Chapter 200 Flashcards
What are two types of applications?
Provisional
Non-Provisional
What are the downsides to provisional patent applications?
It does not afford legal protection to its holder
It does not receive substantive examination by the Patent Office
Can NOT claim priority to an earlier filed application
What is the benefit of Provisional patent application?
It effectively locks in the filing date and excludes those who may conceive the invention after the filing date
It’s the quickest way for entrepreneurs and companies to secure “patent-pending” status for their inventions
It buys inventors time to wait up to 1 year to determine whether to enter non-provisional application
What are the requirements to receive a filing date on provisional applications?
Specification (does not need to contain patent claims)
Any required drawing
Fee (can be paid after filing)
What are benefits of Non-Provisional patent applications?
It will receive substantive examination by the Patent Office
It will afford legal protection if issued into a patent
Can claim priority to an earlier application
What are the requirements of Non-Provisional applications?
Specification
Any required drawing
At least 1 claim which define the legal boundaries of protection provided by the patent that issues from the application
Oath by each inventor and fee (can be submitted after filing)
What are the requirements to receive an international filing date?
Specification
Any required drawing
At least 1 claim
Designate at least 1 contracting state
What are the requirements of the oath or declaration?
Each inventor does not need to execute the same oath or declaration but each oath or declaration need to contain a complete listing of all inventors, clearly indicating the inventive entity
What happens if conflicting oaths or declarations are filed?
If filed on the same day, the Patent Office will consider the inventors named in either declaration as the inventive entity (combination of both) and submission of new oath/declaration including the entire inventive entity will be required
If filed on different days, the later-filed oath or declaration generally controls
Which section allows for Correction of Inventorship?
37 CRF 1.48
(a) directed at correcting inventorship in an application where inventorship was improperly set forth in the executed oath/declaration filed in the application
(b) directed at correcting inventorship where it was originally correctly set for in an executed oath or declaration, but due to prosecution of the application, fewer than all of the currently named inventors are actual inventors of the remaining claims
(c) due to amendments of the claims, to include previously unclaimed but disclosed subject matte, inventors of the amended subject matter must be added to the correct inventorship
(d) directed at provisional applications, where an inventor is to be added
(e) directed at provisional applications, where inventor is to be deleted
(f) automatically corrects inventorship upon filing of first executed oath/declaration by any of the invention in non-provisional application or upon filing of a cover sheet in a provisional application
What does 35 USC 120 allow?
It permits a continuing application to claim the benefit of the filing date of a co-pending, previously filed parent application provided that there is an inventorship overlap between the continuing and parent application
What does 35 USC 119(a) address?
It addresses priority based on an earlier foreign application
What does 35 USC 119(e) address?
It addresses priority based on an earlier provisional application
What are the requirements for the second application to claim priority to a first application?
There must be an overlap in inventorship
The 2nd application must contain or be amended to contain a specific reference to the 1st application with indication of the relationship between the applications
The priority claims must be made within the applicable time limits
What is the time limit to claim priority of an earlier-filed US application?
The application must be “co-pending” with the earlier filed applications to be entitled to priority