Keys Rules and Statutes

Question 1

37 CFR 1.114

Answer 1

Request for Continued Examination (RCE)

Also see MPEP 700

Question 2

37 CFR 1.53(b)

Answer 2

Nonprovisional filing

Also see MPEP 200

Question 3

Request for Continued Examination (RCE)

Answer 3

37 CFR 1.114: Request for continued examination

MPEP 700: Examination of Applications (MPEP 706.07(h)

Question 4

Continued Prosecution Application CPA

Answer 4

37 CFR 1.53(d)

Question 5

37 CFR 1.53(d)

Answer 5

Continued Prosecution Application CPA

Also see MPEP 200

Question 6

35 USC 119(e)

Answer 6

35 USC 119: Benefit of earlier filing date; right of priority
(e) Provision Priority

(e)(1) An application for patent filed under section 111(a) (Application) or section 363 (International Application designating the US) for an invention disclosed in the manner provided by **section 112(a) **(other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application.

Also see MPEP 200

Question 7

Provision Priority

Answer 7

35 USC 119(e)

Question 8

Domestic Priority

Answer 8

35 USC §120

Question 9

35 USC §120

Answer 9

Domestic Priority

Also see MPEP 200

Question 10

Foreign Priority

Answer 10

35 USC §119(b)

Question 11

35 USC §119(b)

Answer 11

35 U.S.C. 119 Benefit of earlier filing date; right of priority.
(b) Foreign Priority

(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
etc.

Also see MPEP 200

Question 12

Application Data Sheet

Answer 12

37 CFR 1.76 Application Data Sheet

MPEP 600: Parts, Form and Content of Application (601.05)

Question 13

Information Disclosure Statement

Answer 13

MPEP 600: Parts, Form and Content of Application (MPEP 609)

37 CFR 1.97 Filing of Information Disclosure Statement
37 CFR 1.98 Content of Information Disclosure Statement

Question 14

37 CFR 1.97

Answer 14

37 CFR 1.97 Filing of Information Disclosure Statement

MPEP 600: Parts, Form and Content of Application (MPEP 609)

Question 15

37 CFR 1.76

Answer 15

37 CFR 1.76 Application Data Sheet

MPEP 600: Parts, Form and Content of Application (601.05)

Question 16

1.130(a)

Answer 16

1.130(a): Affidavit or declaration of attribution or prior public disclosure under
the Leahy-Smith America Invents Act. (a): Affidavit or declaration of attribution.

Question 17

1.130(b)

Answer 17

1.130(b): Affidavit or declaration of attribution or prior public disclosure under
the Leahy-Smith America Invents Act. (b): Affidavit or declaration of prior public
disclosure.

Question 18

Affidavit or declaration of attribution.

Answer 18

1.130(a): Affidavit or declaration of attribution or prior public disclosure under
the Leahy-Smith America Invents Act. (a): Affidavit or declaration of attribution.

Question 19

Affidavit or declaration of prior public disclosure.

Answer 19

1.130(b)

Question 20

1.136

Answer 20

1.136: Extensions of time

Question 21

Extensions of time

Answer 21

1.136: Extensions of time

Question 22

1.48

Answer 22

**1.48: Correction of inventorship **pursuant to 35 U.S.C. 116 or correction of the name
or order of names in a patent application, other than a reissue application.

(a) NONPROVISIONAL application
(b) Inventor’s oath or declaration for added inventor
(c) Any request …under paragraph (a) …after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee …unless
…statement …due solely to the cancelation of claims …
(d) PROVISIONAL application
(e) Additional information may be required
(f) Correcting or updating the name of an inventor
(g) Reissue applications NOT COVERED
(h) Correction of inventorship in patent. See 1.324
(i) Correction of inventorship in an interference or contested case before the PTAB

Question 23

1.324

Answer 23

1.324: Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before
which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
(b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested
change;
(2) A statement from all assignees … agreeing to the change .
(3) The fee …
(c) Correction of inventorship in an application: see § 1.48
(d) In an interference under part 41, ……

Question 24

35 USC 302

Answer 24

Request for Reexamination

Question 25

35 USC 111(a)

Answer 25

Filing a regular domestic application…directly in the US, claiming priority to a PCT under 35 USC 120

Question 26

35 UC 120

Answer 26

Benefit of an earlier filing date in the US

Question 27

35 USC 115

Answer 27

Inventor’s Oath or Declaration

Question 28

35 USC 121

Answer 28

Divisional Applications

Question 29

35 USC 314

Answer 29

Institution of…Inter Partes Review

Also see:
37 USC Part 42: Trial Practice before the PTAB
Consolidated Trial Practice Guide

Question 30

35 USC 321

Answer 30

Post-Grant Review

35 USC 324 Institution of PGR

Question 31

35 USC 363

Answer 31

International Application designating the US: Effect

Question 32

35 USC 365(a)

Answer 32

Right of priority; benefit of the filing date of a prior application
(a): National Application

(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119, a national application shall be entitled to the right of priority based on a PRIOR FILED INTERNATIONAL APPLICATION which designated at least one country other than the United States.

Question 33

35 USC 365(b)

Answer 33

Right of priority; benefit of the filing date of a prior application
(b) International Application

(b) In accordance with the conditions and requirements of section 119(a) (Benefit of Foreign Priority) and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations.

Question 34

35 USC 365(c)

Answer 34

**Right of priority; benefit of the filing date of a prior application
(c) International

(c) In accordance with the conditions and requirements of section 120 (Benefit of earlier filing date in the US), an international application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application designating the United States, or a prior international design application as defined in section 381(a)(6) designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application which designated but did not originate in the United States, or a prior international design application as defined in section 381(a)(6) which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.

Question 35

37 CFR 1.102

Answer 35

37 CFR § 1.102 Advancement of examination.

(Prioritized Examination)

Question 36

Prioritized Examination

Answer 36

37 CFR § 1.102 Advancement of examination.

Question 37

37 CFR 1.181

Answer 37

§ 1.181 Petition to the Director.

Question 38

Petition to the Director.

Answer 38

§ 1.181