MPEP 600 Flashcards
General Application Requirements
- 8.5x11
- Left Margin: 1 inch
- Other Margins: 3/4 inch
- No holes in sheet
- Line Spacing: 1.5 or 2.0
- Pages numbered in the middle (USPTO prefers numbering to be at the bottom of the page)
Specification Preferred Arrangement
- Title of the Invention
- Cross-reference to Related Applications
- Statement: Federally Sponsored R&D
- Name of Parties in JRA
- Reference to “Sequence Listing,” tables, computer program listings
- Background
- Claims
Provisional Cover Sheet
- Identify application as provisional
- Residence of Inventor(s)
- Name and Registration of Attorney/Agent
- Docket No. Used by Person Filing the Application
- Correspondence Address
- Any government interest in application
**Cannot include IDS with provisionals
Application Data Sheet
Contains Information Specific to Application and Invention
- Name
- Residence
- Mailing Address
- Citizenship of Each Applicant
Correspondence Info
Application Info
- Title of invention
- Suggested classification (class and subclass)
- Tech center to which the subject matter is assigned
- Total number of drawing sheets
- Suggested drawing figure for publication
- Docket number
- Type of application
- Any information pertaining to a secrecy order
Supplemental ADS
Should be title as such.
Must be a full replacement copy of original ADS.
Changes:
- Underlining for additions
- Strikethrough or brackets for deletions
Footer contains word “supplemental.”
Include application number and filing date.
Incomplete Applications: Notices
- Notice of Missing Parts
- Notice of Incomplete Application
- Notice to File Corrected Application Papers
- Notice of Omitted Items
Notice of Missing Parts
Sent if there is enough information to receive a filing date, but missing either an oath/declaration, translation, or fee
Notice of Incomplete Application
Sent if there is not enough information for a filing date.
Processed as incomplete under 37 CFR 1.53(e) if period lapses and applicant has not filed response or petition.
Notice of Omitted Items
Filing date depends on the form of correction required.
1) Send in missing page and filing date is readjusted to the date the page is received; or
2) Don’t send in missing page, retain the filing date, send in amendment to renumber pages consecutively and cancel any incomplete sentences caused by the absence of the omitted pages
Missing papers must be sent within 2 months of the date posted on the Notice. May petition if believes the missing items were deposited with original disclosure.
Original Oath or Declaration
- Must be executed
- No limit on age (as long as understand what they are signing)
- Each inventor identified by full name
- Citizenship of each inventor
- Statements: believes original and first inventors, knows duty to disclose
If not included in ADS, also include:
- Mailing address and residence of all inventors
- Any foreign applications for patent or inventor’s certificate for which a claim for priority is made
**Can never be amended (Some errors can be corrected in ADS)
AIA: Declaration Update
Section 4 of the AIA provides for a declaration in place of an oath.
No longer required to state:
- Citizenship
- First inventor
- Application made without deceptive intent
Substitute statement may be made if inventor is: deceased, under legal incapacity, cannot be found or reached after diligent effort, inventor is under an obligation to assign the invention but has refused to make the oath or declaration
Applicant: Signature and Name
- Does not have to be in English
- Separate party holding proprietary interest int he application can sign on behalf of an inventor who refuses to sign
Applicant: Joint Inventors
Will appear on issued patent the way they were listed on the oath/declaration
Can file jointly even if they:
- Did not physically work together
- Did not work on the invention at the same time
- Did not make the same type or amount of contributions
- Each did not make a contribution to the subject matter of every claim
Title of the Invention (606)
Should be descriptive, accurate, and fewer than 500 characters. (Examiner can require a new title if original is not descriptive enough)
Cannot Start with “a,” “an,” or “the”
Filing Fee (607)
Separate, distinct, and due on filing:
- Filing Fee
- Search Fee
- Examination Fee
- Application Size Fee (if over 100 pages)
- Excess Claims Fee (3/20)
Filing Fee: Refunds
The office can only refund fees which are paid by mistake or fees which are paid in excess of what is required.
- Refund request must be filed within 2 year limit (not extendable)
If based on later establishment of small entity status, must be filed within 3 months of obtaining the small entity status.
Specification: General
Description in writing of the invention which describes how to make and use it.
- Explains novelty and any improvements from the prior art
Specification: Formatting
- Separate Sheet
- Text in non-script type font
- Spelling can be in British style English
- Hyperlinks only acceptable when part of the invention itself (no incorporation by reference)
- Tables and/or Chemical formulas allowed in place of drawings (no drawings, flowcharts, or graphs)
- Can be in non-English language (translation, signed statement that translation is accurate)
Specification: Abstract of the Disclosure
Such clear wording that even one not skilled in the art can understand the nature and gist of the disclosure
- Separate sheet of paper
- Clear, concise language
- Single paragraph: between 50-150 words, no more than 15 lines
- Not repeat any information in the title
- No comparisons to prior art
- Include whether: Machine/Apparatus, Organization and Operation, Article, Method of making something, Chemical compound with identity and use, Mixture including ingredients
Specification: Background of the Invention
Describes the fuel of the invention.
- Should include a statement of the pertinent field of art
- Description of related art
Specification: Brief Summary of the Invention
Should define the exact nature, operation, and purpose of the invention.
Should be consistent with the subject matter of the claims.
Specification: Brief Description of the Drawings
Every drawing should be thoroughly described.
Every label on the drawings must be clearly defined.
Specification: Detailed Description of the Invention
Written so that one skilled in the art could easily know
- how to make and use the invention
- without extensive experimentation (unless extensive experimentation is common in the field of the art)
Table can be included in this portion. If tables in description then it is not allowed int he drawings.
Specification: Mode of Operation of the Invention
Best mode of operation of the invention known at the time of filing the application
Claims: General
Distinctly point out and define what the applicant is seeking legal protection for.
- Located at end of the specification, line of indentation between claims, semicolon or commas separate each paragraph.
- Original numbering must be kept during prosecution (can be renumbered only after allowance)
- Metric units (can be followed by English units)
Preamble defines the description of the art which allows for the disclosure of the elements or steps that make up the claim limitation
- Begin with “I claim” or “The invention claimed is” in capital letters and ending with a period
Claims: Markush
Used to describe a group of things when there is no generic term to describe the group.
“Consisting of” and “and” to define the group
Claims: Jepson
Includes a preamble that defines what is old
- Can be used as prior art
Translational phrase defining the new improvements from the old
Claims: Dependent Claims
- Refer back to preceding claims, alway after claim from which it depends
- Will not be infringed upon by anything that does not also infringe upon the basic claim upon which it depends
If base claim is rejected by the examiner, the dependent claims are objected to (not rejected)
Claims: Multiple Dependent Claims
Refer back to preceding claims in the alternative.
- Can refer back to only one set of claims
- Must be in alternative form
Fee Calculation: Considered to be the number of dependent claims to which they refer.
Drawings Not Required
- Coated Items
- Items made from specific materials or compositions
- Laminated structures
- Items which sole novelty is a particular material
Drawings: General
- No filing date until required drawings received
- Must show every feature of the invention as specified in the claims and any improvements from prior art
- May include labels and symbols (arrows okay, NO CENTER LINES)
- No wording of size or scale
Color Drawings
Allowed by petition and fee
- 3 sets
- Specification amendment directing public to the color drawings
Later-Submitted Drawings
- Include a sheet titled “Replacement Sheet” or “New Sheet”
- No new matter
Corrected drawings can be substituted which include
- corrections of informalities
- changes approved by the examiner
Informal Drawings
Do not comply with drawing requirements.
Examiner can require a correction to make these drawings acceptable.
Drawings: Canceling a Figure
A replacement sheet needs to be submitted.
- Marked-up copy of the drawing with some annotations stating the cancellation
Photographs
May be allowed on some occasions if drawings do not sufficiently depict the invention.
- Usually black and white photographs
- 8.5x11
- Same margin requirements
Color photographs can be accepted on rare occasions
Tables
- Large length are to be submitted on a CD or in e-form format
- Default view is portrait, may specify landscape
New Matter
Matter which is not adequately disclosed in the original specification or that was not disclosed altogether.
CIPs are the only way to submit new matter after the filing date.
- New matter in CIP given new filing date as of the CIP submittal date
IDS: General
- Reference 1.97 for timing and 1.98 for content.
- Not allowed in provisionals.
- Cannot be submitted by third party
- No new IDS required for Continued Examination or Continuing Applications, Except if parent application is an international application
IDS: Contents
Patents in IDS:
- Patentee
- Patent Number
- Issue Date
Publications in IDS:
- Author
- Title
- Relevant Pates
- Date of Publication
- Place of Publication
Copy of translation of non-English references, if available. If not available, a concise explanation of its relevance.
IDS: Time Periods
1) 3 Months After Filing or National Stage
- Can be freely filed
- Prior to first OA
2) Before Final OA or NOA
- Fee and Statement that info was disclosed in communication with foreign patent office no more than 3 months prior to filing or that no info was known 3 months prior to filing
3) After NOA
- Fee and Statement (above)
- Generally no acceptance of IDS after issue fee has been paid
Publication of Patents: General
18 months from earliest filing date or claim of foreign or domestic priority.
Exceptions:
- Applications no longer pending (issued or abandoned)
- Publication would be detrimental to detrimental to national security
- Provisional applications
- Designs
- Reissues
Publication of Patents: Request to Avoid 18 Month Publication
- Must be made upon filing
- Must certify that the invention has not been and will not be the subject of a foreign patent application
Publication of Patents: Format and Process
Applications must be in proper condition for publication:
- Filing fee paid
- Oath/declaration filed
- Proper Specification
- Drawings in acceptable condition for publication
If applicant wants the publication to reflect a filed amendment, the applicant must timely file a copy of the application in proper amended form
