Random Notes Flashcards
Filing a reexamination vs. an IDS?
You have a duty to file an IDS when you hear about material prior art when there is an open examination of a patent application. When there is no open examination and you hear of prior art you think is material
[mini exam 5]
what does it cost to file a certificate of correction to fix a patent error?
nothing. it is free
how long do you have to file a broadening reissue?
2 years
Prosecution estoppel
if you made a point to rely on a claim limitation during prosecution you cannot then attempt to file a broadening reissue to broaden that claim limitation.
Rules for determining the last day a 3rd party party pre-issuance submission could be filed
- find the later of: 6 months after publication VS date of first rejection
- Find the earlier of: the date from (1.) VS the date of the notice of allowance.
Answer is 1 day before the resulting date.
After Examiner Answer how long do you have to file reply brief
2 months w/ extension for cause
when is any canceled matter in a US patent considered prior art under 102(a)(2)
as of the date the application publishes
can you amend claims of an international application after receiving the international search report?
Yes. you file amendments with International Bureau
Can an application abandoned for more than five years be revived?
Yes . There is no time limit
How long after a notice of allowance is the issue fee due?
3 months. it is not extendable
What is rule 59
If something is not required to be there to make a complete application (spec, claim, drawings, oath) than that information can be expunged upon payment of a fee by applicant
Can an original oath be filed with a continuation or division under 1.53(b)?
Yes. However, if its a continuation in part its not allowed because that contains new information.
how long does one have to file a supplemental examination?
6 years after patent expiration since the SOL no infringement is 6 years
can an amendment be filed in a supplemental examination?
No
living organism patent eligibility
as long as it is not identical to what is found in nature and its ‘man-made’ then it is patent eligible
how are tax strategies treated under 101?
they are categorically exempt and say that tax strategies, known or unknown, are not eligible.
However, you may get patents on computer programs that practice a tax strategy
derivation vs. interference
if its 2 AIA parties, its derivation
if its 2 pre AIA its an interference
if its 1 AIA and 1 pre AIA its interference plus a 102(g)
-remember that under AIA there is more prior art because a foreign filed application can be prior art if it is used to establish priority in a US patent application that publishes, US patent that issues, or a WIPO PCT that publishes
Graham Obviousness Factors
1) determine the scope and contents of the prior art
2) Ascertain the differences between prior art and the claims at issue
3) Resolve the level of ordinary skill in the pertinent art; and
4) Evaluate the evidence of secondary considerations
KSR obviousness
layers onto the graham factors.
Combining prior art elements according to known methods to yield predictable results.
simple substitution of one known element for another toyed predictable results
use of known technique to improve similar devices
Obvious to try
known work in one field may prompt variations of it for use in same field or a different one based on market forces
TEACHING SUGGESTION OR MOTIVATION in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art references teachings to arrive at the claimed invention
T/F: Publications dated after the filing date of an application may not be used by the patent examiner to support a rejection under 112(a) that the application does not provide an enabling disclosure which is commensurate in scope with the claimed invention
False
After final rejection, an amendment may not be entered except when certain requirements have been met
CFR 37.116
- A showing of good and sufficient cause why the amendment was not earlier presented
- Placing the application in better form for Appeal by reducing the issues on Appeal
- Placing the application in condition for allowance by adopting examiner suggestions
when you see a question about correct multiple dependent claim preambles - where do we look?
MPEP 608.01(n)
-The question this was ripped off of had correct answers that used the term “any” in the preamble.
Design patents overview
-all about the drawings - include 6 views
- typically claim language starts with “an ornamental design for”
- can use claim language “as shown and described”
best mode requirement
112(a)
just needs to be the best mode known to the inventor
“interconnectedness” requirement of 112
a claim needs to interconnect the way it is in the specification because otherwise its not supported
cannot rely on one of ordinary skill to assemble your invention in the claim
How can you make an amendment after final for purposes of placing the case in condition for allowance?
- show why the amendments were not earlier presented
- remarks must address each and every objection and rejection of examiner
- request reconsideration
can a broad generic claim still pass if it includes inoperative species of an invention?
Yes. as long as other operable species of the invention are also within the scope of the claim.
how many characters are allowed for a double square bracket [[]] amendment
5 characters
what does 37 CFR 1.132 cover?
affidavit used to traverse rejections showing objective evidence of Nonobviousness
what does 37 CFR 1.131 cover?
affidavit swearing behind a reference
Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
can you file a reissue to broaden claims to include subject matter given up to avoid prior art?
no
If you file a CIP and you add new material, what happens to your initial priority date?
you will lose the initial priority date for that new material filed
what kind of words do we want to use in a method claim? (easy structure note)
“-ing” words
these will guide the comparing of claim language for these method claims.
can you use the word “preferably” in claims?
it is explicitly not allowed in MPEP 2100. this is an example of exemplary language not allowed in claims.
can a provisional be filed for a design claim?
no
what is 3rd party pre-issuance submission?
MPEP 1900
once application publishes. its for a 3rd party while application is still pending to turn over patents and publications that they believe has a bearing on the patent application pending.
citation of prior art under 2200
any person at any time while the patent remains enforceable, including the patent owner, may submit “prior art” in the form of printed patents, publications or patent-owner statements which that person believes has bearing on patentability
no fee required
can file anonymously. no guarantee the patent office even looks at it when it’s submitted.
2200 reexamination
only based on patents and printed publications applied under 102 and 103
anyone can do this
have to put together information and describe why this rises to a substantial new level of patentability
if the office thinks they should reexamine - then a process is conducted and only the patent owner is involved
response periods are limited to two months and extensions are only limited to “for cause”
if office decides to not look into it and its submitted by 3rd party then they can challenge it. have to file petition Commissioner within 1 month of the mailing date of that decision
reexamination cannot be withdrawn or cancelled after filing
new claims can be added but not broader claims
a reexamination can be revived if unintentional
A final rejection of examiner can be appealed like a normal application (only by patent owner)
Are reexaminations and reissue appeals to the PTAB conducted publicly?
Yes. 3rd party can come unless the patent owner has been granted a request that the hearing is closed to the public
if you timely respond to final rejection in reexamine what is the timeline on any further response
MPEP 700
you get another month to respond if you like
Who can look at an application?
§ Applicant, representative, owner of application (employer, etc. if diff than applicant)
§ Owner normally only shows up after assignment of the rights of an application is filed with office
Any of those three who have access can grant access to others
MPEP 140 foreign filing license
A foreign filing license is required before an application covering that invention can be filed in another country
acquired in 3 ways
- passage of six months following the filing of any US application including provisional application
- by being granted specifically on the filing receipt
- by the granting of a petition asking for one
Are all reissue applications open to the public?
Yes. Generally the rule is that not all pending applications are open to the public but those patent applications that publish are available only at that time.
are abandoned applications available to the public?
No. not unless they are mentioned in something that is itself available.
is a continuation in part application of an issued patent available to public?
maybe. not unless the continuation is public
What assignment records are available to the public?
For those patents/applications that are available to public the assignment records will be available.
You find a patent that is a divisional. application of a parent that has not yet published. can you find the status of that application?
Yes. by submitting a written request for the status of the parent which includes a copy of the patent you found.
will not get access to the actual patent app contents but will get status.
can you get a foreign filing license retroactively?
Yes. just have to show it was an honest mistake.
What has to be in a provisional application?
A cover sheet or signed ADS identifying:
- the application as a provisional application
- the names or name of inventor(s)
- the residence of each named inventor
- the title of the invention
- the name and registration number of the agent or attorney
- the docket number of the filer if any
- the correspondence address
- also, a specification as described by 112
- drawings
- filing fee
seven no no’s of provisional applications
no claims no oath or declaration no examination or amendment no design applications no possible claim for priority from other applications no information disclosure statement
what is a continuation application?
The second or third etc. application by the same applicant for the same invention claimed in a prior, non-provisional application and filed before the original parent becomes abandoned or is patented.
A continuation is typically filed to start fresh with prosecution after a final rejection rather than taking an appeal or filing an RCE
only need one common inventor with parent
all continuations require the parent is copending
An assertion of priority in the originally filed paperwork operates as an automatic incorporation by reference for inadvertently omitted subject from the priority application.
what is a CIP?
A continuation in part is also the second application by the same applicant for the same invention claimed in a prior, non-provisional application and filed before the original parent becomes abandoned or is patented. In addition, a continuation in part repeats some substantial portion of the earlier application and adds matter not disclosed in the earlier application
what is a divisional application?
A divisional is a leader application for a distinct and independent invention carved out of a pending application, and claiming only subject matter disclosed in the earlier, parent application. A divisional must be copending with its parent.
What is an RCE?
A Request for Continued Examination is a procedure where a utility or plant application can be further examined upon request, with the fee, and the submission of something for the examiner to consider. It is not considered a new application filing but is rather an ongoing version of the original.
RCE must be accompanied by a submission (i.e., an amendment that meets the reply requirement of 37 CFR § 1.111)
Formal requirements for obtaining foreign priority
- File a claim for the priority i.e. ask that he or she be given the benefit of the foreign filing date in an ADS; and
- File a certified copy of the original for an application
(translation is necessary only if rejection given)
Requirements for recording assignments
1) be in English
2) Identify all patients assigned by number and applications by number
3) accompanied by correct fee (free if filed electronically)
4) be accompanied by cover sheet
Joint Research Agreements and Prior art
102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or as such:
1) the subject matter disclosed must have been developed in the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement I was in effect on or before the effective filing date of the claims invention; and
2) the claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement;
3) the application for Patton for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement
small entity filing fee discounts
MPEP 500
small guys get half off and really small guys get 75% off
for an application to be complete and get a fixed filing date, must include:
specification including a description
at least one claim
any required drawings – must be enabled properly under 112(a) so if drawings are required to enable they are needed
can a certificate of mailing be used for a new patent application
No. However if you have already filed a provisional and then you are filing a non provisional apparently that is allowed. (form 500 prime questions)
can you correct inventorship in an application?
Yes. however it has to be for some form of an error. cannot just say they changed their mind.
3 rules of dependent claims
- A multiple dependent claim cannot depend form another multiple dependent claim. If it does, it is improper and is counted in calculating fees as a single dependent claim
- A multiple dependent claim can depend from more than one previous claim in the alternative only (“and” is forbidden; “or” is permitted); and
- In calculating the number of claims for calculating fees, each proper multiple dependent claim counts as the number of claims from which it depends, and improper multiple dependent claims are counted as a single claim.
The requirements as to timing for IDSs are as follows:
Information Disclosure Statement
- If filed within three months of the application filing date OR before the first action, only the IDS need be filed
- If filed after the 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
- the timing for filing an IDS cannot be extended
MPEP § 609, under the heading “Minimum Requirements for an Information Disclosure Statement,” under the subheading “B(3). Information Disclosure Statement Filed After B(2), but Prior to Payment of Issue Fee 37 CFR 1.97 (d)”, and subheading “B(5) Statement Under 37 CFR 1.97(e).” (A) The statement specified in 37 CFR § 1.97(e) requires that the practitioner certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the information disclosure statement.
minimum content for IDS
- A list of the individual items submitted with parents identified by patentee, number and issue date; and publications identified by author, title, relevant page(s), date in place of publication
- A copy of every patent, publication or other information being submitted (including cited U.S. pending applications not in the IFW system)
- At least a concise explanation of relevance of anything not in English. Translation into English are required if they are readily available
what is an IDS generally?
Rule 1.56 “each person associated with the filing and prosecution of a patent application has a duty of candor in good faith and dealing with the office, which includes a duty to disclose to the office all information known to that individual to be material to patentability…”
IDS are preferred way to disclose possible material information to the Patent Office
IDS bright line rules:
- The DUTY extends not only to the attorney and the inventor, but EVERYONE else associate with prosecution. This may include the owner of the patent, or an expert retained to do research in conjunction with responding to an official action
- The information required to b disclosed includes information whether or not obtained in conjunction with the particular application in issue. Thus, if an attorney happen to remember some piece of prayer art he had seen in doing work in the past for another client, and that piece of prior art is material to the application in issue, failure to disclose would be a breach
- a breach of the duty to disclose will result in a refusal to grant the patent if the failure is discovered before the patent issues, or invalidity of the patent if it is discovered after issue
- The refusal to issue or invalidity result even if the patent owner and/or inventor are entirely blameless, and the breach was by others
- The time for filing IDS cannot be extended
- Information required to be disclosed extends to al 102 acts not just patents and printed publications
- When material prior art is discovered after the application has been allowed and the issue fee paid, the proper course is to seek withdrawal of the application from issue so the art may be considered in a continuation application
- Non-complying IDSs will be placed in the file, but not considered
4 requirements of an oath submitted with application
- I am an inventor
- This was filed with my permission
- I have reviewed and understood it
- I acknowledge my duty of disclosure to the patent office
What is a way to correct inventorship? [600]
Pending application = Rule 1.48; by filing a continuation application with a new declaration signed by the new inventors.Have to pay filing fee
More efficient Rule 1.48 = file a new oath signed by the new inventor, and file an ADS adding the new inventor along with a fee correcting inventorship.***
after a patent has issued you can file a petition to the Commissioner under Rule 1.324 saying “this was a mistake” and thats all. there will be a certificate of correction put in.
Notice of Omitted Items situation response options [600]
Live with whatever you have on file and accept the original filing date for the application with the missing information
or
send what is requested into the office and accept a later filing date.
What locations can you incorporate essential material from in an incorporation by reference?
A U.S. patent or a U.S. published application.
If you get this wrong you can fix my sending in an amendment and a declaration that the material added corresponds to what was added originally by reference. no new matter added.
What must you do to avoid an application becoming abandoned in response to a final office action? [700]
one of three things must happen:
- A response must be filed which the examiner agrees places the application in condition for allowance; or
- A Notice of Appeal must be filed; or
- The examiner, either on his or her own initiative or in response to a request by the applicant, converts the action to a non-final one.
note: filing a continuation under rule 1.53(b) or (d) or RCE is not a ‘response’ since these are separate applications or initiate new proceedings and the parent is abandoned, or in the case of RCE, resuscitated for another round of prosecution.
What are your rights after final rejection? [700]
1) cancel claims
2) comply with requirements as to form or adopt suggestions of the Examiner
3) present claims in better form for consideration on appeal
note: other amendments will not be entered without a showing of why they were not presented earlier and why they are necessary.
there is no right for an interview after final rejection but they are usually granted.
2 month rule after final rejection [700]
Applicant has 6 months to sort out an application after final rejection.
The PTO will pick up the cost of any extension they cause but to be eligible for treatment it is up to applicant to active this cost-saving by responding within 2 months of the mailing date of the Final Rejection.
When this is done, the “free” response period lapses at the end of 3 months from the mailing date of the Final Action, or on the mailing date of the Advisory Action - whichever is later. further extensions are calculated from the end of the “free” period
in no event can the applicant extend beyond 6 months
Do you have a right to an interview after the First Action?
Yes. you do not have a right to an interview after a Final Action
What is a petition to make special? [700]
Applicant can be considered earlier (cut the line) for a set of special reasons. special status may be granted after filing a petition.
reasons include
NO FEES:
Illness of inventor Environment - will help improve environment Enegery - improves energy usage/supply Age - inventor over 65 Contributes to countering terrorism
FEES:
Infringement - patent needed to stop infringement
Safer DNA
For asking - upon request; have to accept restriction requirements given by office, results of patentability search presented, copy of references w/ discussion submitted.
HIV/AIDS and cancer
superconductivity materials
biotech by small entity
special category added after Aug. 25, 2006:
submit a bunch of shit w/ thorough research. no more than 3 independent claims and no more than 20 total claims.
can an applicant petition to suspend prosecution while there is an action outstanding?
NO. no matter how good the reason is.
Due dates and extension of time under MPEP 710
Basic rules:
- Automatic extensions (no reason or cause required) are available for 1 month, 2 months, 3 months, 4 months, and 5 months. A total automatic extension greater than 5 months is not possible.
- The 6 month statutory time-limit requirement for all responses to Official Actions cannot be extended. A response to every Official Action must be filed within 6 months to avoid abandonment
~~note: the two month deadline for filing an appeal brief is not statutory, and thus the full 5 month extension can be obtained. Likewise, response to a notice to file missing parts can be extended up to 5 months as well.
- Extensions of time are frequently necessary to make an application co-pending with its continuation or division so as to maintain the effective filing date.
4a. Automatic extensions CANNOT be obtained in six circumstances:
- Where the office action so states;
- A Reply Brief (responsive to Examiner answer in appeal and to PTAB and interferences)
- A request for an oral hearing in an Appeal
- Responding to a decision of the Board
- Anything in an interference; and
- Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must be filed before that due date.
4b. Due dates for the following CANNOT be extended even EVEN FOR CAUSE:
- IDSs
- Any due date set by statute (such as the six-month absolute deadline for replying to Official Action)
- The issue fee can now, by statute, be paid late upon a proper showing, but it cannot be extended
- Filing Formal Drawings at time Issue Fee is paid
Extra, Detailed rules:
- All dates are calculated from the mailing date from the patent office which is stamped on the action. The date of receipt by the attorney or applicant is irrelevant to the due date.
- By statute all responses to official actions must be filed within six months from the Patent Office mailing date, but the six month period can be shortened by the commissioner and usually is so shortened. All due dates from the Patent Office are either statutory or non-statutory. Statutory due dates can be extended only if they are shortened form the statutory six-month period and non-statutory dates can be extended unless specifically forbidden to be.
- the patent office has the power to set shorter periods for response (Shortened Statutory Period), and normally sets a shortened period.
- Whenever the patent office sets a shorter period to respond, an automatic extension of time up to five months can be obtained simply by asking and paying the fee, provided of course that, if the response is to in official action, the response must be filed within the statutory six month period.
- Automatic extensions of time can be obtained retro actively
- if the due dates fall on weekends or holidays, the due date is the next business day.
- due dates for a second and succeeding month are still calculated from the original mailing date.
…
- An extension of time cannot be obtained to pay the issue fee. However, the issue fee can be paid late upon a proper showing.
- One month means not less than 30 days. 2 months means not less than 60 days.
Abandonment and Revival Generally
- 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 application cannot be revived
What is a terminal disclaimer
required whenever the term of the patent is calculated from the issue date and not the filing date. applies to all design patents.
might be used if there is a double patenting issue that needs resolved.
Applicants obligations during examiner interview
Even if the examiner does record in writing the substance of each telephone or personal communication, the applicant still has the obligation to do so as well.
Can you get an amendment after notice of Allowance?
Yes
To be entered, remarks accompanying the proposed amendment must state the four whys
- Why the amendment is needed; and
- Why no new search or consideration is required; and
- Why an amended or new claims are patentable; and
- Why the amendments were not earlier presented.
after issue fee is paid, no amendments are allowed.
Double Patenting Restrictions Generally
Double patenting is claiming the same invention or an obvious variant in two separate applications.
Where the inventions are the same, the rejection can be overcome only by canceling the claim or claims from one application.
Where they are an obvious variant and the two applications are commonly owned, the rejection can be overcome by filing a terminal disclaimer so that the two patents expire at the same time and expire if they ever cease being commonly owned
Appeal brief timeline
Appeal Brief must be filed within two months of the date of the Notice of Appeal is received by the PTO
The time period is automatically extendable up to an additional 5 months
Reply Brief to Examiner Answer Timeline and basics
applicant has two months filling the Examiner’s answer to file a Reply Brief, which can now be filed as a matter of right. any extension of time must be for cause under 1.136(b)
If appellant fails to respond to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection.
Response Options for Applicant if Board of Appeals affirms examiner
Request a rehearing within 2 months, or Appeal to CAFC or District Court
Response Options for Applicant if Board of Appeals issues new ground of rejection
This IS NOT FINAL SO NOT APPEALABLE. A rejection cannot be appealed unless it is a Final Rejection or has been made twice.
Submit response and have examiner consider OR request rehearing and address new ground of rejection
Can an extension be obtained to pay the issue fee?
Nah fam. No.
This is a 3 month period after the Notice of Allowance has been sent.
Potential for the issue fee to be accepted late in the event of an erroneous failure to pay. Muse have a petition to accept the fee filed under 1.137 with the 1.137 fee.
Patent Term and Term Extension (MPEP 2700)
For Applications filed on or after the date of June 8, 1995 and before May 29, 2000, the 20 year term may be extended up to five years for delays in the issuance of the patent due to interferences, secrecy orders and or successful appeals to the board of pet appeals and interferences, or the federal courts
~~Applications are not available for PTA if file dafter May 29, 2000
Patent Term Adjustment (PTA) (MPEP 2700)
3 categories when PTA can happen:
- Certain Administrative delays:
-greater than 14 months from initial filing to: Notice of Allowance, first office action, written description requirement, or an examiner request for information
-Greater than 4 months to reply to an amendment or appeal (time runs from the time the appeal brief and fee are received) or
-Greater than 4 months to act after decision by Board or CAFC or
-Greater than 4 months to print patent once issue fee has been paid and all outstanding issues satisfied
(14/4/4/4)!!
2.Overall pendency from initial filing to issue of more than 3 years
~Note: these periods are not counted against the 3 years: time consumed by continued examination under RCE, time consumed by secrecy order, interference, or appellate review, time consumed by applicant requested delays
- Delays to to Interference or Secrecy Orders and Successful Appeals
PTA can be reduced for applicant delays like: not having application ready for examination within 8 months of filing, suspension of prosecution, national stage procedures, etc.
~~Applications are not available for PTA if file dafter May 29, 2000
What is the patent term of a design application?
15 years from issue
MPEP 1400 Correction of Patents Generally
Reissue - A patent which is deemed (incorrectly but in good faith) by the owner to be wholly or partially inoperative or invalid may be reissued
The most common bases for filing a reissue application are: (1) the claims are too narrow or too broad; (2) the disclosure contains inaccuracies; (3) applicant failed to or incorrectly claimed foreign priority; and (4) applicant failed to make reference to or incorrectly made reference to prior co-pending applications.
- if it is broadening claims it must be filed within two years of the issue date of the patent
- an oath or celebration is needed by assignee where no claims are broadened. If they are broadened you need one from all inventors with written assent of assignee
Cerificate of Correction - Mistakes of a clerical or typographical nature, whether by the Patent Office or the applicant, can be corrected.
-If the mistake is by the patent office then this is free
Disclaimer - renunciation of one or more patent claims in a patent. can have a terminal disclaimer as well.
plant patents
all plants are patentable except those which are 1) bacteria OR 2) tuber propagated. (potatoes and Jerusalem artichokes)
The plant must have either been invented or discovered in a cultivated state AND asexually reproduced before filing
The stages of the international filing phase (MPEP 1812)
1 Filing of the international application by the applicant, and its processing by the “Receiving Office”
- Establishment of the international search report by one of the “International Search Authorities” (ISA)
- A preliminary non-binding written opinion sent to the Applicant by the ISA as to novelty, inventive step, and industrial applicability
- Publication of the international application along with the international search report
- (optional) establishment of an international preliminary examination that results in a second written report entitled “International Preliminary Report on Patentability”
notes on dates:
- international search report is established about 16 months from the priority date.
- Publication of the international application typically occurs about 18 months from priority date.
- non-binding written opinion by the ISA is made publicly available at the end of 30 months from priority date
Elements of International Application [1812]
- A request
- Designation of at least one contracting (PCT participating) state
- Name of applicant
- Specification, claim and drawing (if necessary to understand)
- an Abstract
- fee
abstract and fee can be submitted late
(if you filed with a non publication request - you wouldnt be able to file PCT but you can rescind these requests)
A nonpublication request must be made, if at all, at the time of filing an application. By filing a nonpublication request, the applicant is waiving the right to seek foreign patent protection in another country or under a multilateral international agreement that requires publication of applications at 18 months. The application may, however, rescind the previously filed nonpublication request at any time. In order to rescind the nonpublication request, the applicant must both rescind the nonpublication request and provide notice of foreign filing. Specifically, the applicant must, not later than 45 days after the date of filing of a foreign application or international application, notify the USPTO of such filing.
Unity of Invention [1875]
International application are subject to the “unity of invention” standard” of the Treaty
-the international application should set forth claims that relate to only one intention or to a group inventions so linked as to form a single general inventive concept. Unity of invention is present only when there is a “technical relationship” among the claimed inventions involving one or more of the same corresponding “special technical features”
PCT National Phase [1893]
To enter the national stage in the US, the following must be furnished to US patent office by end of 30th month after either the filing date or the priority date - whichever is earlier
- a copy of the international application
- the national filing fee
[CANNOT BE SUBMITTED LATE AND CANNOT BE EXTENDED]
-oath and translation must also be provided to designated office but can be filed later with usual surcharge
what is the term of a US patent granted from a PCT origin application?
20 years from the filing date of the international application. not the date it enters the national phase.
Summary of Typically tested PCT rules [1800]
A. Minimum Parts of International Application
- At least one “applicant” who is a US national or legal resident
- English description
- Request for treatment as an international application
- designation of at least one country (automatic) which can be US
- Abstract (may be submitted later)
Summary of Typically tested PCT rules [1800]
B. Tricky Issues Regarding Initial Filing
- Fee and Abstract may be submitted late
- “Applicant” means inventor OR owner
- Priority claim cannot be added late
- An all-encompassing designation is automatic
- The standard for restriction is based upon unity of invention and the U.S. restriction rules do not apply
