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Patents, Patents, Patents > MPEP 700 > Flashcards

MPEP 700 Flashcards

1
Q

“Third-Party Requestor”

A

A person requesting ex parte reexamination under Section 302 who is not the patent owner.

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2
Q

Initial Review

A

Initial review of a patent looking for informalities and sufficient disclosure.

Deficiencies or informalities found by the Office of Initial Patent Examination (OIPE) is communicated by attachments to the office action.

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3
Q

Requirements for Information

A

Examiner may require the submission of information which is reasonably necessary to properly examine or treat issues. Applicant typically has three months to reply (extension available). Examiner must respond to applicant’s reply within two months of receipt.

  • Initial applications
  • Abandoned applications
  • Applications entering the national stage
  • Reissues
  • Reexaminations
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4
Q

“Rejection”

A

Based on the substance of the subject matter.

Subject to appeal.

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5
Q

“Objection”

A

Based on form.

May be reviewed only by petition to the Director.

New matter added to an application will be objected to.

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6
Q

USPTO Claims Treatment Sequence

A

1) Examine the patent
2) Search prior art
3) First rejection issued, if proper
4) Applicant can rebut or amend the claims
5) Second rejection issued, if not accepted by examination
6) Decision appealable under 37 CFR 1.116

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7
Q

Protesting 102(a) or (b)

A
  • Persuasively argue the claims are patently distinguishable from the prior art
  • Amend the claims to make them patentably distinguishable
  • Perfect priority under 35 USC 120
  • Amend the specification to include a specific reference to a prior application
  • Perfect a priority claim under 119(e) for a prior provisional application
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8
Q

Protesting 102(e)

A
  • Persuasively argue the claims are patently distinguishable from the prior art
  • Amend the claims to make them patentably distinguishable
  • Perfect priority under 35 USC 120
  • Amend the specification to include a specific reference to a prior application
  • Perfect a priority claim under 119(e) for a prior provisional application

OR

  • File an affidavit under 37 CFR 1.131 showing that the applicant actually invented the invention before the other prior applicant
  • File an affidavit under 37 CFR 1.132 to show the earlier application is by “another”
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9
Q

Common Ownership

A

A party or multiple parties had 100% ownership in both the prior application and the new application at the time the new invention was invented.

Three major needs:

1) The prior art tot he claimed invention must be commonly owned (100% by the same party or joint parties);
2) Must be subject to assignment to the common owner; or
3) There was a joint research agreement in place

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10
Q

Joint Research Agreement

A

Three Major Points Needed for JRA:

1) The claimed invention was made on behalf of the parties to the JRA;
2) The invention was made due to the activities of the JRA; and
3) The application has to be amended to clearly disclose the names of the parties to the JRA

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11
Q

Foreign Filing License

A

An application will be rejected if the applicant filed in another country before receiving a foreign filing license (Automatic after 6 months)

One may obtain a Retroactive Foreign Filing License through filing a petition with a fee including:

  • The name of the countries in which it was filed
  • The dates of the filings
  • Proof that the application was not made secret
  • Statement that the license was diligently sought and the filing was in error and without deceptive intent
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12
Q

Final Rejection Proper

A

Any second or later rejection unless:

1) it is a new rejection of a claim that was not added or substantively amended; OR
2) the rejection is based on newly cited art other than information submitted in the IDS.

Can be in a first office action if:

1) it is part of a continuing or substitute application; AND
2) All of the claims are to the same invention as the parent application which could have been finally rejected in the patent application.

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13
Q

Final Rejection Not Proper

A

A final rejection is not proper if:

  • it is the first office action in a Continuation-In-Part application and at least one claim includes subject matter not present in the previous application; or
  • it is the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter
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14
Q

Appeal

A

An applicant can appeal after

  • two or more office actions based on the merits; or
  • any final rejection.

Filing an RCE during the appeal process stops the appeal process and starts a new examination.

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15
Q

Request for Continued Examination: Basics

A

An RCE provides a way for an applicant to obtain a continued examination of an application after prosecution has closed by filing a submission and paying a fee.

Not available for adding new matter.

Prosecution must be closed, meaning:

  • Under appeal;
  • The last office action was final;
  • A notice of allowance has issued; or
  • Any other action which closes prosecution has occurred.
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16
Q

Request for Continued Examination: Timing

A

An applicant must request the RCE by filing a submission and a fee prior to the earliest of:

  • Payment of the issue fee;
  • Abandonment of the application;
  • Filing a notice of appeal; or
  • The start of a civil suit (unless terminated while the application is still pending)
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17
Q

Request for Continued Examination: Submissions Included

A
  • Fee per 37 CFR 1.17(e);
  • IDS;
  • Amendment to the written description, claims, drawings; or
  • New arguments or evidence supporting patentability

A proper RCE addresses every ground of rejection in the final rejection. If not, office gives notice of 1 month extension to complete the reply. A 3 month extension is available if the first attempt was a bona fide attempt.

No New Matter

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18
Q

Order of Examination

A

1) Description;
2) Claims;
3) Drawings;
4) IDS;
5) ADS;
6) Oath/Declaration;
7) Small Entity Election (if applicable)
8) Petition to Make Special (if applicable)

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19
Q

Prioritized Examination: Basics

A

Track 1: AIA Section 11

Provides for the final disposition on applications within 12 months of granting the prioritized examination.

Only 10,000 per year

Available for utility patents, plant patents, RCEs in utility or plant patents

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20
Q

Prioritized Examination: International Applications

A

Owner may achieve prioritized examination if they have done or amend to:

  • Claim benefit under 35 USC 365(c); or
  • Claim priority under 35 USC 119(a)-(d), (f)

Cannot happen for 35 USC 371 national stage applications.

21
Q

Prioritized Examination: Fees

A

$4,800. Discount available for small entity.

  • Basic Filing Fee
  • Search Fee
  • Examination Fee
  • Publication Fee
  • Track 1 Processing Fee
  • Track 1 Prioritized Examination Fee
  • Size fee (if applicable)
  • Excess Claims Fee

For RCE Prioritized Examination:

  • Publication fee
  • Prioritized Examination Processing Fee
  • Prioritized Examination Fee
22
Q

Prioritized Examination: Limits and Termination

A

Application cannot have:

  • More than 4 independent claims;
  • More than 30 total claims;
  • A single multiple dependent claim

PE stopped if applicant or practitioner:

  • Files a petition for extension of time;
  • Files a request for a suspension of action;
  • Files a notice of appeal; or
  • Introduces more than 4 independent claims, more than 30 total claims, or a multiple dependent claim
23
Q

Petition to Make Special

A

If petition is accepted, allows an earlier examination compared to non-special applications

Reasons to Make Special:

  • Patent will enable the manufacture of the invention;
  • Patent is being infringed;
  • One of the inventors is over the age of 65 of is ill and may not be able to assist in the prosecution
  • The head of a government agency requests and application be made special
  • The patent relates to superconductivity, cancer, HIV/Aids; or Terrorism
24
Q

Petition to Make Special: Inclusions

A

1) Petition
- in writing
- identifying the application by application number and filing date

2) Fees: Unless applicant is ill, over 65, or the invention
- materially enhances the quality of the environment;
- materially contributes to energy resource development or conservation;
- Is related to superconductivity
- Is related to counter-terrorism

25
Q

Suspensions of Action: From Applicant

A

37 CFR 103

(a) Petition, Good and Sufficient Cause, Specify the Time Requested (Cannot exceed 6 months), Fee
(b) Request filed along with RCE, Specify the Time Requested (cannot exceed 3 months), Fee
(c) Request filed along with RCE, Specify the Time Requested (cannot exceed 3 months), Fee

26
Q

Suspensions of Action: From the USPTO

A

Maximum period is 6 months.

Office will notify the applicant.

Suspension is allowed:

  • For public safety or defense if the application is owned by the US;
  • If publication of the invention could be detrimental to public safety; or
  • If an appropriate agency requests the suspension
27
Q

Period for Reply

A

Six Month Statutory Period for Reply

SSPs

1) 1 Month Deadlines
- Requirements for restriction or election of species in a patent
2) 2 Month Deadlines
- Winning party’s response in a termination interference
- Reply to an Ex Parte Quayle action
- Multiplicity rejection
3) 3 Month Deadlines
- Reply to an office action on the merits

28
Q

Abandonment: General

A

Abandonment is of the application and not the invention.

29
Q

Abandonment: Failure to Reply

A

1) Applicant fails to respond within the appropriate time period;
2) Applicant replies within the time period but the reply is not fully responsive;
3) Applicant does not pay the issue fee when it is due;
4) Application was part of an interference and lost on all claims;
5) Application was before the Board of Patent Appeals and Interferences and proceedings are terminated;
6) There was a court decision and proceedings are terminated

30
Q

Abandonment: Express Abandonment

A

Action taken by the applicant to explicitly abandon his/her invention.

Done by filing a written declaration identifying the application (may not be recognized unless it is actually received in time to act before the date of issue or publication)

May be filed by:

  • Applicant (with assignee consent, if there is one);
  • Owner of patent rights or the Assignee
  • Attorney or agent of record;
  • Attorney or agent not of record who acts in a representative capacity when filing a continuing application
31
Q

Abandonment: Revival

A

Revival of an abandoned patent application is possible if the applicant can show that the application was abandoned due to:

  • Unavoidable Circumstances - 37 CFR 1.137(a)
  • Unintentional Oversight in Not Replying - 37 CFR 1.137(b)
32
Q

Abandonment: Petition to Withdraw Holding of Abandonment

A

37 CFR 1.181(a)

Applicant can allege that an office action was never received by the applicant from the office.

  • No fee required
  • Must include proof that a reply was actually sent to the USPTO on time
  • 2 month deadline from mailing date of Notice of Abandonment
33
Q

Interviews: General

A

An examiner may require that an interview be scheduled in advance.

Can interview:

  • Inventor/Applicant
  • Registered attorney or agent of record
  • Attorney or agent of record known by the examiner to be the local representative of the attorney of record
34
Q

Interviews: Purpose

A

An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.

35
Q

Interviews: Timing

A

1) After the first office action but before the final office action

2) After the final office action
- no right to interview at this time

3) Prior to the first office action
- only in certain circumstances, such as in a continuation or substitution application

36
Q

Interviews: Means

A
  • Face-to-Face (most common)
  • Video Conferences
  • Phone interviews

Interviews may not be through email unless there is PRIOR WRITTEN CONSENT of the applicant or attorney/agent of record.

37
Q

Amendments: Requirements of the Response

A

Every response must reply to every rejection or objection in an office action.

  • Must be a bona fide attempt to advance the case toa final action
  • Must be in writing, typed, or written in permanent ink on the proper sized paper
  • Must be properly signed by: applicants, owners, attorney of record, or attorney not of record but acting in a representative capacity
38
Q

Amendments: Non-Responsive Replies

A

Intentional: Must be remedied within the statutory period to avoid abandonment

Unintentional: Examiner can either

  • accept it;
  • require a proper reply within the remaining period; or
  • set a new one-month time limit (can be extended as long as it is not after the final office actions
39
Q

Amendments: Preliminary Amendments

A

These are amendments which are received by the USPTO before the first office action.

Can be filed with the original filing. Not considered part of the original disclosure unless they are filed with the original application and the original application and the later-filed oath refers to the amendment.

Generally approved if filed no later than:

  • 3 months from the filing date; or
  • 3 months from the date the application enters the national stage
40
Q

Amendments: After Final Rejection

A

There is no unrestricted right to entry of an amendment after the final rejection, but it may still be allowed.

41
Q

Amendments: Supplemental Amendments to Replies

A

Occur after a reply to an office action but before the office responds to the reply.

Usually allowed by right if submitted during a suspension period.

No right if not during suspension period but could be considered if limited to:

  • Cancellation of claims
  • Adoption of examiner’s suggestions
  • Placement of the application into condition for allowance
  • Reply to an office action that was made after the original reply was filed
  • Correction of typos and other formal errors
  • Simplification of issues for the appeal process
42
Q

Amendments: Making an Amendment

A
  • Cover sheet stating amendment at top.
  • List all of the amendments to be made to the specification, drawings, and claims
  • Where the amendments go in the original application

Adding, deleting, or replacing a paragraph or section

  • Must be identified by using page, line, or paragraph numbers
  • Use underlining for new material

Substituting an entirely new specification
- Must include two copies of the substitute specification, one marked up and one final, clean copy

43
Q

Amendments: Rescinding

A

Once something is changed by amendment, you cannot withdraw the changes.

Must file another amendment changing back tot he original.

44
Q

Amendments: To Claims

A

Must reproduce all of the claims that ever existed in the application and their status.

45
Q

Amendments: To Drawings

A

Must be updated on separate sheets

  • Each amended sheet must have “replacement sheet” at the top
  • Replacement sheets must be entered no matter what kind of changes are made to an existing drawing

Completely new drawings must be on new sheets.

Annotated copies may also be included with replacement sheets, and may be required if the examiner requests the annotated copies should be labeled as “Annotated Sheet”

46
Q

Affidavit to Declaration of Prior Invention

A

37 CFR 1.131

  • Antedating (“Swearing Back”)
  • Pre-AIA
  • Filed by inventors (all of them, if multiple), Assignee (when cannot produce from inventor), or party qualified to act on behalf of the inventor when inventor is dead, insane, or refuses to sign.

37 CFR 1.132
- Used when reference and patent application are created by same entity or same inventors or assignee

47
Q

Showing Prior Invention

A

1) Actual reduction to practice of the invention prior to the effective date of the reference
2) Conception before date of prior art and due diligence in actually reducing the invention to practice

48
Q

Public Use Proceeding

A

Determines whether a claimed invention in an application had been in public use or on sale one year before filing the application.

Any member of the public can file a 37 CFR 1.292 Petition to show that the invention was on sale or in use in the US more than 12 months prior to the effective filing date.

49
Q

Trade Secret, Proprietary, and Protective Order Material

A

Proprietary information can be submitted if it is believed to be material to patentability

  • If material: will be made of record in the application
  • If not: will be resealed and retained in case the applicant files a petition to expunge

Material will not be made available to the public until issuance of the patent

Patents, Patents, Patents (5 decks)

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