M.P.E.P. 700 Examination of Applications Flashcards
What leads to a rejection?
The law
How many appeals do you get in terms of rejection?
After the second or final rejection.
What leads to objection?
Rules
What can you do if you are given an objection?
You can petition if there is a second and final objection.
What affidavit can be filed to swear back against prior art?
1.131 Affidavit
What affidavit can be filed to predate disclosure by someone else?
1.130 Affidavit
Anticipation
A single reference having EVERYTHING you are claiming.
How do you challange anticipation rejection?
- Examiner’s reference does not have the complete invention.
- Examiner’s date found is invalid.
- Amending the claims
NAFTA and WTO Dates
NAFTA - after December 8, 1993
WTO - After January 1, 1996
Shields but does not convert what you’ve done into prior art against other people.
Old 102(a)
Deals with someone doing something first.
Public Knowledge -> U.S. Only -> Prior to Invention
Use by others -> U.S. Only -> Prior to Invention
Publication -> Anywhere -> Prior to invention
Patent Obtained -> Anywhere -> Prior to invention.
Inventor can never get themselves into trouble
Old 102(b)
Acts by either the inventor or another.
Patent Obtained -> Anywhere -> > 1 Year
Publication -> Anywhere -> > 1 Year
Public Use -> In this Country -> > 1 Year
On Sale -> In this Country -> > 1 Year
Old 102(c)
Abandonment by disparaging the patent/application
Old 102(d)
All the following MUST happen to bar Patent:
- Same applicant filed in foreign country for same invention.
- Filed more than 12 months (6 months for design) before US filing
- The foreign patent issued before US filing.
Old 102(e)
Prior Art IF:
- US Patents, Published Applications, AND PCT (after 11/20/00, designating the US and published in English)
- FOoT/DUSE
- November 29, 2000
- DUSE - designate US, published in English
- FOoT/DUSE
- The prior art date is the earliest effective US filing date or International filing date once the US application or International Application.
Ways to keep your dates and applications from getting in the way into each other under 102(e)
File all together
Old 102(f)
Can’t get a patent on something you didn’t invent.
Old 102(g)
Three components to bar a Patent:
- The prior invention must have been made in the US (during interference WIPO/NAFTA count)
AND - The prior invention must not have been abandoned (3 months), suppressed or concealed; (loser goes after this)
**A partial exception is made for commonly owned inventions. (applies to (e), (f) and (g))
**Look for reference that DISCLOSES AND CLAIMS
Exception to Old 102 (e) (f) and (g) that arise in 103
Not prior art to determine obviousness if the prior invention and the claimed invention were both, AT THE TIME THE CLAIMED OR LATER INVENTION WAS MADE:
- Owned by the same entity
- Subject to an obligation to assign to the same entity
New 102 (a)
- Entire universe of prior art.
- Disclosures that made it into the public domain anywhere.
- Before the effective filing date of the application.
New 102 (a)(1)
Disclosures anywhere in the world including:
- Patents
- Printed Publications
- Public use/On Sale
- Otherwise available to public
before effective filing date
New 102 (a)(2)
US Patents
OR
Published application
with filing dates occurring before the filing date of the application
New 102(b)
The Exceptions
These work as the disclosure by the Inventor/Coinventor/Derived from Inventor predates the intervening disclosure within the year
Own Disclosure/ Third Party Disclosure/ Filing (Within 1 Year)
New 102(b) (1) exceptions to 102 (a)(1)
Disclosures made 1 year or less before the effective filing date of the claimed invention by:
- Inventor/CI/JI/directly or indirectly from Inventor
OR - inventor disclosure contained subject matter.
New 102(b)(2)
Disclosures appearing in applications and Patents
New 102(b)(2) exceptions to 102 (a)(2)
Disqualifies prior art if:
- subject matter disclosed was obtained directly or indirectly
- subject matter disclosed by inventor
- Owned by the same person no later than effective filing date.
New 102(c)
Subject matter disclosed and a claimed (not issued or published) application shall be deemed to have common ownership if:
- SJM was developed/made by one of a joint research agreement in place before effective filing date
- Claimed invention was made as a result of the activities of joint research agreement
AND - The application discloses or is amended to disclose the names of the paties to the joint research agreement.
New 102(d)
Not a prior art section.
Tells you date of prior art.
EARLIEST EFFECTIVE FILING DATE
- can be foreign (published US application, Issued US Patents, Published WIPO PCT that designate US)
When does NEW law apply?
Filed on or after March 16, 2013 and do not have any claims that have priority before.
Obviousness
The examiner asserts that a PHOSITA would find it obvious to modify what is taught by one reference in light of what is taught by another reference.
Rationales that may support a conclusion of obviousness
- Combing prior art elements to yield predictable results.
- Simple Substitution of one element
- Use of known technique to improve
- Applying known technique to known device ready for improvement to yield predictable results
- Obvious to try - return to invention’s filing date
- Known work in one field used in another field of work
- Some teach, suggestion, or motivation would have led PHOSITA to modify prior art to arrive at claimed invention.
KSR Test
- Is the prior art suggestive of the combination in accord with a KSR rationale?
- Is there a likelihood of success for the combination?
- Does the combination include all of the elements recited in the claim?
Two ways to defeat an Obviousness Rejection
- To establish by arguments and/or submission of facts that the examiner is wrong;
OR - To submit facts which rebut the prima facia showing by either:
- establishing earlier date of invention
- by establishing that the totality of facts show the invention is not obvious
What are your two arguments with the PTO?
- PHOSITA would not make the combination suggested by the examiner as obvious;
AND/OR - The resulting combination is not the claimed invention.
Two paths after 103 rejection?
- Amendment
2. Argue on the basis of fact
Rejections Based on New Matter
Specifications, drawings, claims must have it or it will be deemed new matter.
(derived, inferred counts)
Rejections under 101 Patentable Subject Matter
Patentable subject matter;
- Process
- Machine
- Manufacture, or
- Composition of matter
Rejections under 101 NOT Patentable Subject Matter
- Scientific principles and mathematical discoveries
- Atomic weapons
- Illegal purpose devices only
- Method of doing business
- Things occurring in nature
- Purely mental
Utility under 101
Bare utility.
You have to say that it is useful.
Final Rejection
Procedure used by the Patent Office saying that their filing fee is used up and you have 6 months to decide what to do.
**Think about being on train tracks
Final Rejection Track Paths (4)
- Easiest - Allowance ( you file amendment and cancel bad ones)
- Notice of Appeal (Gives 7 months)
- The Examiner changes from final rejection.
- CON/DIV/CIP/CPA
**You have 6 months to get off the train to abandonment
Can you file an amendment after Final Rejection?
You can do minor things.
- cancel claims
- comply with requirements as to form or adopt suggestions of Examiner
- Present claims in a better form for consideration on appeal.
Transitional After Final Practice
If you filed a continuation on an application file on or before June 8, 1995 you will be able to go to Final Rejection to First action and get the term of 20 years.
Request for Continued Examination
Prosecution is closed..
You can pay a fee, a request, a submission of something new to examine.
RCE Submission
Need not accompany the RCE and fee if it was previously filed.
If to an action outstanding must meet 1.111 requirement
Otherwise, may be an IDS, an amendment, new arguments or new evidence.
Petition to Make Special Before August 25, 2006
Free Ones:
- Illness
- Environmental
- Energy
- Age
- Countering Terrorism
NOT Free:
- Prospective manufacture
- infringement
- Safer DNA
- For the Asking
- HIV/AIDS and cancer
- Superconductivity materials
- Biotech applications filed by a small entity.
Petition to Make Special After August 25, 2006
Free Ones:
- Illness to where you can’t participate
- Age (65)
Accelerated Examination
- You own examination, claim charts to show support
Prioritized Examination - Track 1
9/16/11
- Application no more than 30 claims (4 Independent)
- Pays fees
- Pay fee of 4800/2400 for patent within a year or tell you that you are not (final rejection)
Suspension of Action
- For good and sufficient cause
- petition
- fee
**Examiner can for 6 Month Max
Due Dates and Extensions of Time Basic
Shortened Statutory Period (Max 6 Months, 3 Free)
Automatic Extensions
**Any general separation from money will do for authorization. DOES NOT APPLY TO ISSUE FEE
What do automatic extension not apply to? (for cause extensions)
- Where office Action so states;
- A Reply Brief
- A request for oral hearing
- Responding to a decision of the board
- Anything in an interference
- Re-examinations due dates
- Deadline for responding a Notice of Omitted Items (2 months)
What due date cannot be extended?
- IDS
- Statutory due date (6 months)
- The issue fee date (can be paid later but not extend)
- Three month deadline to get refund for a fee paid as a large Entity.
- Filing Formal Drawings at time issue fee is paid
Application is pending until
- Issued
2. Abandoned
Abandonment Requirement
- in writing
- Expressly abandon
OR - Failure to respond to an Official Action when due
OR - Failure to pay issue fee timely
Withdrawal of Holding of Abandonment
- Must be due to some mistake on part of the Patent Office
- File a Petition to Withdraw
- No fee
Revival of Abandonment
Must be Unintended
- The required reply, unless previously filed
- The fee
- A statement (terminal disclaimer for design) stating that the entire delay from the due date to the date of the petition was unintentional;
AND - Any necessary terminal disclaimer and terminal disclaimer fee.
Terminal Disclosure
Only used in a design patent.
Interview
Examiner does not record.
Must record the substance of the interview.
Matter of right after first action.
Types of Amendments (6)
Preliminary Amendment
- before anything has been done for the application
Regular Amendment
- after first Office Action
Supplemental Amendment
- filing after another amendment
After Final Amendment
- if after Final Rejection
- 12 Amendment
- After notice of allowance
- 15 Amendment
- After payment of issue fee
Preliminary Amendment
Within 3 months of filing date
OR
Before first Office Action
- Office Action calculator
Supplemental Amendment
Limited in scope
Used to cross a “t” or dot an “i”
Matter of right to:
- cancel claims
- adoption of examiner suggestions
- placing application in condition of allowance
- replying to office requirement
- correct informalities
- Simplify issues on Appeal
Oath Amended?
No replaced
Amendment After Final
Need statement of why this amendment is needed now.
How to change claim wording?
Cancel
new
brackets limited to five characters {{}}
1.312 Amendments After Notice of Allowance
Made if they are need for proper disclosure and require no substantial work on the part of the examiner:
REMARKS MUST STATE:
- Why the amendment is needed?
- Why no new search or consideration is required?
- Why any amended or new claims are patentable?
- Why the amendments were not earlier presented?
1.130 Affidavit Practice
Only mechanism of asserting exception under AIA 102 (b).
- Disclosure by an Inventor
- Subject Matter previously publicly disclosed by inventor or someone deriving the subject matter from inventor.
- Within one year of filing, inventor disclosure before 3rd party disclosure
Which affidavit do you use to prove a Joint Research Agreement?
1.130
Joint Research Agreements
- The subject matter disclosed must have been developed and the claimed invention must have been made by , or on behalf of, one or more parties to a JRA that was in effect on or before filing date;
- The claimed invention must have been made as result of activities undertaken within the scope of the JRA;
- The application for patent for claimed invention must disclose, or be amended to disclose, the names of the parties to the JRA.
1.131 Affidavit Practice
Swearing back for Pre-AIA 102(a) and 102(e) dates only.
Showing prior inventive activity.
Used for submitting facts during prosecution by oath or declaration.
1.132 Affidavit Practice
Chemical and bio application.
Explaining experimental data.
Used for submitting facts during prosecution by oath or declaration.
Used to submit facts to rebut prima facie showing of obviousness, to establish utility or to establish enablement.
What is the timing of Affidavit?
Before Final Action OR before Notice of Allowance
To be prior art under Pre-AIA 102(a) any knowledge or use must be ____________.
In this Country
All acts defining prior art under Pre-AIA 102(a) must be ___________.
By another
The “on sale” of Pre-AIA 102(b) must be an offer to sell __________
The invention
Pre-AIA 102(c) refers to __________.
Abandonment
Pre-AIA 102(d) requires that the application be _______________.
- Filed in a Foreign Country more than a year before US filing
- Issued
Under Pre-AIA 102(e), a US patent is prior art as of ___________.
Earliest Effective US Filing Date
A prior invention is NOT prior art under 102(g) if it has been _________.
Abandoned
Concealed
Suppressed
Swearing back is done by filing a declaration or affidavit under Rule _________.
1.131
A showing of obviousness using the TSM (3) rationale requires:
- suggestion or motivation in the prior art to combing
- Reasonable Expectation outside applicant’s disclosure of success
- That the references teach all the claimed limitations.
New matter can _________ be added to a patent application.
Never
Patentable Subject Matter is defined in 35 Section 101 as a ________________________.
Process
Manufacture
Machine
Composition of Matter
A ________________ bomb is unpatentable.
Atomic
After a Final Rejection, the applicant has a right to _____________.
- Cancel the Claims
- Comply with formal requirements of the Examiner
- Adopt suggestions of the Examiner.
If a __________ is filed within _______ of the date mailed, _________ or _______, whichever occurs first.
Final Rejection
Two months
If no response within 3 month window, date of mailing Advisory Action
Six month statutory deadline from filing
For an action setting a shortened statutory period of three months, in the even of failure to respond, abandonment occurs ____________.
At the expiration of 6 months
The deadline for filing an appeal brief is ___________ months from the date the Notice of Appeal is received at the USPTO.
Two months
How do you make sure when you deadline to file you Appeal Brief?
Mail a self addressed, pre-paid card.
A petition to suspend prosecution cannot be filed if ___________.
An action is outstanding.
Improper multiple dependent claims count for _________ in calculating the filing fee.
1
A response to every official action must by statute be filed within ________ months.
Six
The longest extension possible under 37 CFR 136(a) is _________ months.
Five
The longest extension possible for late payment of an issue fee is _______ months.
Zero
A one-month deadline can never be less than _________ days and a two-month deadline can never be less than ________ days.
30
60
The date an application becomes abandoned for failure to respond to an outstanding action is ____________.
The day after the last day of response.
6 Months
When a Notice of Appeal is filed using a Certificate of Mailing, the deadline for filing the Appeal Brief is calculated from ______________.
The date of receipt at the PTO.
All deadline on Appeal are _________.
Two Months
Revival under the unintentional standard requires a ______ only and a _______ fee.
Petition
inevitable large
A terminal disclaimer is required to revive ________ and _________ applications.
Design
Pre- June 8, 1995
Rule 1.137 governs both _________ and ________.
- Revival of Abandoned Application
2. Late payment of issue fees
A ________ amendment is filed before any official and a _______ amendment is filed after a response to a first official action has been filed.
Preliminary
Supplemental
Swearing back Pre-AIA requires filing an affidavit or declaration under ________, where as rebutting a prima facie showing of obviousness requires an affidavit or declaration under ______________.
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