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Who has access to Unpublished or abandoned applications?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