600 Content Cards Flashcards
Oath and Declaration
Oath - sworn to be true in front notary or equivalent
Basic Oath/Declaration Requirements
Believe themselves to be inventor
application is being filed with their permission
Inventor reviewed and understands contents of application
Duty to Disclose all information known to be material to patentability of application
Submission of Sub. Oath
Under 1.43 - deceased inventor
Under 1.45 - Joint Inventor
Under 1.46 - assignee or otherwise proprietary interest
Under 1.63- Inventor deceased, legal incapacitatied, refused to execute oath, or cannot be reached
Inventorship
In US human beings only
Determined on a claim by claim basis
Requirement is did indivudal contribute to invention in some manner
Consent of assignee must be obtained and mistake must of been honest one to change inventorship
Notice of Omitted Items
Drawing or page omitted from filing
if no response filing date is the date without figure or page
can change filing date to date figure or page submitted
can retain original filing date but app may be defective
bad thing
Notice of Missing Parts
No rights are in jeopardy must respond by filing or pay filing date date will not change no possibility to change filing date normal thing that happens
Claims
assertion of thing or steps applicant wants protected
assertion is defined by words of the claim
Must have at least one present to get a filing date
must contain some element, step, or limitation not found in prior art
Infringement on one claim is infringement on patent
Apparatus Claim
Defines a combo of elements interconnected by the language of the claim to show the purpose of the invention
combination of things
Method
Combination of steps that when carried out achieve the intended results
Combination of steps
Punctuation and Capitalization of Claim
First word only capitalized
Divided by a colon into a preamble and a body
period always ends the claim
Preamble
general description of the thing or steps
Body
sets forth elements or steps and limitations of the claim
starts with either comprising or consisting
Markush Groups
Used to define claim limit where there is no generic term describe group
most commonly used in chemical claims
no specific wording is required
Jepson Claim
Claims that have preamble defining what is old, a body defning what is new and a transition phrase such as “improvement comprising”
Multiple Dependent Claims
Claim that depends from one or more claims
One set of multiple dependent claim cannot depend from another set
Incorporation by Reference
May reference ; issued US patent, published application
cannot referencce: foreign patent or application, publication, us patent which incorporates by reference essential material from another patent
Substitute Specification
USPTO may require this when number of amendments make it difficult to examine or print
applicant can submit one on own if swear no new material
Drawings
Must show everything claimed unless element is conventional
Now accepts black and white photos for design when photos are only practical medium
Models/Exhibits
USPTO may require model or exhibit to accompany photos and/or specimens/ingrediants
if model returened applicant must maintain during life of patent
Nonprovisional Application Contents
- written application
- Include specification per 112, drawings per 113, oath/declaration per 115
- At least one claim
Prescribed filing fee, search fee, examination fee, application fee
Provisional App Contents
Specification per 112(a) Drawing per 113 Claims not needed at time of filing Cover sheet identifying: Application as provisional Name of inventor(s) Title of invention name & registration of attorney/agent if needed Correspondence address If made by us govt - name of agency and contact info
Hague Convention Apostille
Document signed with US and 28 other countries on oct 15, 1981 and allows forge in notaries to submit to USPTO
Non Provision fees
Basic filing fee Search fees Examination fee Application size fee Excess claim fee Non electronic filing fee
At time of filing only basic filing fee is due as long as rest paid in timely manner
Application Size fee
Applied when application exceeds 100 pages and additional 50 pages after get extra fee
If submitted electronically then only 75% of total size is counted as a page. 100 pages submitted electronically is counted as 75
Excess claim fee
Independent claims over 3
20 total claims
Fees for multiple dependent claims are based on #of claims the set refers too
If this fee is applied to application then due at time of filing
Amendments can trigger this fee
Order of fees for nonprovisional
If payment ambiguous or one lump sum sent in
Basic filing fee Non electronic fee Application size fee Late filing surcharge Processing fee Search fee Examination fee Excess claim fee
Order for Provisional
Basic filing fee
Application size fee
Late filing surcharge
