MPEP 200 Flashcards
Relationships, Application Types, Status of Applications, Foreign and Domestic Priority
Types of U.S Patent Applications
(1) national application - filed directly at the Patent Office
(2) PCT application - which has entered the national stage
National Application
Where is it filed - USPTO
Filing date- gets a filing date with or without oath or declaration. can be given an data with a NOA
Examiner Discretion - applies in restrictions for separating out inventions
What is needed for a national application
specifications
clams
drawings
(this is your filing date)
PCT National Stage Application
Unity of invention practice applies in restrictions
What is needed for a National Stage Application to receive a filing date
FOT (need FOT to step onto stage)
Fee
Oath
Translation
(need all to receive a filing date)
Unity of Invention
all claims must similarly relate to the same content then there is unity (NOT examiners discretion)
Inventorship Requirements
must contribute to conception of at least one thing
ensure all inventors are correctly listed (corrections may influence the basis of priority)
Requirements for Earlier Filing Date (inventor ship)
at least one common inventor between the two applications must be present
(applies for domestic and foreign)
How is inventorship established
submitting a complete signed 1. ADS
2. Signed oath/declaration
3. Substitute Statement
Who owns inventions?
inventors, even if they ar obligated to assign/transfer the rights in any invention made
an assignment can be filed to transfer the invention to the “true owners”
What can owners do?
- actively control prosecution
- remove inventors from participating
37 CFR Rule 1.48
Submission of Correct Application Data Sheet
1. listing of correct inventors
2. Fee
3. Submission of oath by added inventors
AIA
American Invents Act
PRE- First to Invent
POST- First to file
AIA Inventor Correction
only consent of assignee is needed. NOT required
there must have been an error (no deceitful intent)
Correction of Inventorship - NON Provisional Apps
signed ADS
Identifies each inventor by legal name, address info
Required Fee
Correction of Inventorship - Provisional Apps
Signed request
Legal names
Required fee
(needed once cover sheet is filed)
Correction of Inventorship - Special Circumstances
- Reissue
- Issued Patents
2a. Statement from ALL signees, statements and FEE - Case before PTAB (request in app must be in form of a motion)
Correction of Inventorship - Continuing Apps
- NEW Oath/Declaration or Substitute Statement is not required that claims benefit of an earlier app (provided that an O/D/Sub statement was executed by or w respect to such inventor in earlier-filed app)
- Inventorship of continuing app is the inventors specified in the ADS filed before or concurrently with copy of Inventors O/D from earlier app
(if inventorship was not filed that way, then the inventorship is the inventorship set in the copy unless it is accompanied by a statement signed w each inventor in the continuing app)
Correction of Inventorship - Miscellanies Oath/Declaration Facts
- Any new joint inventor named in continuing app must provide an oath or declaration in compliance with the section
- Assignment may serve as an oath or declaration of the assignment as executed if
- it includes information and statements required AND a copy of assignment is recorded
7 No’s to Provisionals
No IDS
No Claims
No Examination or Amendment
No Oath or Declaration
No Design Apps
No Priority from Other Apps
No Priority from Design Apps
Required Parts of a Provisional
- Cover sheet specifying : type of application (application), names of inventors, residence of inventors, title of invention, name and registration number of agent/attorney, docket number of filer, correspondence address
- Filing Fee
- Specifications (35 USC 112)
- Drawings (if any)
Purpose of Provisional
placeholder to be used to claim priority (but must have overlapping information with the other application)
Revival (Provisional)
only possible within its 12 month pendency
(unintentional)
extended to 14 months + a big fee
Rule 1.53 (c)
Minimum requirements for a provisional to receive a filing date
1. specifications
2. drawings
(Note it must support understanding of invention under 35 USC 112(a) and 113)
Notice of Missing Parts (Prov)
if something is missing from the cover sheet- have a 2 month period to respond
(note the effective filing date of provisional may be shifted to the date missing parts are submitted)
Utility Applications (NON-Provisionals)
filed WITHIN (1) year post provisional application.
Can take priority date of provisional (only if overlapping information)
NOTE: after 1 year period provisional is abandoned
Criteria for Priority
at least (1) inventor from provisional has to be in utility
Conversion NON-Provisional to Provisional
MPEP 601.01 (c)
file a petition with a FEE
must be filed within 1st year
Conversion Provisional to NON
upon request
shortens term
Continuation Applications
- CO-Pending
- second… n-th etc. application by SAME applicant for SAME invention claimed in a PRIOR
- NON-Provisional Application, and filed BEFRE the original (parent) application becomes abandoned or issued
When to file and elements of Continuation
- Serve as a fresh start with prosecution after a FINAL rejection rather than taking an appeal or filing for RCE
- Can be in form of fresh set of papers with new Oath or copy of the oath in parent (NO new oath is required)
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Alternatives to Continuation
- RCE
- Appeal
Continuation in Part (CIP)
- continue with the same invention + new matter
- second applicaiton by the SAME applicant for the SAME invention claimed in a prior non-provisional application
- CO-Pendent
- Filed under Rule 1.53 (b)
OVERALL repeats some substantial portion of the earlier application and ADDS matter not disclosed in the earlier application
NOTE: multiple filing dates depending when subject matter arrived at the USPTO
Divisional Application
- Divides the parent app into separate inventions
claims subject matter - disclosed in the earlier parent application
- CO-Pending
Substitute Application
- NOT A CONTINUATION
- must have the same disclosure as the earlier application (by mistake or on purpose) are NOT co-pending with parent
- NO benefit from earlier application
Timing of Continuing Applications
- Filed at any time during prosecution or appeal as long as parent is alive to claim benefit
- should contain a sentence incorporating the prior application by reference
35 USC 111 - Filing of Applications
ALL apps must be filed under Rule 1.53
1.53 (b) can be used to file ANY app or any form of continuation thereof
Note: copy of original app and oath with suffice for continuations and divisions
Request for Continued Examination (RCE)
filed with a request, fee and a submission of something for the examiner to consider.
NOT a new application filing
Rule 1.53
1.53 (b) - Continuation filing (begin or begin again)
1.53 (c) - Provisional Filing
1.53 (d)- Design (for filing divisional and continuations)
Naming of Inventors is not necessary to get a filing date
37 CFR 1.53 (d) Continued Prosecution Applications (CPAs)
- Design Patents only
- file of the parent in continued while the parent itself is abandoned
- Same serial number as its parent with no reference of parent
- Cannot be filed unless parent is dead
- Everything from parent carries over (small entity statement, claims for foreign priority, etc)
Reference Filig
when an application has previously been filed and applicant needs to submit an ADS that references the previous file application by country serial number and filing date
certified copy of reference app must be completed within the 16 months of the original reference filing date
When is a translation of required for foreign applications
to overcome a rejection based upon an intervening reference
a reference which has a date as prior art BETWEEN the U.S filing date and the earlier priority date
Requirements to secure prioirty
- Prior application must satisfy 112 (a)
- a proper claim for priority must be made in the subsequent application (2nd application)
35 USC 120
Domestic Priority
US CO-pending application or earlier application that can be traced along a chain of other CO-Pending Apps
35 USC 112(a)
must be enabling
have proper description
disclose best mode
35 USC 119
Foreign and Provisional Priority
Priority Claim
claim is made within 16 months from the filing data of the earliest-filed application or 4 months from the filing of the later-filed patent application
different claims can have different effective filing dates
Effective Filing Date
when an application is entitled to domestic priority because it is a proper continuation, CIP, or divisional, then the effective filing date is the earlier date the parent was filed
Note: a claim is entitle to the filing date of the earliest patent application
Foreign Prioirty
- earlier filing fate granted within a year of the first filing date
- CANNOT re-establish 1 year time period (you must withdraw and refile within the same country to restart)
- pushes back date of invention
- can create a prior art date under 102(a) as. its effective filing date if it becomes the basis for a published or issues U.S WIPO (PCT) app
NOTE: if a publication is made after first filing (foreign) but before the 2nd filing (U.S) it cannot be considered prior art if US claims priority
Prior Art Date
Date which publication/disclosure was made
prior art date of a reference under PRE-AIA 35 USC 102(e) may be the International filing date
35 USC 120 and 121
Domestic Priority under a NON provisional
counts in both post and pre AIA (bc must prove made in US and also filing date)
Restoration of Rights
If failure to file the license (foreign) was unintentional a US application may be filled up to 14 months following a foreign filing and have priority reissued under PLTIA
Hefty FEE
Proper
paper has everything necessary
PRE- AIA
102(e)
first to invent system
inventors can rely on their earlier works and experimental results to establish novelty (conception and reduction)
A U.S application hen published or issued can be used as prior art as its filing date
does NOT pertain to foreign because it only matters if the invention was made in US
POST AIA
first to file system
Requirements for Obtaining Foreign Priority
- file a claim for priority (ask to benefit of foreign filing in a ADS)
- file a certified copy of original foreign application
Application Data Sheet (ADS)
bibliographical information
lists name of inventor and any priority the applicant beleives they are entitled to
Signed ADA is the only way to insert entitlement of ANY benefit of a prior filed application (US or Foreign)
