

Back 24

1. Be filed within 1 year of the FILING DATE of the “provisional” application
2. Have at least one shared named inventor.

Front 25

What is required BEFORE you can claim foriegn priority for your U.S. Filing?

Back 25

1. The foreign application is enabling, has a proper written description, and discloses the best mode;
2. A claim for priority is made in the second U.S. application;
3. The second U.S. “NON-PROVISIONAL” filing is WITHIN 1-year of the FOREIGN FILING DATE.
4. NOTE: This is the case even where the FOREIGN application is WITHDRAWN, ABANDONED, OR DISPOSED of providing that there is a SUBSEQUENTLY FILED application AND:
a. Withdrawn foreign application has NOT been laid open for PUBLIC INSPECTION;
b. The application has NOT SERVED as basis for claiming RIGHT OF PRIORITY;
c. The subsequent application is filed in the same country as the withdrawn application.

Front 26

To use a foreign filing date as a basis to "swear behind" intervening prior art you MUST do what?

Back 26

Provide a TRANSLATED copy of the foreign application to the PTO.

Front 27

What is the PRIMARY DIFFERENCE between DOMESTIC (i.e., claiming earlier conception, parent application filing date) and FOREIGN PRIORITY?

Back 27

Foreign priority date CANNOT be used as PRIOR ART DATE for the U.S. patent once it is issued while the domestic priority date CAN be used as the PRIOR ART DATE for the U.S. patent once it is issued.

Front 28

When must an applicant claim the benefit of foreign or domestic priority?

Back 28

Within 4 months AFTER U.S. filing OR 16 months of the earliest claimed "EFFECTIVE FILING DATE" (i.e., priority date) whichever is later.

Front 29

What are the consequences of recording an assignment of patent rights with the PTO?

Back 29

i. IF you’re the FIRST ASSIGNEE (i.e., 1st Buyer), recording within THREE MONTHS AFTER PURCHASE gives you a “superior claim of right” to the assignment over a SUBSEQUENT BONAFIDE ASSIGNEE (i.e., 2nd Buyer) of the patent right.
1. To be subsequent bonafide assignee:
a. MUST have paid consideration for the assignment (i.e., cannot come to ownership because of a bequeth or gift)
b. MUST NOT KNOW about 1st sale
c. Assignment MUST be in WRITING

Front 30

What are the limitations on an patent attorney/agent's ability to withdraw from the prosecution of a patent?

Back 30

Withdraw reques is NOT normally GRANTED UNLESS more than 30-days BEFORE “drop dead date” of an outstanding action

Front 31

What will the PTO do for you WITHOUT charging you a FEE?

Back 31

1. File a PROTEST;
2. File a petition to MAKE SPECIAL;
3. Access issued or published and certain abandoned files;
4. File a TIMELY response to Office Action or Restriction Requirement;
5. TIMELY file an IDS;
6. Conduct an interview;
7. Obtain a Certificate of Correction to correct a PTO mistake;
8. File a Supplemental Declaration of Supplemental Amendment;
9. File a Petition Requesting Withdrawal of an Incorrect Holding of Abandonment;
10. File comments in response to Examiner’s Reasons for Allowance;
11. File a Citation of Prior Art;
12. Check status of an application

Front 32

What is the filing date of applications filed using Certificates of Mailing?

Back 32

The date that the paper(s) is deposited in the mailbox or Post Office.

Front 33

What papers CANNOT be filed using a Certificate of Mailing?

Back 33

1. New patent applications
2. Papers filed in an INTERFERENCE, which have to be filed by hand
3. Agreements to settle an INTERFERENCE
4. PCT paper(s)