MPEP General Flashcards
Who has access to Unpublished or abandoned applications?
any inventor related, an assignee or exclusive licensee, the attorney of record, someone who has written permission from these people, they are accessible by written request if the application is referenced in a US Patent, Published app, or Published PCT designating the US
How to get a foreign filing license
Invention must be made in US, US application filed then can be granted on filing receipt or automatically after 6 month from filing
Can be retroactive by petition if illegal forign filing occurred through error
When do national apps get filing date
spec, claim and drawing (will get a notice of missing parts for FOT)
What needs to be submitted for national stage applications to get filing date?
spec, claim, drawing and FOT for filing date
How to correct Inventorship?
correct ADS listing updated inventors, fee, oath and dec from any newly added inventor
8 Provisional Nos?
No Claims, oath or dec, examination, amending, design app, priority claims, IDS, no design priority
Provisional contents?
Cover sheet and ADS, spec, drawing, fee, NO CLAIMS
Min requirements for provisional filing date
Spec and drawing
Substitute applications contain?
same disclosure and cannot benefit from earlier filing date and no copendency
Continuation or CIP can be filed
anytime during prosecution or appeal as long as copending
CFR 53(b)
begin again(any continuation)
CFR 53(c)
a provisional application
CFR 53(d)
CPA, design only and death of the parent abandons priority date
What is an RCE?
for utility and plant, must submit fee and something for examiner to consider, not a new application
Foreign priority under non-AIA
FOREIGN PRIORITY does not count as prior art date under non AIA
assignment must be
in writting, can be in any language and non recordable
requirements for assignment recorded
be in english, identify the patent application, submit fee if using papare(no fee if electronically), be legible on 1 side of paper, be an original certified copy, be accompanied by a cover sheet
how can a second buyer take title over a first buyer?
1st buyer does not record before second(3 month grace period), 2nd buyer took for consideration and was unaware of 1st buyer
you can be removed as representative at any time and for any reason effective…
the moment it arrived at USPTO
how to withdrawal from representation?
petition director and give reasonable notice, delivery necessary papers to client, notify client of replies due and time frames(effective once approved)
assignee can? with respect to representation
revoke attorney and hire new one and exclude inventors from the file
statutory subject matter:
process, machine, manufacture, composition of matter
these cannot be faxed
patent applications, documents that need to be certified, color drawings, requests for reexam, papers subject to secrecy order
Small Entity
50% discount, independent inventors disqualified if assignee or licensee is not small, nonprofit orgs, small business not employing >500 people
People hired by small business is calculated by
averaging the number of employees during each month of the last year
How to claim status discount?
just pay the small or micro entity fee and you are one
Micro Entity
AIA, 75% discount, applicant/inventor is on <5 nonprovisional and makes <3x national average salary, professors filing for themselves, anyone assigning invention to institute of higher learning
what if status discount changes during prosecution?
just future payments reflect change
What is not effected by status discounts?
document supply, certificate of correction and miscellaneous fees
If you want filing date when submitted at the post office?
mail with a certificate of mailing
Certificate of mailing not usable on?
new apps, agreements settling an interference, and any PCT papers
If you want filing date on a new application to be the date submitted in the post office?
Use priority mail express
Notice of Missing Parts
missing fee, oath, translation. send it in and you’re good
Notice of Incomplete Application
Something needs fixing but filing date is in tact
Notice of Omitted Items
submit items with petition and fee and the filing date changes to when items are received(extendable 2 month period to submit), or inform the PTO that you will do nothing and submit amendments to fix but cannot submit NM
Claim Structure Rules:
1st word capitalized, preamble “:” body, comprising or consisting comes right before “:”, each element or step separated by “,” or “;”, second to last element has an “and” after the “,” or “;”, claim ends with “.”,
“Comprising”
my invention is at least what follows
“Consisting”
invention is only what follows
“Means for”
covering the corresponding elements in the specification and its equivalent
Markush Group
a group of things can be “or” or “and”
Dependent Claims
“as in claim X” and then add content
Multiple Dependent Claim Rules
Cannot depend from another multiple dependent, can only use “or” never “and”, they count as the # of claims they depend on, improper multiple dependents count as 1
1 Hop Rule
my only incorporate by reference matter from one app to another, cannot chain references
How to submit relevant information that you have a duty to disclose?
IDS
If relevant 102 material found after issue?
seek a withdrawal and submit IDS in continuation
Response to an action
must address each and every objection or rejection or it is incomplete
Objection:
form of the claim, spec, or drawings is improper
Rejection:
subject matter as claimed is unpatentable
To challenge an objection?
Ask examiner to reconsider and then file petition to commissioner
To challenge Rejection?
Ask examiner to reconsider and then appeal to the Patent Trial Appeal Board
103 obvious with respect to what times for AIA and pre-AIA?
AIA obvious at the time the application was filed
Pre-AIA obvious at the time of invention
Anticipation
something is completely described in prior art
Challenge anticipation?
say examiner is wrong in one of 2 ways:
The alleged prior art is not, in fact, prior art
Or the prior art does not actually teach each and every element of the invention
102 Where do pubs and acts count?
pubs count in the whole world and acts count in the US
NAFTA and WTO?
treaties that allow date of invention to be moved back for pre AIA 102(g) if it happened in member countries, and allow acts outside of the US to be prior art if a US app is filed
“On Sale”
Something is considered “on sale” in the US if you can find it on the internet in the US,
An offer for sale also satisfies “on sale”,
Sale of rights or license does not count as on sale,
Offer for sale is satisfied if the item is capable of being described and created
“use”
Occurs when invention is being used in its normal capacity regardless of the public knows of its use
Old 102(g)
still used on transitional cases, prior invention must have been in the US(in interference it may also be from NAFTA and WTO countries), The prior invention must not have been abandoned, suppressed(timing invention to enter the market), or concealed(trade secret)
New 102(a)
Defines universe of prior art
(1) : patents, printed publications, public use, sale, or available to the public before the filing date anywhere in the world
(2) : US patents, published applications and published PCTs are prior art as of their effective filing date
New 102(b)
Exceptions to prior art if the thing was described by inventors before any of the 102(a) disclosures and the disclosure is within a year of filing it is not prior art
New 102(c)
Defines common ownership
New 102(d)
Defines what the filing date is of prior art documents
Effective filing date is either date of prior filing or and priority date it is entitled to
Transitional Cases?
If claims have filing dates before and after AIA then it is called a Transition case and a statement is required
In transition cases new 102 applies and old 102(g) applies
It is also a transition case if a nonprovisional application is filed and contains a claimed invention that is filed after AIA but still claims priority from a pre AIA filing
103 Obviousness
Asserts that a person of ordinary skill in the art would find it obvious to modify what is taught by one 102 reference in light of something in another 102 reference; no limit on number of references that can be combined
New Matter(NM)
Subject matter not disclosed in the original application
Commonly Tested unpatentable subject matters 101:
scientific principles and math discoveries(methods of using are patentable); atomic weapons; a device exclusively used for illegal purposes; method of doing business; naturally occurring things; a purely mental method or abstract software
When can final rejection be made?
anytime the examiner is repeating a rejection or making a rejection based upon the applicant’s action
Can be first action in things like continuation or substitutes
What to do after final rejection?
Make changes to put app in a condition for allowance
File a notice of appeal(2 months but may be extended up to 7)
File continuation and abandon parent
If the action was incorrectly final?
Ask examiner to withdraw finality
If they refuse petition the commissioner
If amending app after final rejection:
Time still runs on your 6 month period to abandonment, if you submit something and they inform you past the deadline that they will not enter it it is still considered abandoned, Examiner may refuse entry at their discretion if it raises new issues of does not put application in better position for appeal
Amendments that are a matter of right after final rejection:
Cancel claims
Comply with examiner requests
Present claims in better form for consideration on appeal
When can appeal an action?
Any second or final action can be appealed
Special status no fee?
serious illness of inventor(need certificate from doctor); positive impact on environment; it improves availability of energy; inventors over 65; Counterterrorism
Special Status with Fee?
prospective manufacture, patent needed to stop infringement; safer DNA; just ask; HIV/AIDS or Cancer; Superconductive Materials(technically free by presidential mandate but not by rules of USPTO); biotech apps filed by small entities
Accelerated Exam Program requirements:
Application must be filed with:
Petition to make special under the accelerated examination program
The appropriate fee or a statement that the invention is for the environment, energy, or counter terrorism
Must be a non reissue utility or design app
Everything must be filed electronically on EFS
At time of filing it must be accompanied by all fees and executed oath
Must contain 3 or fewer independent claims and 20 or fewer dependent claims, no multiple dependent claims,
Prioritized Examination
Submit a request and $4,800 to have application made special
6 things that don’t have automatic extensions:
If an office action states;
Reply brief(responsive to examiner’s answer in an appeal to board of patent appeals and interference);
A request for an oral hearing in an appeal*;
Responding to a decision of the board *;
Anything in an interference *;
Due dates in a reexamination, extension for cause must be requested before date due
anything above with a * must ask for extension for cause on the day needed
5 things due dates cannot be extended for(even with cause)
IDS
Any due date set by statute
The issue fee can now be paid late upon a proper showing but it cannot be extended
3 month deadline to get a refund for a fee paid as a large entity
Filing formal drawings at the time the issue fee is paid
When are dates calculated from?
calculated from mailing date from the patent office
a petition to revive an unintentionally abandoned application must be accompanied by
a response to any action which was outstanding at the time of abandonment or continuation
intentionally abandoned applications cannot be revived
KNOW THAT SHIT NOTHING TO TEST LOL
How to revive unintentionally abandoned app?
Submit what needed to be submitted
Pay a fee
A statement saying that delay in submitting was unintentional
Any necessary terminal disclaimer and terminal disclaimer fee
Terminal disclaimer:
If you are reviving a lapsed patent then file this so that the year of abandonment is not added to your patent term
Who must record interview?
even if the examiner records the substance of interview the applicant still has an obligation to do so
Supplemental Reply
A reply in follow-up to an initially filed reply
When are supplemental replies a matter of right?
Canceling claims Adopting examiner suggestions Placing app in condition of allowance Replying to office requirement made after first reply Correcting informalities Simplifying issues on appeal
Amendment after Final:
Same as other amendments but must include a showing that there is no change in need of further examination
2 ways to Change Claim Wording:
Cancel and replace with new claims, new claims are consecutively numbered from previous claim submitted, even unentered claims
You may also amend claims by submitting a marked up copy of the claims you want to amend.
How to amend claims:
Put “(currently amended)” after numeral of first amended claim
Words added should be underlined
Words deleted should be struck through
Double brackets [[]] may be used to indicate removal of up to 5 characters
Status indicators:
when claims are amended all the claims must be shown on a claims listing with status indicators in front of the text of each claim Statuses are: “Cancelled” “Previously presented” “Withdrawn” “Currently amended” “Original” “Not entered” “New” No other statuses are allowed
Amendments after notice of allowance:
You may enter amendments before the issue fee is paid if they are needed for proper disclosure and require no substantial work for the examiner
To be entered they must give remarks with amendment answering the 4 whys:
Why the amendment is needed?
Why no new search or consideration is required?
Why any amended or new claims ate patentable?
Why the amendments were not earlier presented?
If the amendments are refused or do not meet requirements then must file a continuation and amend that in a preliminary amendment
No amendments are allowed after issue fee is paid except with withdrawal from issue CFR 1.313
Overcoming rejection where inventions are the same:
cancelling claims from one application
Overcome rejection when inventions are an obvious variant and they are commonly owned
filing a terminal disclaimer so the two patents expire at the same time and if expire if they ever cease to be commonly owned
Restriction:
If 2 or more distinct or independent inventions in one application you get a restriction requirement and the applicant must elect one invention to proceed with;
Nonelected may then be pursued in a divisional which cannot be rejected on the basis of double patenting from the parent app
Linking claims
claims which link 2 or more otherwise restrict-able inventions
How are linking claims examined?
with the elected claims and if the linking claim is allowed then it obviates the restriction and the non elected claims join back into prosecution
What are the types of double patenting?
obviousness and same invention type
Obviousness double patenting
Can be overcome by filing terminal disclaimer(
Giving up the patent term beyond the date of the original patent and that the patent will expire immediately if they are no longer commonly owned)
Obviousness double patenting is improper when the 2nd app is a divisional of the 1st in which the office issued a restriction resulting in said divisional
Same Invention Type Double Patenting
Claim being rejected is exactly the same as a previous one, Cannot be overcome by terminal disclaimer
Where to look if the test asks about who at the USPTO decides something?
MPEP 1000
Statutory Invention Registration
a pre-AIA document that must meet all requirements of 112 and acts as a prior art publication to prevent others from getting a patent(it does not actually confer any rights)
Pre-grant Publication
new apps and continuing apps if they are filed on or after 11/29/2000 and national stage apps if the international app was filed on or after 11/29/00
What don’t have pre-grant publications?
apps under secrecy order; apps whose exposure would be detrimental to national security, provisional and design apps, and apps that have requested not to publish
Contents of Appeal Brief
Identification of real party in interest(the person who owns rights)
- If changes during the appeal, appellant has 20 days to advise board
- If identification not included the PTO will presume the real party in interest is/are the listed inventors
List related appeals and interferences
- If not included PTO will presume there are none
Summary of claimed subject matter of each independent and dependent claim separately argued
Arguments directed to each and every rejection with separate headings for each
An appendix containing a copy of the claims appealed
What are the 3 criteria for appeals and interferences to be considered related?
Same owner
Known to the appellant
Relate to or be affected by the board decision in this case
What can be appealed?
Second actions or final rejections can be appealed to the Patent Trial and Appeal Board
How to appeal?
File notice of appeal, pay fee, before or after final response
What can be relied on in an appeal brief?
only what is on record NO NEW MATTER
What does the PTO assume is being appealed?
all rejected claims
What amendments can you make after filing an appeal?
cancel claims that dont effect other claims;
Rewrite dependent claims in independent format;
Affidavits will not be admitted without Showing of good cause and they must Overcome all outstanding rejections and Be submitted before the filing of the brief
What to do when examiner’s answer contains new ground for rejection in an appeal?
you may reopen prosecution and respond like a normal action or;
Ask that appeal be maintained and respond by filing a reply brief the Reply brief cannot submit amendments or Rule 1.132 affidavits or declarations
No second fee is required for response
if new grounds for rejection is present but examiner does not designate it as such then applicant can…
file a petition under 37 CFR 1.181 and pay a fee to have it formally designated as “new ground” which enables the applicant to chose to reopen prosecution
or
If applicant only wants to submit arguments against the new ground it is not necessary to file a petition, you may simply submit a reply brief with new arguments
Rule 136(a)
extension without cause
Rule 136(b)
extension with cause
Reply briefs:
Optional appeal can go on without it Filed as matter of right 2 months from examiners answer to file Extension under 136(b) The Board takes jurisdiction following the reply brief or after 2 months
Board Descision may?
reverse or affirm examiner in whole or in part
may issue new grounds for rejection
After remand from the board on appeal?
the examiner may submit a supplemental examiner’s answer and then applicant respond like normal examiner answer
2 ways to respond to board decision on appeal?
Submit appropriate amendments to the claims rejected or show facts or both and have the matter reconsidered by the examiner - If re-rejected then applicant can appeal to board; or
Ask that the board reconsider(Cannot appeal new rejection by the board because you cannot appeal something rejected only once, so you may ask the board to reconsider then after making rejection again appeal it)
applicant can file a 53(d) or RCE continuation at any time during an appeal and abandon parent or continue the appeal with a 53(b) continuation
JUST KNOW THAT FACT BITCH
When can applicant withdraw appeal and what happens?
at any time, which results in abandonment of the app unless there are claims already allowed
What to do if dissatisfied by the board’s decision?
you may appeal to the Court of Appeals for the Federal Circuit(C.A.F.C., will not accept new evidence) or the US District Court for the Eastern District of Virginia(will accept new evidence)
What happens post appeal?
File is returned to examiner
If no claims are allowed it will be abandoned after deadline to appeal to CAFC or Virginia
If claims are allowed and appeal is unsuccessful examiner will cancel rejected claims and sent application to issue
If no claims are allowed but one or more claims are allowable, except for dependency on a rejected claim the application stands abandoned
REMEMBER THE FOLLOWING RULES JUST DO IT YA DUMB WHORE
Rejection cannot be appealed unless it is final or has been made twice
Oral argument is held only if requested in writing and fee is paid
Whenever board makes new grounds for rejection applicant may
Ask for new grounds to be reviewed
Aske for new grounds to be designated as such
Reopen prosecution for new grounds to be reviewed by examiner
Notice of allowability
Application is allowed but there are small things you need
Deferring Issuance:
File petition after notice of allowance to defer issue fee payment for one month, deferral can be extended on a showing of extraordinary circumstance
When and how can you Withdrawal from Issue:
Prior to payment of issue fee submit petition showing good and sufficient reason and pay a fee to withdraw from issue
Alternatively a continuing app can be filed before issue fee is paid and then abandon parent
Applicant may withdraw from issue with a fee and petition
The Patent Office may withdraw from issue after the issue fee is paid if:
There was a mistake of the office
There was a violation of the duty to disclose
Claims are unpatentable
An interference
Patent Term Extensions
Applications filed from 06/08/95 - 05/29/00 may extend their 20 year terms up to 5 years for delays in issuance of the patent due to interferences, secrecy orders, and successful appeals(unless terminal exclaimer used)
3 scenarios in which PTA occurs
Administrative delays,
Overall pendency from filing to issue > 3 years
PTA Administrative delays
If its > 14 months from filing to Notice of allowance First office action Written restriction requirement Or an examiner’s request for information
You get any time over the 14 months back
> 4 months to reply to an amendment or appeal starting from time the appeal brief and fee are received
> 4 months to act after decision by Board or CAFC
> 4 months to print patent once issue fee has been paid and all outstanding issues satisfied
overall pendency from filing to issue > 3 years
Delays due to interferences, secrecy orders, and successful appeals
overall pendency from filing to issue > 3 years what is not included in 3 years?
Time consumed by continued examination under an RCE
Time from secrecy order, interference or appellate review
Time consumed by applicant requested delays
Does PTA accumulate in continuing apps?
no
What to do if you object to PTA calculation?
petition must be sent within 2 months of patent grant extendable under 1.136(a)
What is a reissue?
Applicant States the patent is defective; Reissue applications must correct the defects in the patent
are examined like a new application
Who must sign reissue oath or declaration?
If no broadened claims, by the assignee
If broadened claims, by all the inventors
What must be filed in REissue?
oath or declaration must be signed
filed with the written assent of any assignee
Offer to surrender the initial patent must be made
A statement of evidencing ownership must be filed with the assent of all assignees
New drawings are required in reissue
What happens to term and maintanence fee schedule onm reissue?
Term or patent and maintenance fee deadlines are not changed by reissue
The schedules and terms are set by original patent
Limitations on reissues:
Reissue cannot correct patent that is invalid or that does not disclose the best mode
Subject matter deliberately given up during the prosecution cannot re recovered by a reissue
Only patent owner can seek reissue
Reissue vs Reexam
Patent owner must file/anyone can file
Any prior art can be considered/only patents and printed pubs
Broaden claims if within 2 years/no broadening claims
Auto extensions/no auto extensions
Mistake required/no mistake required
What is a certificate of correction?
For small mistakes
Can correct mistake of not claiming priority but only if it was properly claimed in parent
Disclaimer:
Renunciation of 1 or more claims in a patent
Terminal Disclaimer:
gives up patent life terms to avoid obviousness rejections
Design vs Utility application:
15 years term from grant/20 years term from earliest filing date
No maintenance fee/maintenance fees at 3.5, 7.5, and 11.5 years
1 formal claim/as many claims
No PCT possible/ can be filed as PCT
6 months from foreign priority/1 year from foreign priority
No provisional priority/yes
6 months for pre AIA 102(d)/1 year
^Foreign filing needs to be within that time
What plants are not patentable?
Bacteria or
Tuber propagated plants
Jerusalem artichokes are commonly tested and are tuber propagated so unpatentable
Plant must be invented or discover in a cultivated state and asexually reproduce before filing
What is a PCT?
Like a world wide provisional application
what is the 102(e) date for PCT’s
FOT - 11/29/00 - D.US.E.
4 steps of the International Phase of a PCT:
Filing international application;
Establish international search report(novelty search) with an international search authority(ISA);
Preliminary non-binding written opinion sent to applicant by ISA as to novelty, obviousness(inventive step), industrial application(utility)
^Publicly Available at the end of 30 months from priority date;
Publication of the international application and international search report
National stage US steps:
Must submit F and copy of application by non-extendable 30 months from priority date
O and T can be submitted 1 month late with a late fee
Once in national phase it is treated like normal utility application
Non compliant 3rd party submitions
will not be entered or considered asnd no refund is given
Facts about 3rd party preissuance submitions that may be tested:
Preissuance submissions must be RECEIVED before critical date
applicant does not need to reply unless office requests
No faxing
Cannot be made on a provisional app
Protests cannot be filed electronically
If applicant participates in Offices e-office Action Program they will be notified of compliant subs
Must submit portion of document if a portion is listed as an item(not full item)
May be filed anonymously
Who has a duty to disclose?
Duty to disclose extends to every person associated of connected with filing and prosecution of app
Only to individuals not corporations
Supplemental Examination
Patent owner may request additional examination on already issued patent
If they determine there is substantial new question of patentability the USPTO will order reexam
