Chapter 1100 Flashcards
What is a Statutory Invention Registration (SIR)?
It is a defensive publication used to prevent others from seeking patent protection for the disclosed subject matter
When would SIR be requested?
When an inventor may not want to go through the effort and expense of obtaining a patent on their invention. But wants to prevent someone else from obtaining a patent on their invention or an obvious variation of the invention
Under Rule 293, what is an applicant allowed to do during the applicant’s pending application?
An applicant for an original patent may request that the specifications and drawings be published as a SIR
This request would need to be signed by the applicant and any assignee of record or an attorney or agent of record, and it needs to be accompanied by a waiver of the applicant’s right to receive a patent on the invention claimed effective upon the date of publication of the SIR
Before AIA, how were third parties able to submit prior art?
third parties were only able to submit prior art to the Patent Office in accordance with Rule 99 or via the protest procedure
What is a Preissuance Submission?
Under AIA, the new preissuance submission provision provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Patent Office, for consideration and inclusion in the record of a patent application, any patents, published patent applications or other printed publications of potential relevance to the examination of the application
It may be used in non-provisional utility, design, and plant application, and any continuing applications
Effective on September 16, 2012 and applies to all applications whenever filed
Replaced the Rule 99, which did not permit accompanying concise description of the relevance of each submitted document and limited the time period to 2 months after the date of patent application publication or the mailing of a notice of allowance
How to submit third-party preissuance submission?
a concise description of the asserted relevance of each document submitted
submitted within a certain statutorily specified time period
a fee
a statement that the submission complies with the statutory provision
When do the third-party preissuance submission need to be submitted by?
Earlier of:
the date of notice of allowance is given or mailed in the application OR
the later of:
6 months after the date on which the application is first published by the Patent Office OR
the date of the first rejection of any claim by the examiner during the examination of the applicaiton
