MPEP Ch. 600 Flashcards
MPEP Ch. 600
Parts, Form and Content of App
Oath/Declaration (Pre-AIA)
Pre-AIA every app needs to have one, which cannot be amended, but is not necessary to get a filing date. Must include (1) statement of belief they are the true, original, and first inventors (2) statement they have reviewed and understood the contents of app, and (3) acknowledgement of duty to disclose all information known to be material to patentability.
Must also include inventor’s citizenship and address.
Oath/Declaration (Post-AIA)
Post AIA - can wait to file until allowance. Can also be submitted by a non-inventor if sufficient proprietary interest can be shown.
Must (1) ID inventor by legal name; (2) ID app to which it is directed; (3) include statement of belief they are original inventor; and (4) state app made or authorized to be made by them.
Must also include inventor(s) legal name and address if not in ADS.
Joint Inventors (Oaths)
Each must make an oath/declaration.
ADS
Application Data Sheet
Used to assert priority.
May be submitted with a provisional, non provisional, or national state patent app and must be submitted to claim priority under 119, 120, 121, or 365.
May update until time of issuance.
Inventorship
Must be person who conceived. Reducing it to practice, alone, does not qualify one to be an inventor.
Omitted Items
If a page or figure is missing, the PTO will send a Notice of Omitted Items. The filing date will be the date the app was submitted unless a petition is filed, with omitted items, to change filing date. Can proceed either way but must worry about 112 issues.
Counting claims
Multiple dependent claims cannot depend from other multiply dependent claims nor can dependent claims use “and.” If either are present, the claim is improper and counts as one claim for fee purposes.
IDS
Information Disclosure Statement
Duty to disclose material information.
Requirements as to timing:
If filed within 3 months of the app filing date or before the first action, only the IDS need be filed.
If filed after first action, but before allowance or final action, either a statement or a fee must be provided.
If filed after final action, close of prosecution, or allowance, but before payment of issue fee, a statement and a fee are required.
IDS Statement
Must state that (1) each item disclosed was cited for the first time in a communication from a foreign patent office less than three months before the date of the IDS OR (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 three months before the date of the IDS.
IDS after Final rejection and more than three months
A CIP must be filed and a new IDS filed with the continuation. The parent app will be abandoned.
Requirements for Information
Info reasonably necessary to properly examine or treat a matter. Must respond with information requested, but can say info is unknown or not readily obtainable.
