MPEP 200 - Types, Cross Noting, and Status

Question 1

What are the contents of a provisional application?

Answer 1

1. Specification
2. Drawing (if necessary)
3. Cover sheet or Signed ADS
4. Appropriate fees (small entity discount available)

NOTE: The minimum requirements are specification and any necessary drawing, and they need not be in English.

Question 2

The Seven “No’s”

Answer 2

1. No claims;
2. No oath/declaration;
3. No examination and/or amendment;
4. No design applications;
5. No possible claim for priority from other applications;
6. No IDS; and
7. No basis for priority for a design application.

Question 3

Claim of Priority for Provisional (Timeline)

Answer 3

1. To establish priority, nonprovisional must be filed within 1 year.
2. Claim of priority must be filed within later of: 4 months from nonprovisional filing date OR 16 months from provisional filing date. (English translations must be submitted in this time period as well).
3. MUST have at least one common inventor between provisional and nonprovisional.

Question 4

Provisional Revival

Answer 4

Provisional can be revived if a claim for priority if delay was unintentional.

Requires: Fee, and statement for entire period of delay that it was unintentional.

Question 5

Time Period for Claim of Foreign Priority

Answer 5

Claiming priority of a foreign application must occur within 12 months (or 6 months for a design patent).

Measured from the date of the first foreign application filing.

Question 6

Foreign Priority and 102(b)

Answer 6

A foreign priority claim established an effective US filing date for commonly disclosed subject matter. HOWEVER, this effective filing date cannot overcome the statutory 102(b) bar.

Question 7

Requirements for Foreign Priority Claim

Answer 7

Condition to Obtain: All foreign applications filed less than 1 year ago.

Requirement to Perfect:

1. Make claim in ADS.
2. File certified copy of foreign document.
3. Translation necessary only if rejection given.

Question 8

Requirement for claim of Domestic Priority

Answer 8

Conditions to obtain:

1. Copending;
2. At least one common inventor;
3. (Optional) At least one reference to parent application by serial # and filing date.

Question 9

Provisional Priority

Answer 9

1. Replacement utility app must be filed within one year.
2. No design application.
3. At least one common inventor.

Question 10

Effect of Foreign Priority

Answer 10

1. Does NOT count in determining Pre-AIA 102(e) date, but DOES count in determining AIA 102(a)(2) date.
2. Established earlier fate for claims against prior art.
3. Does NOT count in patent term.

Question 11

Effect of Domestic Priority

Answer 11

1. Counts in determining Pre-AIA 102(e) date and AIA 102(a)(2) date.
2. Establishes earlier date for claims against prior art.
3. Counts in patent term.

Question 12

Effect of Provisional Priority

Answer 12

1. Counts in determining Pre-AIA 102(e) and AIA 102(a)(2) date.
2. Establishes earlier date for claims against prior art.
3. Does not count in patent term.

Question 13

National Stage vs. National Applications

Answer 13

Treatment is the same except for two exceptions:

1. Restriction standards are different: Unity of invention for National Stage, Examiner discretion for National.
2. National applications may receive a filing date without oath/declaration, whereas, a oath/declaration is needed to receive a filing date for a national-stage application.