Chapter 600 Flashcards
Basic requirements for oaths and declarations
Applicants:
- Believe they are the inventor(s)
- App is filed with their permission
Inventors must acknowledge:
- reviewed and understand the contents
- duty to disclose all known material to patentability
must also state their address or PO box if not separately listed in ADS
Oaths or declarations random facts
doesn’t need to be in English
if not in English, accompany with translation and a statement that the translation is accurate
Example
App is filed without a declaration. PTO sends a notice of missing parts, but grants filing date to the application as of the date it was filed. The applicant files an oath which is defective because it fails to set forth the address of the inventors. In the first action, the examiner requires that a new oath be filed. A substitute oath or declaration is submitted in response to the requirement.
Who may execute Substitute statement?
an applicant under 1.43 (decased inventor), 1.45 (joint inventor), or 1.46 assignee or otherwise having proprietary interest may execute the substitute statement in lieu of an oath or declaration if inventor is dead, legally incapacitated, refused to, cannot be found after diligent effort.
Substitute statements must include
identification of inventor
statement upon information and belief of the facts the inventor is required to state
ID of the person executing the sub statement and relationship to the inventor
ID of the circumstances
Acknowledgement that willfully false statements by fine or imprisonment not more than 5 years
supplemental O or D
CFR 1.67 deficiencies or inaccuracies. May also use ADS 1.76. Any inventorship change must be done pursuant to 1.48
Correcting inventorship and updating ADS
generally - 1.48 change in inventorship
foreign priority and domestic benefit changes - 1.55/1/78
correspondence address changes -1.33(a)
Correction of inventorship under 1.48
current available for all applications under post aia.
Correction of inventorship for nonprovisionals
request for correction must include:
signed ADS (1.76) ID (name) each inventor with address information
required fee
will need 1.63 or subsitute statement for those not yet executed such O of D
Correction of inventorship in provisionals
A request signed by a party set forth in 1.33(b)
identify each inventor by name and required fee
change order of names; see 1.48(f): submit ADS and required fee
Correction of inventor ship in continuing apps
Depends. Will use up to date info.
Supplemental O and D
Will be placed in the file record but not necessarily reviewed
Notice of omitted item
Notice of omitted items vs notice of missing parts
Claims example
Means plus function 112(f)
Means plus function
Means plus function
Markush Groups
Jepson claims
Multiple depend claims
Calculating multiple dependent claims
Multiple dependent claim calculation
Incorporation by reference
Color drawings
IDS
IDS
Duty to disclose / IDS certification
On Tuesday August 30 2004 a chef who had been developing an automatic kitchen pot-stirring device became aware of a magazine article published on February 28 2003. The article disclosed a pot-stirring device that was not as good as the chef’s invention. The chef rushed to the U.S. Patent and Trademark Office and filed a patent application with a filing date of August 31 2004. The chef also filed a counterpart patent application in a foreign patent office on March 1 2005. On Monday April 3 2005 the foreign patent office cited the 2003 magazine article in a communication in the counterpart foreign application. On Monday May 1 2005 the examiner in the PTO issued an Office action containing only a restriction requirement. On Monday July 3 2005 the chef filed an election with traverse in opposition to the PTO restriction requirement. No PTO Office action treated the patentability of the chef’s claims before Tuesday August 1 2005. On August 1 2005 the PTO issued an Office action withdrawing the restriction requirement and including a Notice of Allowance. On Friday September 1 2005 the chef paid the issue fee. On Tuesday October 2 2005 a U.S. patent issued to the chef. Sometime in 2005 the chef prepared a package containing: - an information disclosure statement fully disclosing the 2003 magazine article; - a petition requesting consideration of the 2003 magazine article; - a petition for extension of time citing Rule 136; - no certification; and - no fee. What was the last day that the chef could have filed the package in the PTO and definitely be entitled to consideration of the 2003 magazine article in the U.S. application filed on August 31 2004?
The correct answer is - (D) 37 CFR §§ 1.97(d)(2) 1.136 and 1.197(b)(3) and MPEP 609. An information disclosure statement filed before the mailing date of a first Office Action on the merits is always entitled to consideration under 37 CFR § 1.197(b)(3). (A) (B) and (C) are wrong because none of them are the last permissible day. The Office Action containing only a restriction requirement is not an action on the merits. The date in (E) is too late because after a notice of allowance the statement must be accompanied by a certification and a fee under 37 CFR § 1.97(d)(2). No extension of time under rule 136 is available for filing an information disclosure statement.
