MPEP 600 - Parts, Form, and Content of Application

Question 1

Basic Requirements of Oath/Declaration (Pre-AIA)

Answer 1

Each app. must include oath/declaration by inventors that:

1. They believe themselves to be the true, original and first inventors;
2. They have reviewed and understand the contents of the application; and
3. They acknowledge their duty to disclose all information known to be material to patentability of the application.

Question 2

Supplement Oath

Answer 2

Submitted to replace a Oath or Declaration that is defective.

NOTES:
1. No fee is required to file a supplemental oath, and it is a matter of right.

2. Supplemental oath may be waived for a lost or hostile inventor, but not for original declaration or oath.

Question 3

Alteration of Application BEFORE Filing

Answer 3

Pre-AIA: Prior to execution an inventor may alter the application by hand provided that each interlineation and deletion is initialed by all inventors.

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.

Question 4

Post-AIA Oath Requirements

Answer 4

1. Rules now permit a person to whom the inventor has assigned, or is under an obligation to assign, an invention to file and prosecute an application for patent as the applicant.
2. Applicants may postpone filing an oath/declaration until the application is otherwise in condition for allowance, even up to the payment of the issue fee.
3. Substitute statement now allowed in lieu of oath/declaration for lost, dead, hostile inventors.

Question 5

Notice of Omitted Items

Answer 5

1. If the page of the specification or drawing is required to meet §112, then the application is fatally defective and without submitting the missing items, no patent will issue.
2. If missing items are submitted then the filing date will be the date of the submission of the items, not the original filing date.

Question 6

Choices after receiving Notice of Omitted Items

Answer 6

1. 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; or
2. Do nothing in response to the Notice of Omitted Items, in which case the original filing date of the application will be maintained. The applicant is now required to amend the specification, preferably by preliminary amendment, but no new matter may be added.

Question 7

Magic Words in a Markush Group

Answer 7

The language is most likely either:

1. “Chosen from the group consisting of… A, B,C and D”; or
2. “Wherein R is A, B, C or D”.

See 608.01(n).

Question 8

Incorporation By Reference

Answer 8

An application may incorporate “essential” material by reference to:

1. An issued patent; or
2. Published application.

Essential Material cannot be incorporated from:

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

Question 9

What is considered Materal Information (with regards to Incorporation by Reference)

Answer 9

Material is “essential” if it is required to comply with the statutory requirements of disclosure; it is non-essential if it is not so required.

Question 10

ADS Uses

Answer 10

An ADS is the only way to:
Assert priority; and
Delay the submission of an oath/declaration, and is essential for any correction of ownership, etc.

Question 11

Substitute Specification

Answer 11

An applicant may file a substitute specification at any time before the issue fee is paid, excluding claims, if it is accompanied by:

1. A statement that the Substitute Specification contains no new matter; and
2. A marked-up copy of the Substitute Specification showing the additions and deletions.

NOTE: No substitute is permitted in a reissue or reexamination.

Question 12

Timing for IDS

Answer 12

1. If filed within the first three months of the application filing date or before the First Office Action:
   (I) Only the IDS needs to be filed.
2. If filed after the First Action, but before allowance of Final Action:
   (I) Either a statement; OR
   (II) A fee must be provided.
3. If filed after Final Action, close of prosecution (Ex Parte Quayle) or allowance, but before payment of the issue fee:
   (I) Statement AND a fee are required.

TIMING OF IDS CANNOT BE EXTENDED.

Question 13

Minimum Content of IDS

Answer 13

Every IDS must have the following minimum content:
1. A list of individuals items submitted with patents identified by patentee, number and issue date; and publications identified by author, title, relevant page(s), date and place of publication.

2. A copy of every patent, publication or other information begin submitted.
3. At least a concise explanation of relevance of anything not in English. Translations into English are required if they are readily available.

THINK: List it, Copy it, but DON’T translate it.