MPEP 100 and MPEP 200- 3rd Binder Flashcards
When are applications maintained IN CONFIDENCE
Unpublished pending applications
Abandoned applications
(access and copies only for a few exceptions)
Which patent files are available for viewing and copying?
Issued Patent Files
Published Application Files
Reissue Files
Reexamination Files
Interference File for Patent, Reissue or Published application
Interference File of UNPUBLISHED application that hasn’t issued IF pitted against issued patent and interference is TERMINATED/DECIDED (old 35 USC 102(g)
NOTE; Written request needed for access to the FILE, but not for the published application
Which application types do not publish?
- Provisionals
- Design applications
- Abandoned applications
Note: Can request Express Abandonment to avoid publication (under 37 CFR 1.138). Need 4 weeks remaining before publication to success
Fee required to access and/or copy an accessible patent file?
No, except the cost of using the copy machines in the PO or printing at their desk from the PTO website
What information regarding STATUS will the PTO provide for any application for which access can be obtained?
Pending, Abandoned, Published, Issued
What is required to obtain access to a patent application’s STATUS?
NOTE: Available through Public PAIR (Patent Application Information Retrieval)
WRITTEN REQUEST (but no fee)…
- Where access can be obtained
- App identified by SERIAL NUMBER and FILING DATE in PUBLISHED patent doc (foreign or US) or US application open to PUBLIC INSPECTION
-App in the NATIONAL PHASE of a PCT app in which US is identified as a receiving state
(- Any parent if the continuation, CIP or divisional qualifies to have status disclosed)
Who can NORMALLY Access a PENDING or ABANDONED FILE?
MPEP 104
- INVENTORS (unless assignee asked PTO in writing to bar)
- INVENTOR named in an application filed without that inventor’s signature (Rule 1.45 or 1.46)
- ASSIGNEE of the ENTIRE INTEREST or the assignee of PARTIAL INTEREST or an EXCLUSIVE LICENSEE (but not non-exclusive licensee)
- ATTORNEY/AGENT of RECORD and any person given WRITTEN AUTHORIZATION from anyone with access
NOTE: this refers to NORMAL access, not access requested of the PO)
Difference in access between
ACCESS for POWER TO INSPECT
vs
A granted PETITION FOR ACCESS
POWER TO INSPECT- Continues indefinitely UNLESS limited in time
Granted PETITION FOR ACCESS- (Granted by PTO)- limited to the time granted
What are the EXCEPTIONS for accessing an UNPUBLISHED, ABANDONED APPLICATION (not the file)?
MPEP 104
- Referred to in a US patent or published application
- Referred to in a US application open to public inspection
- Referred to in a PCT published application which designated the US
NOTE: WRITTEN REQUEST needed (petition or service not required)
Aside from NORMAL access to an UNPUBLISHED, PENDING application FILE, how could one obtain access? MPEP 103
Note: Normal access includes inventors (unless barred by assignee), inventor named in app without inventor’s signature (Rule 1.45 or 1.46), assignee, exclusive licensee, attorney/agent of record, and anyone with written authorization from above MPEP 104
- PETITION or REQUEST for access MUST be filed
- Fee paid
When petition or request is used:
-PETITION SHOWING SPECIAL CIRCUMSTANCES- when owner is using app to interfere w/ competitor’s business.
- Petition must be served on applicant/owner or an extra copy given to PTO to serve
- REQUEST FOR ACCESS ONLY (Service or Petition not required)
- When patent relies upon application for priority
- When application is incorporated in its entirety by reference into patent or published app - WITH NOTICE OR SERVICE
- When a pending application is incorporated ONLY IN PART into an issued US patent or published application
- ONLY the specific incorporated part is obtained
Ways to acquire a Foreign Filing License?
MPEP 140
- Passage of 6 MONTHS from filing US app (including provisional)
- Being granted specifically on the FILING RECEIPT
- By GRANTING OF A PETITION asking for one
When is a Foreign Filing License Required?
- Invention is made in the US
How do you obtain a Foreign Filing License RETROACTIVELY?
35 USC § 184, 1st paragraph
- By a PETITION, including factual circumstances of error- in detail
- Hefty FEE
NOTE: Illegal Foreign Filing MUST have occurred by error. If FFL not obtained, patent is INVALID unless a license is granted retroactively
DOE Statement- Process?
42 USC 2182
(Rarely tested)
- Invention related to atomic energy
- Mandates statement about making of invention- Government contract?
- Non-extendable 30 days Formal Request if non-formal (45-day) request wasn’t submitted
NASA Statement- Process?
42 USC 2457
(Rarely tested)
- Invention related to space inventions
- Mandates statement about making of invention- Government contract?
- Non-extendable 30 days Formal Request if non-formal (45-day) request wasn’t submitted
When are plant applications open to the public?
Once they issue
When are design applications open to the public?
Once they issue
Note: They do not publish- only issue)
Files which are always available are…
a. Issued patent or published applications
b. Reissue applications
c. Reexamination
d. Interference file after award of priority, or interference has been terminated, and there is an issued patent involved in the interference
The fee for obtaining status is…
None. It is free
An unpublished, abandoned application can be accessed if it is ….in an issued US patent
…referred to (incorporated by reference or used to establish priority…
An “AS FILED” copy of a PENDING UNPULBISHED application can be obtained WITHOUT SERVICE if it is in whole…….an issued patent
…incorporated by reference into…
Two ways to file a US patent application are
- NATIONAL application- Filed directly in the US
- Applicaiton that has entered the NATIONAL PHASE from an international (PCT) application previously filed in the US or elsewhere
Two notable differences between NATIONAL and PCT-derived NATIONAL STAGE applications
- For RESTRICTIONS…
- UNITY OF INVENTION applies to NATIONAL STAGE inventions (all claims generally relate to the same inventive step)
- EXAMINER DESCRETION applies to separate out inventions in NATIONAL applications
- FILING DATE- if missing Fee, Oath/Declaration and/or Translation
- NATIONAL- Get a NOTICE OF MISSING PARTS, but still get the filing date
- NATIONAL STAGE- No filing date until Oath/Declaration, Translation and Fee are received
NOTE: FOT Rule “steps” you onto the National Stage
What is required to correct inventorship on an application?
Accomplished under 37 CFR 1.48
Correcting also covered in MPEP 600.02(c)
Must submit:
- Application Date Sheet- listing correct inventors
- Fee
- Oath/declaration of added inventor(s)
What is REQUIRED in a complete PROVISIONAL application?
What is NOT ALLOWED in a PROVISIONAL application?
MPEP 201.04
REQUIRED for COMPLETE application:
- Specification satisfying 112(a)*
- Any necessary drawing* (under PLTIA may be submitted late if adequate written support exists)
- Fee
- Cover sheet or signed ADS
NOT ALLOWED:
- Information Disclosure Statements
- Minimum to get filing date.
Oath/Disclosure- NOT required
Claims- Not required, but spec must be completely descriptive
What is included in a COVER SHEET or signed ADS (Application Data Sheet) for a PROVISIONAL?
- Identify application as a PROVISIONAL (otherwise considered a non-provisional)
- Name(s) of INVENTOR(S)
- RESIDENCE of each inventor
- TITLE of the invention
- NAME and REGISTRATION NUMBER of agent/attorney, if any
- DOCKET NUMBER of the filer, if any
- CORRESPONDENCE ADDRESS
Amount of time to complete a PROVISIONAL application if sent a NOTICE OF MISSING PARTS?
TWO months
NOTE: Becomes abandoned if not submitted
NOTE: Can only be “revived” within its 12-month pendency
What is the time limit for REVIVING a PROVISIONAL?
Within its 12- month pendency period
NOTE: If nonprovisional is NOT FILED within 12 months and it is UNINTENIONAL, a non-provisional can still be filed WITHIN A TOTAL OF 14 MONTHS and have the RIGHT of PRIORITY restored (under PLTIA), but there is a big FEE
What is required for a UTILITY application to take as a PRIOIRT DATE the filing date of a PROVISIONAL?
- At least one COMMON INVENTOR
- Filed within ONE YEAR after the PROVISIONAL (unless it falls on a weekend or holiday, then the 1st day the PTO is open)
- ONLY to extent of “OVERLAPPING” DISCLOSURES
What is the date used to determine PATENT TERM on a non-provisional filed from a provisional?
(with 20 yr term)
Filing date of NONPROVISIONAL
Note: the time the provisional is pending does not count against the 20 years frin the effective filing date term of a US patent)
Can a PROVISONAL be filed for a DESIGN application?
NO
Note: Also can’t serve as basis for a design application
Can a PROVISONAL be used in an INTERFERENCE?
NO
How to CONVERT and NON-PROVISIONAL to a PROVISIONAL?
- Nonprovisional must be pending AND within ONE YEAR of filing
- File a PETITION
- FEE
How to CONVERT and PROVISIONAL to a NON-PROVISIONAL?
Yes. Assume PETITIONAL and FEE
NOTE: Shortens term
Seven No’s for Provisionals?
- No claims
- No oath or declaration
- No examination or amendment
- No design applications
- No possible claim for priority from other applications
- No Information Disclosure Statements (IDSs)
- No basis for priority for a Design application
Patent application definition?
The set of papers which is examined by the Patent Office during its Pendency, and which must become, in due course, either ABANDONED or ISSUED as a patent
Who OWNS a patent application?
Applicants (inventor(s) and/or owner) OWN the application until they assign OWNERSHIP in whole or part to another PERSON or ENTITY which can HOLD TITLE TO PROPERTY (another individual, a corporation, partnership, trust, or the like)
What is a CONTINUATION?
2nd, 3rd, 4th, etc application by the…
- SAME APPLICANT for the …
- SAME INVENTION claimed by a…
- Prior, NONPROVISONAL application and is…
- COPENDING (both alive at the PO for at least one overlapping day)
What are the TYPES of CONTINUATION applications?
- Continuations
- Continuations-in-part
- Divisionals
Rules for filing a CONTINUATION (that qualifies as a continuation)?
(Two ways to file, with conditions for each)
Rule 1.53(b)
- Fresh set of papers
- Fresh oath or copy of oath in the parent (copy from parent is OK)
Rule 1.53(d)- For DESIGN applications ONLY- CPA
- Called CONTINUED PROSECUTION APPLICATION
- Based on a parent application and uses the same file
Continuation-In-Part?
-CONTINUING application (so copending, same applicant from prior nonprovisional)
- Repeats some SUBSTANTIAL PORTION of the earlier application(s) and ADDS MATTER not disclosed in earlier application
NOTE: Filed under Rule 1.53(b)
Divisional application?
-CONTINUING application (so copending, same applicant from prior nonprovisional)
- For a DISTINCT and INDEPENDENT invention carved out of a PENDING APPLICATION
- Claiming ONLY subject matter disclosed in earlier, parent application
Substitute application?
-NOT a CONTINUING
-NOT COPENDING (by mistake or on purpose)
- SAME DISCLOSURE as earlier application
NOTE; Must be no statutory bars (no section of 102 precludes issuance of a patent)
Request for Continued Examination (RCE)
37 CFR 1.114
Procedure where a UTILITY or PLANT application can be further examined
Requires:
- Request
- Fee
- Submission of something for the Examiner to consider
Continued Prosecution Application (CPA)
Rule 1.53(d)
- For DESIGN applications only
- Special kind of CONTINUATION or DIVISION
- the file of the PARENT is CONTINUED
- Parent is ABANDONED (no parent/child relationship- “Death of Parent”)
- CPA has same SERIAL NUMBER as PARENT (no reference to the parent is insert in spec)
- All papers in the parent (including claim of foreign priority) carry over
-Except CPA division, an election of invention made in parent
NOTE: Limited to DESIGN since July 14, 2003
What happens if application is filed WITHOUT OATH/DECLARATION but lists NAME?
- Subsequent submission of oath/declaration/compliant sign ADS with a different entity will establish inventorship
What happens when application is filed WITHOUT INVENTOR(S) names set forth?
Until executed oath/declaration/compliant ADS or substitute statement is submitted…
an ALPHNUMERIC IDENTIFIER should be used
What is a REFERENCE FILING?
Under PLTIA. abbreviated filing method (NOT BEST PRACTICE)
- Requires a prior FOREIGN, INTERNATIONAL, PROVISIONAL or NONPROVISIONAL has previously been filed
Along with FEE and TRANSLATION, Applicant submits an ADS that REFERENCES the previous application by…
- Country
- Serial Number
- Filing Date
- Complete, CERTIFIED copy of “REFERENCE” must be filed within…
- FOUR MONTHS of FILING
- 16 MONTHS of ORIGINAL FILING DATE
Can Rule 1.53(b) Filings by made by FAX?
Can Rule 1.53(d) Filings by made by FAX?
1.53(b): NO
1.53(d): Yes
What type of applications are filed under…
- Rule 1.53(b)?
- Rule 1.53(c)?
- Rule 1.53(d)?
Rule 1.53(b): Utility, plant or design applications (Begin, Begin again!)
- Rule 1.53(c): Provisional applications
- Rule 1.53(d): Design (Design Only! Death of Parent)
Can INVENTORS be ADDED and/or DELETED…
- Under Rule 1.53(b)?
- Under Rule 1.53(d)?
Rule 1.53(b): Yes, can add or delete in continuation, CIP or division
Rule 1.53(d): Can DELETE but cannot add in a continuation or Division WITHOUT PETITION AND FEE
DOMESTIC vs FOREIGN PRIORITY?
MPEP 210
DOMESTICE PRIORITY- 35 USC 120: If a prior application is a COPENDING US application or an earlier application that can be traced through a chain of COPENDING applications
FOREIGN PRIORITY- 35 USC 119: If a prior application is a FOREIGN application filed LESS THAN 12 MONTHS (SIX MONTHS for DESIGN) before the US application in a country that has signed a TREATY to participate in such benefits
Requirements for ASSERTING ENTITLEMENT TO PRIORITY from a prior application (foreign or domestic) (that qualifies to be claimed for priority)?
MPEP 211
- Must satisfy DISCLOSURE REQUIREMENTS of 112(a)
- Must be ENABLING, having proper WRITTEN DESCRIPTION and disclose BEST MODE
- A proper CLAIM FOR PRIORITY must be made in 2nd application
NOTE: If prior application is in a foreign language, a translation is required ONLY if required to remove a reference as prior art
EFFECTIVE FILING date?
MPEP 211: Domestic Priority:
The earliest date the PARENT was FILED, if an application is ENTITLED TO DOMESTIC
RESTORATION OF RIGHTS?
UNDER PLTIA:
If you FAIL to FILE the NONPROVISIONAL in the US within ONE YEAR of the earlier application filed in a FOREIGN COUNTRY (under 35 USC 119)
AND- it was UNINTENTIONAL!
AND- it is within 14 MONTHS of the foreign filing
Pay hefty FEE
Does FOREIGN PRIORITY move back the date a US PATENT becomes PRIOR ART?
Pre-AIA 102(e)- NO
- Date of foreign application IS NOT the date of a prior art US patent
- Whereas- Effective filing date of a US PATENT obtaining the benefit of DOMESTIC priority IS the date of the patent as prior art
Post AIA 102(a)(2)- YES
- Foreign priority can create a prior art date under new 102(a)(2) as of its EFFECTIVE FOREIGN FILING DATE if it eventually becomes the basis for a PUBLISHED or ISSUED US application, or a WIPO-published (PCT) application
Requirements to Obtain FOREIGN PRIORITY (35 USC 119(e))?
(and to make perfect?)
- All foreign applications filed LESS THAN ONE YEAR AGO (not including Saturdays, Sundays and Holidays)
- At least one COMMON INVENTOR
To make perfect (to secure the priority):
1. Make claims in SIGNED ADS
2. Filed CERTIFED COPY of foreign document
NOTE: Translation only necessary if you need to rely on it to overcome rejection)
Requirements to Obtain DOMESTIC PRIORITY from a nonprovisional (35 USC 120)?
(and to make perfect?)
- COPENDING
- At least one COMMON INVENTOR
- (Optional) References to Parent application by Serial Number and Filing Date)
To make perfect (to secure the priority):
Listed in signed ADS
Requirements to Obtain PRIORITY from a PROVISIONAL application (35 USC 119(e))?
(and to make perfect?)
- Replacement application must be filed with ONE YEAR (not inc Sat/Sun/holidays)
- At least one COMMON INVENTOR
- No design application
- (Optional) References to provisional; by application number
To make perfect (to secure the priority):
Listed in signed ADS
What signed form is necessary to ASSERT ENTITLEMENT to any benefit of a prior-filed application?
Application Data Sheet
- Inventor(s) and their address(es)
- Who is representing the applicant and their address and Registration Number
- docket number of filer, if any
- Corresponding address
- If the application relies on an earlier filing, lists domestic benefit or foreign priority information
- Lists if application was ever filed previously anywhere
NOTE: For provisional applications, ADS must also identify application as a provisional
How long do you have to ASSERT ENTITLEMENT to any benefit of a prior-filed application?
FOUR MONTHS from filing or 16 MONTHS from earliest priority date, whichever is later (and MUST include CERITFILE copy of foreign priority within same timeframe)
Note: If missed but BEFORE ISSUE and UNINTENTIONAL?
- FILE A PETITION and pay hefty FEE (367 CFR 1.17(t)
- Can do it right up ISSUE FEE is paid and patent ISSUES
- If close to issue date, may be too late to appear on printed application, so will need to include a CERTIFICATE OF CORRECTION
AFTER ISSUE? TOO LATE! NOT EXTENDABLE!! Can’t do reissue- claims will be rejected citing prior art of earlier application. Rights are lost and can’t be fixed
Note: Claim for priority may be made in a CPA (filed under Rule 1.53(d) if not made in the parent
