MPEP Chapter 200: Types, Cross-Noting, and Status of Application

Question 1

National Applications

Answer 1

Filed directly at PTO

Question 2

National-Stage Applications

Answer 2

Entered national phase from PCT application

Question 3

2 Exceptions of Treatment between National and National-Stage Applications

Answer 3

1. Restriction Practice
   - National = examiner discretion
   - National - Stage = unity of invention practice
2. How to get a Filing Date
   - National = Can file w/out fee, oath, translation and will be given a filing date
   - National - Stage = Cannot get a filing date without fee, oath, translation

Question 4

Inventorship

Answer 4

Must be common inventor for a later-filed application to obtain the benefit of an earlier-filed application

Reduction to practice does not alter US inventorship

Question 5

Rule 1.48

Answer 5

Correct inventorship through submitting a corrected ADS, fee, and oath/dec of added inventors

Question 6

Provisional Applications

Answer 6

Rule 53(c)
- Cover sheet or signed ADS
- Specification
- Drawings (if necessary)
- Filing Fee

Utility app must be filed with 12 months to take the priority date of the provisional (or within 14 months with fee if unintentional)

Question 7

Seven NO’s of Provisional Applications

Answer 7

1. No claims
2. No oath/declaration
3. No examination or amendment
4. No design applications
5. No claim for priority from other applications
6. No IDS’s
7. No basis for priority for a design application

Question 8

Conversion of Provisional Applications

Answer 8

Pending non-prov to prov: must be w-thin first year after filing

Treating provisional as regular: shortens the term

Question 9

Continuation Application

Answer 9

COPENDING
Application by same applicant for the same invention claimed in a prior, non-prov application
No new oath required

Question 10

Continuation-in-Part Application

Answer 10

COPENDING
Same as CON, except repeats some substantial portion of the earlier application and adds matter not disclosed (multiple filing dates)

Question 11

Divisional Application

Answer 11

COPENDING
Later application for a distinct and independent invention carved out of a pending application

Question 12

Substitute Application

Answer 12

NOT COPENDING
Has same disclosure as an earlier application, and either by mistake or on purpose is NOT copending

Question 13

Request for Continued Examination

Answer 13

Utility or plant patent can be further examined with a request, fee, and submission of something for the Examiner to consider

NOT a new application filing, ongoing version of original application

Question 14

Continued Prosecution Application (CPA)

Answer 14

Rule 1.53(d)
DESIGN APPLICATIONS ONLY
DEATH OF PARENT

-File is continued while the parent is ABANDONED
-All papers carry over except election of invention made in CPA-DIV
-No separate claim for foreign priority or reference to parent for domestic priority

Question 15

Naming of Inventors

Answer 15

Naming of actual inventors no longer required to obtain a filing date, can use alphanumeric indicators

Question 16

Reference Filing (PLTIA)

Answer 16

-Reference to a filing done elsewhere
-US accepts as spec, claims, drawing
-Add fee, oath, translation
-Turn in translated copy of reference within 4 months of filing of 16 months from earliest filing date
NOT BEST PRACTICE

Question 17

Priority

Answer 17

Right to obtain the benefit of a filing date of an earlier-filed US or foreign application

Domestic Priority - 35 USC 120 - copending US app
Foreign Priority - 35 USC 119 - prior app is a foreign app filed less than 12 months before US app

Question 18

Foreign Priority

Answer 18

Filing must be made within a year of the FIRST FOREIGN FILING (or within 14 months with fee if unintentional) (and obviously within 1 year of first use/offer for sale/publication)

Pre-AIA 102(e) - foreign priority does not move back date that US patent becomes prior art

Post-AIA 102 (a)(2) - does move back date

Question 19

When is translation required?

Answer 19

To remove a reference as prior art

Question 20

Withdrawn/Abandoned/Disposed of Foreign Filings

Answer 20

Do not preclude priority if:
-Was not laid open to public
-Did not serve as a basis for claiming a right of priority
-Subsequent app was filed in the same country as the withdrawn app

Question 21

Reissue Applications can be used to …

Answer 21

Correct priority

Question 22

How to Secure Foreign Priority

Answer 22

File a claim in an ADS
File a certified copy of the original foreign application

Question 23

Timing for Claiming Domestic and Foreign Priority

Answer 23

Present claim within the later of:
-4 months from application filing date
-16 months from claimed priority date

Unintentionally delated claims can be accepted with a fee

Question 24

Foreign Priority

Answer 24

35 USC 119
Did not count in determining Pre-AIA 102(e) date
Does count in determining AIA 102(a)(2) date
DOES NOT COUNT IN PATENT TERM

Question 25

Domestic Priority

Answer 25

35 USC 120 Counts in determining both Pre-AIA 102(e) and AIA 102(a)(2) date DOES COUNT IN PATENT TERM

Question 26

Provisional Priority

Answer 26

35 USC 119 Counts in determining both Pre-AIA 102(e) and AIA 102(a)(2) date DOES NOT COUNT IN PATENT TERM