Table of Contents Flashcards
Chapter 700 - Examination of Applicaitons
statutory authority for examination
requisites of the application
search and requirements for information
patentability reports
rejection of claims
examiner’s letter or action
order of examination
suspension of action
period for reply
abandonment of patent application
interviews
amendments, applicant’s action
swearing behind a reference - affidavit or declaration under 37 CFR 1.131(a)
affidavits or declarations traversing rejections, 37 CFR 1.132
prior art exceptions under AIA 35 USC 102(b)(1) and (2)
affidavit or declaration to disqualify commonly owned patent as prior art, 37 CFR 1.131(c)
file wrapper
public use proceedings
trade secret, proprietary, and protective order materials, expunge information
Chapter 2100 - Patentability
patent examination process
patentable subject matter
patentable subject matter - living subject matter
patent subject matter eligibility
guidelines for examination of applications for compliance with the utility requirement
claim interpretation; broadest reasonable interpretation
requirements of rejection based on inherency; burden of proof
product-by-process claims
apparatus and article claims - functional language
material or article worked upon by apparatus
prior art; general level of operability required to make a prima facie case
discussion of utility in the prior art
rejection over prior art’s broad disclosure instead of preferred embodiments
exception to the rule that the critical reference date must precede the filing date
drawings as prior art
availability of a document as a “patent” for purposes of rejection under 35 USC 102(a) or Pre-AIA 35 USC 102(a), (b), and (d)
domestic and foreign patent applications as prior art
“printed publications” as prior art
admissions as prior art
anticipation - application of 35 USC 102
Pre-AIA 35 USC 102(a)
Pre-AIA 35 USC 102(b)
Pre-AIA 35 USC 102(c)
Pre-AIA 35 USC 102(d)
Pre-AIA 35 USC 102(e)
Pre-AIA 35 USC 102(f)
Pre-AIA 35 USC 102(g)
examination guidelines for determining obviousness under 35 USC 103
legal concept of prima facie obviousness
examples of basic requirements of a prima facie case of obviousness
supporting a rejection under 35 USC 103
consideration of applicant’s rebuttal arguments
Pre-AIA 35 USC 103(c)
examination guidelines for 35 USC 102 and 103 as amended by the first inventor to file provisions of the Leahy-Smith America Invents Act
overview of the changes to 35 USC 102 and 103 in the AIA
detailed discussion of AIA 35 USC 102(a) and (b)
prior art exceptions under 35 USC 102(b)(1) to AIA 35 USC 102(a)(1)
provisions pertaining to subject matter in a US patent or application effectively filed before the EFD of the claimed invention
use of affidavits or declarations under 37 CFR 1.130 to overcome prior art rejections
joint research agreements
improper naming of inventors
AIA 35 USC 103
applicability date provisions and determining whether an application is subject to the first inventor to file provisions of the AIA
3 separate requirements for specification under 35 USC 112(a) or Pre-AIA 35 USC 112, First paragraph
policy underlying 35 USC 112(a) or Pre-AIA 35 USC 112, First paragraph
guidelines for the examination of patent applications under the 35 USC 112(a) or Pre-AIA 35 USC 112, paragraph 1, “written description” requirement
the enablement requirement
the best mode requirement
2 separate requirements for claims under 35 USC 112(b) or Pre-AIA 35 SUC 112, second paragraph
subject matter which the inventor or a joint inventor regards as the invention
claims must particularly point out and distinctly claim the invention
relationship between the requirements of 35 USC 112(a) and (b) or Pre-AIA 35 USC 112, first and second paragraphs
identifying and interpreting a 35 USC 112(f) or Pre-AIA 35 USC 112, 6th paragraph limitation
search and identification of the prior art
making a prima facie case of equivalence
determining whether an applicant has met the burden of proving nonequivalence after a prima facie case is made
related issues under 35 USC 112(a) or (b) and Pre-AIA 35 USC 112, 1st or 2nd paragraphs
relationship to the doctrine of equivalents
prosecution laches
Chapter 1800 - Patent Cooperation Treaty (PCT)
basic patent cooperation treaty (PCT) principles
PCT definitions
reservations under the PCT taken by, and notifications of incompatibility made by, the US of A
where to file an international application
applicants and inventors
agent or common representative and general power of attorney
change in or revocation of the appointment of an agent or a common representative
PAIR access
filing date requirements
elements of the international application
PCT member states
earlier search
signature of applicant
the request
the description
the claims
the drawings
the abstract
fees
priority claim and document
international application transmittal letter
license request for foreign filing under the PCT
correspondence
rectification of obvious mistakes
the international searching authority
basic flow under the PCT
the international search
the international search report
written opinion of the international searching authority
sequence listings
unity of invention before the international searching authority
identification of patent documents
taking into account results of earlier searches
amendment under PCT article 19
supplementary international searches
international publication
withdrawal of international application, designations, or priority claims
international preliminary examination procedure
agreement with the international bureau to serve as an international preliminary examining authority
the demand and preparation for filing of demand
filing of demand
preliminary examination fees
correction of defects in the demand
notification to international bureau of demand
priority document and translation thereof
processing amendments filed under article 19 and article 34 prior to or at the start of international preliminary examination by the examining corps
determination if international preliminary examination is required and possible
unity of invention before the international preliminary examining authority
notation of errors and informalities by the examiner
nucleotide and/or amino acid sequence listings during the international preliminary examination
preparation of the written opinion of the international preliminary examining authority
preparation of the international preliminary examination report
withdrawal of demand or election
receipt of notice of election and preliminary examination report by the USPTO
national stage (US national application filed under 35 USC 371)
a continuation, divisional, or continuation-in-part application of a PCT application designating the US
the differences between a national application filed under 35 USC 111(a) and a National Stage Application submitted under 35 USC 371
Chapter 800 - Restriction in Applications Filed Under 35 USC 111; Double Patenting
basis for restriction practice in statute and rules
restriction - when proper
definition of double patenting
effect of improper joinder in patent determination of distinctness or independence of claimed inventions
patentability report practice has no effect on restriction practice
reasons for insisting upon restriction
linking claims
action on the merits
time for making requirement
who should make the requirement
indicate exactly how application is to be restricted
make requirement complete
outline of letter of restriction requirement
election and reply
office generally does not permit shift
treatment of claims held to be drawn to nonelected inventions
claims to inventions that are not patentably distinct in plural applications of same applicant or assignee
unity of invention under the patent cooperation treaty
Chapter 600 - Parts, Form, and Content of Application
content of provisional and nonprovisional application
oaths and declarations
supplemental oath or declaration
substitute statements
applicant
title of invention
filing fee
disclosure (specification, drawing, models, exhibits, specimens, new matter, sequence listing)
Information Disclosure Statement
Chapter 1200 - Appeal
composition of Board
administrative handling
notice of appeal
appeal brief
amendments and affidavits or other evidence filed with or after appeal
examiner’s answer
reply briefs and fee for forwarding appeal
oral hearing
actions subsequent to examiner’s answer but before board’s decision
remand by director or board
Board requires appellant to address matter
decision by Board
procedure following decision by Board
withdrawal or dismissal of appeal
judicial review
