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Post-Course Study Cards > MPEP Chapters & Topics > Flashcards

MPEP Chapters & Topics Flashcards

1
Q

Reissue application

A

MPEP 1400: Correction of Patents
37 CFR 1.171 - 37 CFR 1.179

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2
Q

Secrecy, Access, National Security, and Foreign Filing

A

MPEP 100

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3
Q

MPEP 1500

A

Design Patents

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4
Q

Opinions PTO employees can express about validity

A

MPEP 1700: Miscellaneous

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5
Q

MPEP 2800

A

Supplemental Examination

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6
Q

MPEP 1700

A

Miscellaneous

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7
Q

MPEP 2900

A

International Design Applications

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8
Q

MPEP 1300

A

Allowance and Issue

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9
Q

Post-Grant Review

A

37 CFR Part 42 (37 CFR 42.200)

Consolidated Trial Practice Guide

35 USC 321: Post-Grant Review

(no MPEP Chapter)

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10
Q

Correction of Patents

A

MPEP 1400

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11
Q

Supplemental Reply

A

MPEP 700: Examination of Applications (714.02)

37 CFR 1.111(a)(2)

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12
Q

MPEP 1200

A

Appeal

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13
Q

MPEP 600

A

Parts, Form, and Content of Application

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14
Q

MPEP 2400

A

Biotechnology

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15
Q

Inter Partes Review

A

37 CFR Part 42 (37 CFR 42.120)

Consolidated Trial Practice Guide

(no MPEP Chapter)

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16
Q

MPEP 2300

A

Interference and Derivation Proceeding

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17
Q

Joint Research Agreement

A

MPEP 2100: Patentability
MPEP 2120(c): Rejection on Prior Art; Common Ownership under JRA
(MPEP 2156): Joint Research Agreements

MPEP 700: Examination of Applications
* MPEP 717.02: Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA USC 102(b)(2)(C)

37 CFR 1.104(c)(4)(ii): Nature of Examination; Rejection of Claims; JRA

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18
Q

MPEP 1800

A

Patent Cooperation Treaty

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19
Q

37 CFR Part 41

A

Practice before the PTAB

(See also MPEP 1200 (Appeal)

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20
Q

Post Service Interruptions

A

MPEP 500: Receipt and Handling of Mail and Papers

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21
Q

MPEP 2600

A

IGNORE: Optional Inter Partes Reexamination

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22
Q

MPEP 2200

A

Citation of Prior Art and Ex Parte Reexamination of Patents

Note: Reexam proceedure chart is in MPEP 2201

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23
Q

Suspension of Action

A

MPEP 700: Examination of Applications (709)

37 CFR 1.103

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24
Q

Death of an Inventor

A

MPEP 400: Representative of Applicant or Owner

35 USC 117: Death or incapacity of invention

37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor

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25
Q

MPEP 1400

A

Correction of Patents

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26
Q

Matters Decided by Various U.S. Patent and Trademark Office Officials

A

MPEP 1000

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27
Q

MPEP 800

A

Restriction in Applications Filed Under 35 U.S.C. 111;

Double Patenting

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28
Q

Ownership and Assignment

A

MPEP 300

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29
Q

Supplemental Examination

A

MPEP 2800

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30
Q

Interviews

A

MPEP 700: Examination of Applications (713)

37 CFR 1.133

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31
Q

Requirements for a Provisional

A

MPEP 200: Types of Patents, Cross Noting, and Priority of Applications

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32
Q

Citation of Prior Art

A

MPEP 600: Parts, Form and Content of Application: IDS (MPEP 609)

MPEP 1100: Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions

MPEP 2200: (Post Grant) Citation of Prior Art and Ex Parte Reexamination of Patents

Also: See Rules

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33
Q

MPEP 1100

A

Statutory Invention Registration (SIR)

Pre-Grant Publication (PGPub)

Preissuance Submissions

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34
Q

Interviews

A

MPEP 700: Examination of Applications (MPEP 713)

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35
Q

Payment by Credit Card

A

MPEP 500: Receipt and Handling of Mail and Papers

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36
Q

Petition to Make Special

A

MPEP 700: Examination of Applications (MPEP 708.02)

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37
Q

Revival of Abandoned Application

A

MPEP 700: Examination of Applications (711.03)

37 CFR 1.137

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38
Q

Supplemental Oath

A

MPEP 600: Parts, Form and Content of Application (603)

37 CFR 1.67 Supplemental oath or declaration

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39
Q

Application Data Sheet

A

MPEP 600: Parts, Form and Content of Application (601.05)

37 CFR 1.76 Application Data Sheet

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40
Q

MPEP 2500

A

Maintenance Fees

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41
Q

Disclaimer

A

MPEP 1400: Correction of Patents (MPEP 1490)

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42
Q

Maintenance Fees

A

MPEP 2500

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43
Q

Multiple Dependent Claim Wording

A

MPEP 600: Parts, Form and Content of Application

**MPEP 608.01(n)*******

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44
Q

Design Patents

A

MPEP 1500

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45
Q

Provisional Applications

A

MPEP 200: Types and Status of Application; Benefit and Priority Claims (201.04)

35 UAC 111(b)

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46
Q

Duty of Disclosure

A

MPEP 2000

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47
Q

MPEP 300

A

Ownership and Assignment

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48
Q

Ex Parte Reexamination of Patents

A

MPEP 2200 (Request for Reexam: MPEP 2210)

Also see:
35 USC 302: Request for Reexamination
37 CFR 1.510: Request for ex parte reexamination

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49
Q

Representative of Applicant or Owner

A

MPEP 400

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50
Q

Practice before the PTAB (Rules?)

A

37 CFR Part 41

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51
Q

MPEP 400

A

Representative of Applicant or Owner

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52
Q

International Design Applications

A

MPEP 2900

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53
Q

Making Amendments (format, rules, etc)

A

MPEP 700: Examination of Applications (MPEP 714)

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54
Q

Patent Cooperation Treaty

A

MPEP 1800

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55
Q

Interference and Derivation Proceeding

A

MPEP 2300

More info here:
** Derivation: 37 CFR Part 42 (37 CFR 42.4200 - 42.412)**

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56
Q

Suspension of Action

A

MPEP 700: Examination of Applications (MPEP 709)

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57
Q

MPEP 700

A

Examination of Applications

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58
Q

Receipt and Handling of Mail and Papers

A

MPEP 500

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59
Q

Information Disclosure Statement (IDS)

A

MPEP 600: Parts, Form and Content of Application (MPEP 609)

37 CFR 1.97 Filing of Information Disclosure Statement
37 CFR 1.98 Content of Information Disclosure Statement

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60
Q

Certificate of Correction

A

MPEP 1400: Correction of Patents

61
Q

Preliminary Amendment

A

MPEP 600: Parts, Form and Content of Application (608.04(b))

37 CFR 1.115 Preliminary Amendments

62
Q

Accelerated Examination

A

MPEP 700: Examination of Applications (708.02)

63
Q

Restriction in Applications Filed Under 35 U.S.C. 111

A

MPEP 800

64
Q

Substitute Specification

A

MPEP 600: Parts, Form and Content of Application (608.01(q))

37 CFR 1.125 Substitute Specification

65
Q

Biotechnology

A

MPEP 2400

66
Q

MPEP 1000

A

Matters Decided by Various U.S. Patent and Trademark Office Officials

67
Q

MPEP 2000

A

Duty of Disclosure

68
Q

MPEP 2100

A

Patentability

69
Q

Secrecy Order

A

MPEP 100

70
Q

Items that CANNOT be Faxed

A

MPEP 500: Receipt and Handling of Mail and Papers

71
Q

Types of Apps; Priority

A

MPEP 200

72
Q

USPTO personnel…opinion on validity, patentabilty, etc.

A

MPEP 1700: Miscellaneous

73
Q

Parts, Form, and Content of Application

A

MPEP 600

  • Application Data Sheet (601.05)
  • Oath/Declaration (602)
  • Correcting Inventorship (602.01(c)
  • Supplemental Oath (603)
  • Substitute Statement (604)
  • Multiple Dependent Claims (608.01(n))
  • Substitute Specification (608.01(q)
  • Preliminary Amendment (608.04(b))
  • Information Disclosure Statement (609)
74
Q

Pre-Grant Publication (PGPub)

A

MPEP 1100

75
Q

Double Patenting

A

MPEP 800

76
Q

Statutory Invention Registration (SIR)

A

MPEP 1100

77
Q

Examination of Applications

A

MPEP 700

78
Q

Certificate of Mailing

A

MPEP 500: Receipt and Handling of Mail and Papers

79
Q

Plant Patents

A

MPEP 1600

80
Q

Allowance and Issue

A

MPEP 1300

81
Q

MPEP 500

A

Receipt and Handling of Mail and Papers

82
Q

MPEP 2700

A

Patent Terms, Adjustments, and Extensions

83
Q

Substitute Statement

A

MPEP 600: Parts, Form and Content of Application (604)

37 CFR 1.64 Substitute statement in lieu of an oath or declaration.

84
Q

Request for Continued Examination

A

MPEP 700: Examination of Applications (MPEP 706.07(h)

37 CFR 1.114: Request for continued examination

85
Q

Preissuance Submissions

A

MPEP 1100: Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions (MPEP 1134)

35 USC 122(e): Preissuance submissions by 3rd parties

37 CFR 1.290: Submissions by third parties in applications

86
Q

Payment of Fees

A

MPEP 500: Receipt and Handling of Mail and Papers

87
Q

Patent Terms, Adjustments, and Extensions

A

MPEP 2700

88
Q

IP5 Countries?

A

Implementation of the Global and IP5 Patent Procecution Highway PHH Pilot Programs

89
Q

MPEP 1600

A

Plant Patents

90
Q

Miscellaneous

A

MPEP 1700

  • Limits on opinions PTO can express about validity
    • Limits on working in certain areas within 1 year of departure
91
Q

Patent Prosecution Highway

A

No material available on Exam

92
Q

MPEP 200

A

Types of Apps; Priority

  • Continued Prosecution Application (CPA) (201.06(d)
93
Q

Patentability

A

MPEP 2100

94
Q

Terminal Disclaimer

A

MPEP 1400: Correction of Patents

95
Q

Correcting Inventorship

A

MPEP 600: Parts, Form and Content of Application (602.01(c))

37 CFR 1.48 Correction of Inventorship in an application (other than Reissue application)
37 CFR 1.324: Correction of inventorship in a patent

96
Q

Signatures

A

MPEP 500: Receipt and Handling of Mail and Papers

97
Q

Revival

A

MPEP 700: Examination of Applications (MPEP 711.03(c)
37 CFR 1.137

98
Q

Appeal

A

MPEP 1200 (Entire Chapter)
37 CFR Part 41 (Practice before the PTAB)-may be easier to find answers here

99
Q

MPEP 100

A

Secrecy, Access, National Security, and Foreign Filing

100
Q

Supplemental Replies as a Matter of Right

A

MPEP 700: Examination of Applications (MPEP 714.02(a)(2))

101
Q

Oath or Declaration

A

MPEP 600: Parts, Form and Content of Application (602)

37 CFR 1.63 Inventor’s oath or declaration

35 USC 115 Inventor’s Oath or Declaration

102
Q

MPEP 1900

A

Protest

103
Q

Petition to Make Special

A

MPEP 700: Examination of Applications (708.02)

104
Q

Small/Micro Entity Status/Requirements

A

MPEP 500: Receipt and Handling of Mail and Papers

37 CFR 1.27 Small Entity Status
37 CFR 1.29 Micro Entity Status

105
Q

Protest

A

MPEP 1900

37 CFR 1.291: Protest

106
Q

Claim status indicators (e.g., “cancelled”)

A

MPEP 700: Examination of Applications (714: Amendments)

37 CFR 1.121 Manner of making Amendments in applications

107
Q

Accessibility of Assignment Records?

A

MPEP 300: Ownership and Assignment

(Not MPEP 100, which covers access)

108
Q

List of… Recognized Countries for Foreign Priority under 35 USC 119(b)

A

MPEP 213.01 Recognized Countries and Regional Patent Offices of Foreign Filing

109
Q

Member Countries of International Union for the Priotection of New Varieties of Plants (UPOV)

A

MPEP 1612 UPOV Convention

NOTE: 1613 Right of Priority Based upon Application for Plant Breeder’s Rights
[R-08.2012] Pursuant to 35 U.S.C. 119(f), an application for a plant patent may rely upon an application for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) for priority under 35 U.S.C. 119(a) through (c).

110
Q

37 CFR 1.114

A

37 CFR 1.114: Request for continued examination

Also see:
MPEP 700: Examination of Applications (MPEP 706.07(h)

111
Q

37 CFR 1.53(b)

A

Nonprovisional filing

Also see MPEP 200

112
Q

Continued Prosecution Application CPA

A

37 CFR 1.53(d): Continued Prosecution Application CPA

Also see MPEP 200

113
Q

37 CFR 1.53(d)

A

37 CFR 1.53(d): Continued Prosecution Application CPA

Also see MPEP 200

114
Q

35 USC 119(e)

A

35 USC 119(e): Provision Priority

Applies to new: US (National) and PCT (International) applications
Priority from: Provisional application
12 months; same inventor(s); reference

Also see MPEP 200

115
Q

Provision Priority

A

35 USC 119(e)

Also see MPEP 200

116
Q

Domestic Priority

A

35 USC §120

Also see MPEP 200

117
Q

35 USC §120

A

35 USC §120: Domestic Priority
Applies to new: US (National) applications: Continuations, Divisionals, CIPs
Priority from: US Domestic of US National Stage application

Joint inventors; co-dependency

Also see MPEP 200

118
Q

Foreign Priority

A

a35 USC §119(b)
12 months

Also see MPEP 200

119
Q

35 USC §119(a)

A

35 U.S.C. 119(a) (b) Foreign Priority
Applies to: US Domestic nonprovisional application
Priority from: Foreign application

12 months

Also see MPEP 200

120
Q

37 CFR 1.76

A

37 CFR 1.76: Application Data Sheet

Also see:
MPEP 600: Parts, Form and Content of Application (601.05)

121
Q

37 CFR 1.97

A

37 CFR 1.97: Filing of Information Disclosure Statement

See also:
37 CFR 1.98 Content of Information Disclosure Statement
MPEP 600: Parts, Form and Content of Application (MPEP 609: IDS)

122
Q

37 CFR 1.98

A

837 CFR 1.98 CONTENT of Information Disclosure Statement

See also:
37 CFR 1.97: Filing of Information Disclosure Statement
MPEP 600: Parts, Form and Content of Application (MPEP 609: IDS)

123
Q

37 CFR 1.130(a)

A

37 CFR 130(a): Affidavit or declaration of attribution under the Leahy-Smith America Invents Act.

124
Q

37 CFR 1.130(b)

A

37 CFR 1.130(b): Affidavit or declaration of prior public disclosure under
the Leahy-Smith America Invents Act.

125
Q

Affidavit or declaration of attribution.

A

37 CFR 130(a): Affidavit or declaration of attribution under the Leahy-Smith America Invents Act.

126
Q

Affidavit or declaration of prior public disclosure.

A

37 CFR 1.130(b): Affidavit or declaration of prior public disclosure under
the Leahy-Smith America Invents Act.

127
Q

37 CFR 1.136

A

37 CFR 1.136: Extenstions of Time

37 CFR 1.136(a): Automatic extensions
37 CFR 1.136(b): Sufficient cause (filed on or before day reply is due)

128
Q

37 CFR 1.48

A

**1.48: Correction of inventorship **pursuant to 35 U.S.C. 116 or correction of the name
or order of names in a patent application, other than a reissue application.

(a) NONPROVISIONAL application
(b) Inventor’s oath or declaration for added inventor
(c) Any request …under paragraph (a) …after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee …unless
…statement …due solely to the cancelation of claims …
(d) PROVISIONAL application
(e) Additional information may be required
(f) Correcting or updating the name of an inventor
(g) Reissue applications NOT COVERED
(h) Correction of inventorship in patent. See 1.324
(i) Correction of inventorship in an interference or contested case before the PTAB

129
Q

37 CFR 1.324

A

1.324: Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before
which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
(b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested
change;
(2) A statement from all assignees … agreeing to the change .
(3) The fee …
(c) Correction of inventorship in an application: see § 1.48
(d) In an interference under part 41, ……

130
Q

35 USC 111(a)

A

Filing a regular (nonprovisional) domestic (National) application…directly in the US

(can claim priority to a prior foreign application)

131
Q

35 USC 111(b)

A

Filing a provisional application…directly in the US

132
Q

35 USC §120

A

Benefit of an earlier filing date…application previously filed in the US
(Domestic Priority)

133
Q

35 USC §119(e)

A

Benefit of an earlier filing date…from a provisional application
(Provisional Priority)

134
Q

35 USC 119(b)

A

Benefit of an earlier filing date…identifying the foreign application by ..application number…country….date of filing…)
(Foreign Priority)

135
Q

35 USC 363

A

International Application designating the US
(PCT)

Also see: MPEP 1800: PCT

136
Q

35 USC 371

A

Entry into the National Stage
from a PCT (Filed under 35 USC 363)

137
Q

35 USC 115

A

35 USC 115: Inventor’s Oath or Declaration

Also see:
MPEP 600: Parts, Form and Content of Application (602)

37 CFR 1.63 Inventor’s oath or declaration

138
Q

37 CFR 1.63

A

37 CFR 1.63: Inventor’s Oath or Declaration

Also see:
MPEP 600: Parts, Form and Content of Application (602)
35 USC 115: Inventor’s Oath or Declaration

139
Q

35 USC 121

A

35 USC 121: Divisional Applications
Resulting from Restriction requirement

See also: MPEP 200 (MPEP 201.06)

140
Q

35 USC 314

A

Institution of…Inter Partes Review

Also see:
37 USC Part 42: Trial Practice before the PTAB
Consolidated Trial Practice Guide

141
Q

Divisional Applications

A

MPEP 200 (MPEP 201.06)

35 USC 121: Divisional Applications resulting from restriction requirements

142
Q

35 USC 365(a)

A

**PCT **Priority: Applies to US (National application). Benefit from prior-filed PCT application

143
Q

35 USC 365(b)

A

PCT Priority: Applies to PCT designating the US. Benefit** from** prior-filed…
- PCT that designated at least one country other than the US
- Foreign application

12 months

144
Q

35 USC 365(c)

A

PCT Priority: Applies to US National Stage application. Benefit from prior-filed PCT that designated the US

codependency; (joint) inventor(s)

145
Q

35 USC 302

A

35 USC 302: Request for Reexamination

Also see:
37 CFR 1.510: Requestion for Ex Parte Reexamination
MPEP 2210: equestion for Ex Parte Reexamination

146
Q

35 USC 321

A

35 USC 321: Post-grant Review

Also see:
37 CFR Part 42 (37 CFR 42.200)
Consolidated Trial Practice Guide

(no MPEP Chapter)

147
Q

37 CFR 1.102

A

37 CFR § 1.102 Advancement of examination.
(Prioritized Examination)

Also see: MPEP 708: Order of Examination

148
Q

Prioritized Examination

A

37 CFR § 1.102 Advancement of examination. (Prioritized Examination)

Also see: MPEP 708: Order of Examination

149
Q

37 CFR 1.181

A

§ 1.181 Petition to the Director.

Also see: MPEP 700

Post-Course Study Cards (6 decks)

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