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Patent Bar Revise - TP > M.P.E.P. 600 parts, Form, and Content of Application > Flashcards

M.P.E.P. 600 parts, Form, and Content of Application Flashcards

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1
Q

Content of AIA Oaths and Declarations is…?

A

(b) REQUIRED STATEMENTS.—An oath or declaration under subsection shall contain statements that—

(1) the application was made or was authorized to be made by the affiant or declarant; and

(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

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2
Q

Pre-AIA Supplemental Oaths

A
  • No Fee to file
  • Can file whenever
  • If inventor refuses to sign the requirement can be waived. NOT FOR ORIGINAL OATHS.
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3
Q

Pre-AIA vs. Post AIA: Alteration of a Patent Application Before Filing

A

No one can alter EXCEPT:

-Pre-AIA: prior to execution an inventor can only alter the application by hand provided that each interlineation or deletion is initialed and dated by all inventors;

-Post AIA: an executed oath or declaration can still be used where the application papers are adjusted post execution, but only if the executed oath still covers the revised application.

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4
Q

What form does an oath have to be in?

A

The oath be a copy and need not be the original.

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5
Q

Under Post AIA, who can file and prosecute an application for a patent as the applicant?

A
  1. Inventor
  2. Assignee or Obligatory Assignee (Sub State),
  3. Person with Sufficient Proprietary interest (Sub State).
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6
Q

When would a Substitute Statement be used in lieu of an oath and declaration by an inventor?

A
  1. Deceased Inventor
  2. Under legal incapacity
  3. Cannot be found or reached after diligent effort
  4. Inventor is under obligation but has refused to execute
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7
Q

Define Applicant

A
  1. Inventor
  2. Joint Inventor
  3. Assignee
  4. Obligated Assignee
  5. Person with Proprietary interest
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8
Q

Assignee

A

Assignee of ENTIRE right, title and interest in the application

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9
Q

If an application is filed by anyone other than the Inventor what MUST be included?

A
  1. Application Data Sheet
    • ID the applicant
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10
Q

What must an applicant that is an assignee do?

A

Record documentary evidence of ownership no later than the date the issue fee is paid in the application.

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11
Q

What must an applicant who otherwise shows sufficient proprietary interest in the matter do?

A

File a Petition including:

  1. The required fee;
  2. A showing that such person has sufficient proprietary interest;
    AND
  3. A statement that making the application for patent is appropriate to preserve the rights of the parties.
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12
Q

Post AIA: Requirements to be able to make an Oath

A
  1. Inventor has reviewed and understands the contents of the application
  2. Aware of the duty of disclosure to the PTO.
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13
Q

Post AIA: Oath and Declaration Requirements

A
  1. Identify the inventor executing the oath or declaration by legal name;
    AND
  2. Identify the application to which it is directed; AND
  3. Include a statement that the person executing the Oath believes the named inventor to be the original inventor of the invention claimed; AND
  4. Statement that the application was made (or authorized) by the person executing the oath.

**Unless, through ADS
5. Full Name
6. Mailing address and residence

**Remember duty and review

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14
Q

When would a Substitute Statement be used in lieu of an oath and declaration by an inventor?

A
  1. Deceased Inventor
  2. Under legal incapacity
  3. Cannot be found or reached after diligent effort
  4. Inventor is under obligation but has refused to execute
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15
Q

Substitute Statement Requirements

A
  1. ID the inventor;
  2. A statement upon information and belief of the facts the inventor is required to state;
  3. ID of the person executing the SS and the relationship to inventor;
  4. ID the circumstances permitting the person to execute the SS; AND
  5. An acknowledgement that any willful false statement made in such statement is punishable.

**Unless in ADS
6. The residence and mailing address of person signing;
7. ID of each inventor by full name;
8. For each non-deceased inventor, the last known mailing address and residence.

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16
Q

Post AIA: How to fix Oaths and Declarations

A

Supplemental by same inventor

Correct in ADS

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17
Q

In what types of application can an Application Data Sheet be filed?

A
  • Provisional
  • Non-Provisional
  • National Stage Patent Application
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18
Q

When MUST an ADS be filed?

A

1.55 ~ Claim for Foreign Priority
or
1.78 ~ Claiming benefit of earlier filing date and cross-references to other applications.

to claim priority to or the benefit of a prior-filed application under 199,120, 121, 365.

**must be titled Application Data Sheet
**must be filed before

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19
Q

How to correct an ADS?

A

Must be done before issue fee.

Corrections can be done with exceptions:
- Change inventorship 1.48
- Foreign or domestic priority 1.55 1.78
- Correspondence address changes 1.33(a)

20
Q

Inventorship

A

Done Claim by Claim

Must be correctly listed and corrected according to change.

Turns on Conception

21
Q

Preliminary Amendment

A

If filed at the time of filing application they can be included in the papers if the oath references them is filed.

22
Q

Three Thresholds of Incomplete Application

A
  1. Notice of Missing Parts
  2. Notice of Incomplete Application (No filing date)
  3. Notice of Omitted Items (Filing date but something critical missing)
23
Q

What warrants a Notice of Omitted Items?

A
  1. Missing page of specification
  2. Missing page of drawings
  3. Failing to satisfy 112.
24
Q

Two Routes After Notice of Omitted Items

A
  1. Take later filing date and submit what is missing. (ballsy)
  2. Do nothing. Tell them and live with it by fixing through Amendment.
25
Q

How do you respond to a Notice of Omitted Items if you don’t want to submit anything new

A
  1. Send a letter telling them about your choice.
  2. Amend the application by avoiding new matter.
    **Abstract and Claims can be amended into spec/drawings.
26
Q

Incorporation by Reference

A

Anything can be incorporated from anything and anywhere unless it is “essential” (in a claim/statutory requirements)

27
Q

Incorporate by Reference of Essential Material Allowed

A
  1. An issued US Patent
  2. A published application
28
Q

Incorporate by Reference of Essential Material Not Allowed

A
  1. A foreign patent or application;
  2. A publication
  3. A US patent which itself incorporates by reference essential material from another patent.
29
Q

Incorporate by Reference of Priority Filing

A

A claim for priority to a prior US, foreign, or international application present on the filing date, where subject matter is inadvertently omitted shall be considered an incorporation by reference of the inadvertently omitted materials, IF such material is contained in its entirety in the prior filed application.

30
Q

Recommendation of Form and Completeness of Specification

A

-Title
-Cross references
-Statement regarding Federal funded
-The names of parties to Joint Research
-Reference to an incorporated by reference
-Background of the invention
-Brief description of the drawings
-Detailed description
-Claims
-Abstract of the disclosure
-Sequence Listing
-Drawings
-Oath/Dec

31
Q

What is the only way to assert priority?

A

Filing an ADS

You can replace with a new one.

32
Q

What information is in an ADS?

A
  1. applicant information
  2. priority claims
  3. correspondence addresses
  4. Classification information
  5. Residence addresses.

**Info not in the oath

33
Q

Abstract

A

The entirety of the disclosure

150 words

34
Q

Substitute Specification

A

You can send or it can be requested by examiner at any point until issue fee is payed.

New Specification MUST be accompanied by:
1. A statement that the Substitute Specification contains no new matter;
AND
2. A marked up copy that shows what is changed.

**No allowed in reissue or a reexamination

35
Q

Drawings

A

Necessary in every case.

36
Q

How to use color pictures?

A
  1. File a Petition.
  2. Fee
  3. Three copies of color drawings
  4. Black and White statement
  5. “The file of this patent or application contains at least one drawing executed in color. Copies at PTO.

Rule 1.84

37
Q

Models and Exhibits

A

No more unless they go into a folder.

So a drawing.

You have to maintain the model for the life of the patent.

38
Q

IDS

A

Information Disclosure Statement

39
Q

Information Disclosure Statement

A

Discharge your duty to disclose.

40
Q

Three Windows of Time to File an IDS 1.97

A
  1. Within 3 months of filing or before First Action. (RCE only timing of First Action)
  2. After first action but before allowance or final action, either a statement OR a fee must be provided, AND
  3. If filed after Final Action, prosecution, or allowance, but before issue fee, a statement AND a fee are required.
41
Q

What consists of an IDS Statement?

A
  1. Each item was cited for the first time in a communication from a foreign patent office less than three months before the date of the IDS;
    AND
  2. No item was cited in a communication from a foreign office and no item was known to anyone having a duty to disclose more than 3 months before the date of the IDS.
42
Q

The Content of an IDS

A

Any information that would tend to undermine an argument or reject a patent.

  1. List
  2. Copy
  3. Explain but don’t Translate
43
Q

Requirement for Information

A

Patent office asking for your help.

You need to answer these.

44
Q

Who is obliged to respond to Requirement for Information?

A

Attorney, Agent, Inventor, .. Everyone in the chain.

45
Q

What is the slimmest margin of joint inventorship?

A

One way knowledge.

46
Q

Who does the PTO want to hear from?

A

The Patent Agent

Patent Bar Revise - TP (27 decks)

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