MPEP 100 - 600 Flashcards
People qualified to access pending or abandoned file
Inventors (unless barred by assignee)
Assignee
Exclusive licensee
Attorney or agent of record
access unpub pending application requires:
Fee
petition with good reason: someone threatening
request with reason:
- a patent (filed later but issued quicker) relies on the unpub app for priority.
- The unpub app is incorporated in its entirety by reference into a patent or a pub app.
Foreign Filing License,
relation to publication
After 6 months, automatically granted Within 6 months 1. Granted on filing receipt 2. Need to file petition If forgot to get FFL when app at foreign countries, could obtain it retroactively.
If opt out publication, no FFL.
If already filed foreign app, no way to opt out publication.
If US app claim foreign priority, then no way to opt out publication, will publish in 18M and becomes a 102 prior art.
what’s needed to get a filing date? (provisional, nonprovisional, PLT, design app)
After PLT(2013): only spec is needed
before PLT: non-provisional: spec and claim
provisional: spec
Design: spec and one claim
provisional app
What are needed
what are not needed
Needed:
Spec, Fee, ADS,
not needed:
OoD, claim, IDS, amendment
period to submit other materials after spec is submitted? (provisional, non provisional)
non-provisional: 3M, fee, OoD, claims, ADS,
provisional: 2M, fee, ADS to specify provisional.
submit under 1.53(b), (c), (d)
- 53(b): non-provisional, continuation, divisional, CIP, design app.
- 53(c): provisional, no earlier priority
- 53(d): CPA.
inventor requirement for later app to claim earlier app priority.
at least one common inventor
time (and extension) between non-provisional and provisional/foreign apps
12M
12M +2M+ $$$
patent term for provisional, foreign priority, non-provisional app, continuation, CIP, and for design app
non-provisional: 20 years from non-provisional app filing date IN US (not provisional filing date, not foreign priority date)
continuation app: 20 years from earliest parent filing date IN US
CIP: 20 years CIP filing date (new matter, cannot claim parent filing priority)
design: 15 year from design patent issue
Foreign filing examples: which one could claim foreign priority:
- Foreign filing T1, US provisional app T2, US utility app T3, T3-T1 > 1Y, T2-T1 < 1Y.
- Foreign filing T1, another foreign filing T2, US filing T3. T3-T1 > 1Y, T3 - T2 < 1Y.
- Publish paper T1, foreign filing T2 within 1Y of T1, US filing T3 within 1Y of T2, but T3-T1 > 1Y
only the last one. T3 could claim effective filing date of T2, so the paper is not prior art against the US filing.
Foreign app filing T1,
Foreign app filing T2 with same content.
US filing T3. T3-T2 < 1Y, and T3-T1 > 1Y.
If T1 is at some point abandoned/withdrawn.
Under what conditions could T3 could call priority of T2
T1 was abandoned before publication, and
T1 and T2 are in the same country.
When is translation needed?
- overcome prior art
- interference
- examiner request
- recording assignment not in English…
- PCT file in the US not in English
- Third party submission of foreign publications
foreign filing as 102 prior art, determine the prior art date of
pre AIA: 102(e)
post AIA: 102(a)(2)
non-PCT foreign filing (without being claimed priority by US filing) is NOT prior art
PCT:
After AIA: 102(a)(2), designate US
Before AIA: after 2000: designate US, pub in English, (DUSE) 102(e)
before 2000: fee, OoD, translation (FOT). 102(e)
obtaining foreign priority need to submit (and timing):
If forget to claim earlier priority, what to do?
ADS specify foreign priority
certified copy of the foreign app.
submit within 4M of actual US filing, or 16M of foreign filing, which ever later
if miss to claim earlier priority, file a certificate of correction