Chapter 200

Question 1

What are two types of applications?

Answer 1

Provisional

Non-Provisional

Question 2

What are the downsides to provisional patent applications?

Answer 2

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

Question 3

What is the benefit of Provisional patent application?

Answer 3

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

Question 4

What are the requirements to receive a filing date on provisional applications?

Answer 4

Specification (does not need to contain patent claims)

Any required drawing

Fee (can be paid after filing)

Question 5

What are benefits of Non-Provisional patent applications?

Answer 5

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

Question 6

What are the requirements of Non-Provisional applications?

Answer 6

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)

Question 7

What are the requirements to receive an international filing date?

Answer 7

Specification

Any required drawing

At least 1 claim

Designate at least 1 contracting state

Question 8

What are the requirements of the oath or declaration?

Answer 8

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

Question 9

What happens if conflicting oaths or declarations are filed?

Answer 9

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

Question 10

Which section allows for Correction of Inventorship?

Answer 10

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

Question 11

What does 35 USC 120 allow?

Answer 11

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

Question 12

What does 35 USC 119(a) address?

Answer 12

It addresses priority based on an earlier foreign application

Question 13

What does 35 USC 119(e) address?

Answer 13

It addresses priority based on an earlier provisional application

Question 14

What are the requirements for the second application to claim priority to a first application?

Answer 14

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

Question 15

What is the time limit to claim priority of an earlier-filed US application?

Answer 15

The application must be “co-pending” with the earlier filed applications to be entitled to priority

Question 16

What is the time limit to claim priority to foreign application?

Answer 16

The application claiming priority must be filed with the Patent Office within 12 months of the earlier filed foreign application