MPEP 200 Flashcards
Chapter 200 of the MPEP
To get filing date for US application you need to submit:
Spec, Claim, Drawing
You will subsequently get Notice of Missing Parts
To get filing date for PCT application you need to submit:
Fee, Oath, Translation, Spec, Claim, Drawing
Standard of restriction in US vs PCT:
US is examiner discretion,
PCT is based on treaty (NOT examiner discretion)
Types of Patents and associated CFR/USC:
Utility Patents (53b, 101)
Plant Patents (53b, 161)
Design Patents (53d, 171)
Inventorship defined as:
Contribution to conception ONLY
NOT RTP
Inventorship requirement to obtain benefit of earlier filing date:
Applications must share at least one common inventor for both domestic and foreign filings
Correction of inventorship is accomplished by:
CFR 1.48
Submission of:
ADS with new inventors listed
Fee
New Oath/Dec from new inventors
Requirements for gaining filing date for Provisional Applications:
Cover letter or signed ADS with all identifying information
Specification under CFR 112
Drawings (e.g. blueprints, photos, published papers, etc. )
Fee
Provisional Application benefits:
1 year window to claim priority for non-provisional PLANT or UTILITY application (NOT Design)
Does not count in patent term
Which patent types can benefit from a Provisional?
Plant and
Utility
(NOT Design)
Which patent types CANNOT benefit from a Provisional?
Design
Seven “nos” for Provisional Applications:
i. No claims
ii. No Oath/Dec
iii. No Examination
iv. No Design
v. No priority claims to other apps
vi. No Information Disclosure Statements
vii. No priority basis for design applications
(viii) Cannot be amended w/ new matter
A Provisional Application missing a part, and corresponding consequence:
No cover letter or fee or drawing - Notice of Missing parts and 2 mo window to submit or will become abandoned
Can a provisional be revived?
Yes, within it’s 12 month period for non-intent
A provisional can be made a non-provisional, or vice-versa, by:
petition and fee within the 12 months
Types of copending applications:
Continuation,
Continuation-in-part (CIP), or
Divisional
CPA (53d Design apps only)
Requirements for Continuation Applications:
2nd (or more) application by same applicant for same invention
Must not add new matter
must be filed before parent becomes abandoned or issued
No new oath required
Must have at least one common inventor
Available for 53b and 53d
Requirements for Continuation-In-Part Applications:
2nd application by same applicant for substantial portion of parent and adds new matter
must be filed before parent becomes abandoned or issued
New oath required for new matter
Must have at least one common inventor
Not available for Design applications (53d)
Requirements for Divisional Applications:
Application for distinct invention carved from claims of parent
must be filed before parent becomes abandoned or issued
No new oath required
Substitute Application:
Have same disclosure as earlier application but are NOT copending
NOT a continuation
Benefits of continuing (CON/CIP/DIV) applications:
Can file a copending application claiming the priority of it’s parent
Continued Prosecution Applications (CPA):
Filed for Design (53d) patents only
Parent immediately abandoned
Reference Filing points:
Created by the PLTIA
Requires:
filing date,
country, and
serial number of referenced app
12+2 rule for foreign priority:
Exception to 1 year foriegn filing prioity grace period:
With fee and affidavit swearing honest mistake, there is a 2 month window in which to have rights restored
12+2 rule for foreign priority
Does a proper claim to foreign priority gain a prior art date under pre- and post-AIA?
Date of proper foreign priority is:
NOT the prior art date for pre-AIA 102e (which is US only) (NO)
but
IS the prior art date for post-AIA 102a2 (YES)
and does not count for patent term
The window in which to claim foreign or domestic priority is:
16/4
Either 16 months from claimed priority date,
OR
4 months from application
whichever is later
CIP claim priority dates:
same priority date as parent application for subject matter disclosed in the parent app; and
the filing date of the CIP application itself as the priority date for new matter/claims
Amendments filed in the application must be signed by:
A patent practitioner of record;
A patent practitioner not of record who acts in a representative capacity; or
The applicant
When deleting inventors, a new oath is:
not necessary.
When determining patent eligibility, bright line rules are:
inappropriate (Bilsky)
In a CIP application, claims directed to the parent application gain the benefit of _______
Claims not directed to the parent applications, do not gain the benefit of _______
The parental filing date
