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USPTO Patent Bar > MPEP 600 (parts, form), 2000 (duty of disclosure), 2400 (biotech) > Flashcards

MPEP 600 (parts, form), 2000 (duty of disclosure), 2400 (biotech) Flashcards

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1
Q

What is needed to change inventorship?

A 
Either:
(A1) New application datasheet for new inventor,
(A2) new oath or declaration
(A3)fee
or
(B1) file a continuation application.
602.01(c)(1), Rule 1.48.
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2
Q

Notice of Omitted Items: On June 1 you file an application under 37 CFR 1.53(b) and there’s some missing matter. In what circumstances can you provide the missing matter and still get the June 1 filing date?

A

If the missing matter was in a priority document. 37 CFR 1.57 (b)

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3
Q

What are options after receiving a Notice of Omitted Items?

A

a. petition that you actually sent the allegedly omitted items.
b. File a petition and fee, together with the omitted items, a copy of the Notice and, if necessary, a supplemental Oath or Declaration, requesting that the later filing date be awarded.

c. Do nothing in response to the Notice of Omitted items, notify the USPTO that you will not be substantively responding. File a preliminary amendment to clean up loose ends arising from omitted items.
MPEP 601.01(d) (check this)

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4
Q

Inventor oath/declaration: must it be in English?

A

No. It must be in a language understood by the inventor. MPEP 602.06, 37 CFR 1.69.

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5
Q

What is a substitute statement?

A

Applicant may execute a substitute statement instead of an oath/declaration when the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort. MPEP §604, CFR § 1.64.

who can sign: co-inventor, assignee, co-assignee, one with strong proprietary interest

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6
Q

Can a declaration/oath be amended?

A

No. Use a supplemental oath instead, which is really a replacement. MPEP §603

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7
Q

Who is the applicant on a patent application?

A

The assignee, e.g., the owner. If there are none, then inventor is applicant.
MPE 605. Rule 1.42, U.S.C. 118

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8
Q

What does the inventor declare in an oath/declaration?

A

Inventor:

  1. provides name.
  2. declares himself as a co-inventor
  3. identifies the application to which declaration is directed.
  4. authorizes filing
  5. must have reviewed and understood application.
  6. understands duty to disclose.
permission to file,
Rule 1.63.
Pre-AIA also includes:
reviewed application,
duty to disclose.
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9
Q

How long can an applicant postpone filing an oath/declaration?

A

Until filing the issue fee. 37 CFR § 1.43, § 1.45, § 1.46

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10
Q

Why would you file a preliminary amendment to an application when also filing the application?

A

To cancel claims, e.g., to avoid fees.

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11
Q

What is sufficient for co-inventorship?

A

Inventor B knows about inventor A’s work.

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12
Q

Can two people be co-inventors if they’ve never met or communicated directly with eachother?

A

Yes.

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13
Q

What is required for changing inventorship for a non-provisional application?

A

(1) New Application Data Sheet per § 1.76
(2) Required fee.
(3) New oath/dec for any new inventor.
(37 CFR § 1.48)

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14
Q

What is required for changing inventorship for a provisional application?

A

(1) request to correct inventorship that identifies each inventor.
(2) fee.
Rule 1.48(d)

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15
Q

Can a notice of missing parts affect the filing date?

A

No.

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16
Q

Which is an appropriate multiple dependent claim?

(a) A pencil as in claims 1 and 2…
(b) A pencil as in claims 1 or 2…

A

(b) A pencil as in claims 1 or 2…

The claim must refer to back in the alternative only, that is, using or, not and.

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17
Q

Claim counting for fee determination: Claim 8 depends from claim 7, which depends from claim 6 or claim 1. How many claims does claim 8 count as?

A

2.

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18
Q

Claim counting for fee determination: Claim 8 depends from claim 1 and claim 6. How many claims does this count as?

A

Just 1. It’s an improper multiple-dependent claim for not referring back in the alternative.

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19
Q

Incorporation by reference:

(a) What is “essential material” and
(b) Name the only types of documents allowable for incorporation by reference of “essential material.”

A

(a) material is “essential” when necessary to satisfy either
§112(a): enablement
§112(b): precisely identify and distinctly claim the invention
§112(f): structure, material, or acts behind means + function
(b) U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference.
Rule 1.57, § 608.01(p)I(d)

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20
Q

What type of phrasing should you avoid in the abstract?

A

“The form and legal phraseology often used in patent claims, such as ‘means’ and ‘said,’ should be avoided.”

§ 608.01(b)

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21
Q

Is the abstract part of the specification?

A

Yes. § 608.01(b)

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22
Q

What is a substitute specification

At what point during prosecution is it no longer allowed?

For what two types of applications can it not be used for?

A

Use it instead of amending specific paragraphs or figures.

Allowed until payment of issue fee.

Not allowed for reissue applications or reexamination proceedings.

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23
Q

Information Disclosure Statement: When is due, and what are consequences of filing it late?

A
  1. Before any of: 3 months from filing in U.S. or national stage, or first OA on merits, or first OA after RCE .
    37 CFR 1.97(b)
  2. After above time periods and before final/allowance
    fee or statement that reference was received from foreign patent office or known (by you, inventor, owner) less than 3 months from filing of IDS.
  3. After final or close of prosecution (Ex Parte Quayle) or after allowance (before issue fee payment): both fee and statement are required. If parties have known for more than 3 months, must file RCE or CON.

MPEP 609. Rule 1.97

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24
Q

Information Disclosure Statement: You patent has received a notice of allowance. What if you (practitioner, inventor, owner) know about a reference for more than 3 months before filing an IDS?

A

Either:
(a) Do not pay issue fee. File an RCE or CON application within 3 months of notice of allowance. File IDS with RCE/CON.

(b) Pay issue fee. Petition to withdraw from allowance, then file an RCE or CON. File IDS with RCE/CON.

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25
Q

Can you request an extension for filing an IDS?

A

No.

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26
Q

What if you find relevant prior art after the application has been allowed and issue fee has been paid?

A

“The proper course is to seek withdrawal of the application from issue so the art may be considered in a continuation application” or in an RCE. (study guide 600-30,See MPEP 609.04(b) IV

27
Q

What are consequences of breaching duty to disclose prior art that is material to the application at issue?

A

Pre-issue: Refusal to grant.

Post-issue: patent declared invalid.

28
Q

When might an examiner require submission of a Requirement for Information? § 1.105

A

A Requirement is used in technical areas where the PTO could use a little help from applicants to zero in on information to help the examination process.

29
Q

When an application is filed with a missing page or figure, the Patent Office sends a:

A

Notice of Omitted Items.

30
Q

What is required to get color photographs included in the application?

A
  1. 3 sets of photographs (if not submitted using EFS).
  2. Petition
  3. Fee.
  4. An amendment to the specification specifically stating that the patent or application as filed contains one or more color drawings.

Rule 1.84., 608.01(f)

31
Q

An IDS filed after a first official action but before allowance or Final Action must be accompanied by a ____ or ____.

A

A statement that applicant and practitioner have known about the art for less than three months.
or
A fee.

MPEP 609, rule 1.97.

32
Q

How do you add an inventor on a pending application?

A

New inventor signs an oath.
Update the application data sheet.
No need for stating no deceptive intent.

Rule 1.48.

33
Q

When does duty of disclosure end?

A

“The duty to disclose information, however, does not end when an application becomes allowed but extends until a patent is granted on that application.” MPEP 2001, 37 CFR 1.56.

34
Q

When counting claims, how many claims does an improper multiple dependent claim count as?

A

One.

35
Q

How to you overcome a rejection based on improperly incorporated material of a publication by reference? And which rule is it?

A

Rule 57(g): Amend the specification to include the material incorporated by reference, and accompany it with an affidavit stating that the amended material is the same as that incorporated by reference.

MPEP 608.01(p)

36
Q

When can you file an IDS without a fee?

A

Two time periods:

(1) Within 3 months of filing date of national application or date of entry of national stage (PCT), or before first Office Action on the merits.
(2) Between time period above and close of prosecution (Final OA or allowance), if you’ve known about the reference for less than three months.

MPEP 609, rule 1.97.

37
Q

Who has a duty to disclose?

A

Anyone involved with prosecuting the patent, from inventor, practitioner, someone who assists in preparing the application.

38
Q

How to do discharge your duty to disclose?

A

“Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.: Rule 56(d)

39
Q

Regarding duty to disclose, say the application is has issued, what is required when you receive a new references, e.g., from a foreign patent office?

A

“The duty to disclose information, however, does not end when an application becomes allowed but extends until a patent is granted on that application”

MPEP 2001.04, Rule 1.56

Related:
“Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”

MPEP 609.04(b) IV,

40
Q

An IDS filed after the first action (on merits) and before allowance or final OA, must be filed with:

A

Either a fee or a statement that the references have been known for less than 3 months, e.g., via a communication from foreign patent office or from an inventor.

MPEP 609, Rule 1.97

41
Q

Transition date for patent term is:

A

1995, June 8.

42
Q

The examiner objects to the specification on

the ground that it improperly incorporates material of a non-patent publication by reference. What should you do?

A

Amend the specification to include the material incorporated by reference, and accompany it with an affidavit stating that the amendatory material consists of the same material incorporated by reference.

43
Q

You file an IDS that includes a reference you’ve known about for more more than three months. When is a statement not required?

A

If you file the IDS before the first office action (on merits). MPEP 609.

44
Q

Why would a supplemental oath/declaration be needed during prosecution when no inventors have changed?

A

only pre-AIA: Whenever claims are amended to add limitations not previously claimed, but supported by the application as initially filed, a supplemental oath or declaration must be filed because the inventors have not sworn or declare that the subject matter not previously claimed is part of their invention and patentable to their belief. PLI 700-27.
37 CFR 1.67(b) (pre-AIA) Supplemental oath or declaration.

45
Q

What is no longer required to correct inventorship? What is required?

A

No longer needed: A petition.
Required:
1. File a new ADS and pay a fee.
2. Oath/Dec for any added inventor.

Rule 1.48.

46
Q

For a provisional application, what qualifies as a cover sheet?

A

See 37 C.F.R. l.53(c)(l). A complete provisional application includes a cover sheet, which may be an application data sheet or a cover letter identifying the application as a provisional application. If a provisional patent application does not include a cover sheet, the application will be treated as a non-provisional patent application.

MPEP 601.01(b) provisional application, look for cover sheet.

47
Q

When filing a U.S. application that claims priority of the foreign application, when is a certified copy of the foreign application due?

A

C.F.R. 1.55(f): When an original application is filed under 35 U.S.C. 111(a), a certified copy of the foreign application must be filed within the later of

(1) 4 months from the actual filing date of the application
and
(2) 16 months from the filing date of the prior foreign application.

MPEP 213 Right of Priority of Foreign Application

48
Q

In what circumstances can you claim foreign priority after the deadline of rule 1.55(d)

A

When missing the deadline is unintentional.
A petition to accept a delayed claim for priority must be accompanied by:
(1) the priority claim;
(2) a certified copy of the foreign application is required by Rule 1.55(f);
(3) the surcharge; and
(4) a statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

MPEP 211.04

49
Q

What should you do if you accidentally file an application, and it includes information that you regret submitting?

A

If it’s in the spec, claims, drawings, or preliminary amendment, then … nothing.
Otherwise, petition and pay fee under rule 1.59 to expunge.

50
Q

Does a continuation application require a new oath/declaration?

A

No. You can use the one from the parent. “A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012,even if the oath or declaration identifies the application number of the prior application.” MPEP 602.05.

Though rule 1.63(d) says that a newly executed oath is not required … provided that an oath or declaration in compliance with this section,” which in part (c) says that the inventor has reviewed/understands the contents of application and claims. So for CIP, likely need a new oath/dec.

51
Q

Does a divisional application require a new oath/declaration?

A

No. You can use the one from the parent. “A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012,even if the oath or declaration identifies the application number of the prior application.” MPEP 602.05.

52
Q

Where can I read about information disclosure statements?

A

MPEP 609

Rule 1.97.

53
Q

Deposit rules for biological materials: What document establishes the requirements for a biological deposit for patent purposes?

A

Budapest Treaty on the International Recognition
of the Deposit of Microorganisms for the Purposes
of Patent Procedure.
MPEP 2402

54
Q

How long is the term of deposit of biological material?

Or where would you look and with what search term?

A

MPEP 2408 Term of Deposit.

Rule 1.806: the term of deposit is “at least thirty (30) years and at least five (5) years after the most recent request” for a sample; the agreement sufficiently ensures that the deposit will be “available beyond the enforceable life of the patent”

55
Q

What is required to get

(a) a filing date?
(b) a fixed filing date?

A

(a) Specification, with or without claims.
U.S.C. 111. MPEP 601. 1.53(b). As of Dec. 18, 2013 - PLTIA.
(b) Specification, claims, and drawings!
However, when you submit a drawing and/or claims, that is new matter. So you’ll likely get a new filing date.

56
Q

Can a preliminary amendment ever include matter that is not in the originally filed application?

A

Yes, only if the preliminary amendment is filed on the same day as the application.
MPEP 608.04(b)

57
Q

Will the PTO record assignment document in a non-English language?

A

Only with English translation. Rule 3.26.
“The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.”

58
Q

If an ADS and oath/declaration are filed at the same time, and information on the two documents is inconsistent, which information on which document governs?

A

ADS.

Rule 1.76(d).

59
Q

How are the drawings and the claims related?

A

“The drawing in a nonprovisional application must show every feature of the invention specified in the claims.”

Rule 1.83. MPEP 608.02(d)

60
Q

What are your options if, after final rejection or allowance, you realize that a reference document that should be disclosed when filing has not been?

A

A. Within three months of allowance, don’t pay issue fee, file either an RCE or CON, and cite the reference in an IDS.
A. Pay issue fee, file a petition to withdraw application from issue, file either an RCE or CON, and cite the reference in an IDS.

(If after final rejection, omit issue fee parts above.)
Rule 1.313, MPEP 1308 Withdraw from Issue.

61
Q

For due dates, how long is:

(a) one month
(b) two months
(c) three or more months

A

(a) greater of one calendar month and 30 days
(b) greater of two calendar months and 60 days
(c) the number of calendar months

62
Q

The patent assignee wants to conceal the name of the inventor because, say, the inventor’s public reputation. Can the assignee do this?

A

No. “An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.”
Rule 1.41.

63
Q

In what circumstances can you incorporate by reference a patent or patent application that itself incorporates something by reference?

A
  1. When incorporating non-essential material
  2. When the reference incorporates only non-essential material.
    MPEP 608.01(p) Completeness of Specification

USPTO Patent Bar (5 decks)

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