Uncategorized Flashcards
Secondary considerations (3)
1)long time need, 2)failure of others, 3)*meets with great commercial success
KSR Rationales (ones I don’t know)
1) combination of elements in prior art to yield predictable results (at least two pieces of prior art someone of ordinary skill could assemble)
2) substitution of one known element for another to yield predictable results (by one or ordinary skill)
3) using known technique to improve similar devices in the same way (prior art includes comparable invention, someone of ordinary skill would be aware)
4) applying known technique to known device to yield predictable results
Two month rule
Activates free period for later of 1. 3 months, 2. first advisory action
Rights for first action vs. final rejection
first action: interview, amend affidavit
final rejection: no right to interview, amend, affidavit
Two most important automatic extension rules
1)available from 1-5 months, 2)5+ months not possible, 3)six month rule for official actions, 4)2 month deadline for filing appeal brief and response to notice of missing parts all have 5 month extensions
Situations where automatic extensions cannot be obtained
1) Office action states
2) Reply brief
3) Request for oral hearing
4) Responding to decision of the Board
5) Anything in an interference
6) Due dates in reexams
Cannot be extended even for cause
1) IDS
2) Statutory due dates
3) Issue fee
4) 3 month deadline to get refund as large entity
5) filing formal drawings when issue fee paid
Due dates calculated from
Mailing date of patent office, not date of receipt by attorney or agent
When shortened statutory period is there
Auto extension of up to 5 months can be requested, as long as doesn’t spill into 6 month limit
Filing a final rejection to a re-exam
Automatically extends the deadline for response by one month
Petition to revive abandoned
Must have 1)response to outstanding action or 2)continuation
Preliminary amendments
1) may be refused if unduly interfere with prep of Office Action and not filed within 3 months of filing date (not extendable)
2) on or after filing, but before action is issued,
3) filed with CPA if intention to file preliminary amendment in the application
Factors indicative of experimental purpose
see 2100-22 in binder
Steps to determining obviousness
1) Determine scope/contents prior art
2) Ascertain differences between prior art and claims in issue
3) Resolve level of ordinary skill in pertinent art
4) evaluate secondary considerations
35 USC 103 tenets to adhere to
1) claimed invention considered as a whole
2) references considered as a whole and must suggest
3) references viewed without benefit of impermissible hindsight vision
4) reasonable expectation of success
Where undue experimentation factors in MPEP?
2164.01a
Relative terminology - MPEP chapter
2173.05(b)
Basic pre AIA oaths and dec requirements
1) believe are true, original, first inventors
2) have reviewed and understand contents of application
3) acknowledge their duty to disclose known to be patentable
4) state citizenship, resident PO address
5) doesn’t have to be in English
Supplemental Oath
1) can be completed by fewer than all inventors
2) submitted when claims amended to include matter initially disclosed but not claimed
3) is a matter of right, even after allowance
4) no fee needed
Inventor’s Oath/Declaration 4 parts
see 600-7 and ADS parts (37 CFR 1.63)
Substitute statement requirements
600-8, 37 CFR 1.64
What must submit for notice of missing parts?
FOT
Where can essential material (claims and requirements for disclosure) be incorporated from?
1)issued US patent, 2)published application
NOT FROM:
1)foreign patent/application
2)publication
3)US patent which incorporates by ref essential material from another patent
Substitute spec
1) until payment issue fee
2) statement contains no new matter
3) marked-up copy (+’s -‘s)
4) not permitted in reissue/re-exam
IDS
1)Everyone associated with patent
2)All 102 acts, not just patent/printed pubs
Time I: within 3 months or before first Action, IDS only needed (or RCE first action)
Time II: Between First action and final allowance - statement or fee also
Time III: After final action, close of prosecution or allowance but BEFORE payment of issue fee - need statement and fee
*IDS in reissue should be there w/in 2 months of filing
IDS Statement
1) Each item from communication from foreign patent office less than 3 months from IDS
2) No item from foreign office and nothing from any w/duty to disclose more than 3 months before date of IDS
IDS Minimum Content
List of items
Copies of all information submitted (US not needed for published patents and apps)
*Translation not required, but concise explanation of anything not in English
What is deadline for Appeal Brief?
1) 2 months from when Notice of Appeal received at PTO
2) may be different from filing date by certificate of Notice of Appeal
3) Notice of Appeal doesn’t need to be signed/ID claims appealed
4) extendable up to 5 months of course
Requirements of Appeal Brief
1)ID real parties in interest (20 days if change) - otherwise assume listed inventors real party of interest
2)1 month to fix defective briefs
3)Related appeals/interferences (will assume none if not listed) must have:
I. same owner
II. known to appellant
III. relate to Board Decision
4)Claim summary
5)arguments to each rejection w/separate headings
6)appendix w/copy of claims appealed
*No new/non-admitted evidence
Amendment after filing appeal
1) may cancel claims that don’t affect other claims
2) rewrite dependent to independent claim format
affidavits before filing of appeal
1) need showing of good cause
2) overcome all outstanding rejections
3) must be submitted before filing the brief
What can do when get Examiner’s answer?
1) reopen prosecution
2) ask appeal be maintained and respond by filing of appeal brief
What can’t reply brief submit?
Amendments, Affidavits or declarations
Two options for new grounds of rejection in Examiner’s answer?
1) Can reopen prosecution, designate as “new ground” w/Petition and fee
2) Submit reply brief with appropriate argument, no petition needed
Oral Hearing
1) requested w/2 months of examiner’s answer, and usual fee paid
2) Deadline only extendable for cause
Reply brief
1) 2 months following Examiner’s answer
2) Extensions for cause
3) Board takes jurisdiction following filing or period for submission expires
4) forwarding fee due regardless of whether brief is filed
Upon remand, examiner may?
1) Submit Supplemental Examiner’s answer
2) Applicant may then reopen prosecution
What can applicant do if board issues new ground of rejection?
1) Submit amendment for reconsideration (can appeal decision)
2) have new rejection reconsidered
3) two month limit for rehearing or having new rejection designated as such
4) Can abandon app and file continuation at any time
5) withdraw appeal -abandon app
6) CAFC, District of Virginia
Affidavits after Notice of Appeal
1) Not admitted without showing of why not earlier presented
2) must overcome all outstanding rejections
Oral argument before Board of Appeals must:
1) Writing by applicant
2) Fee paid
Chart, 1200-5
1) Fee required for Notice of Appeal
2) Reply brief - 2 mos. as matter of right, forwarding fee
3) Request oral hearing - w/in 2 months + fee
4) Board decision - 2 mos. request rehearing
5) Appeal CAFC - 2 mos. + fee
6) Request for rehearing - 2 mos. + fee
MPEP 1812 dates
1) ISA report - 16 months from priority date
2) publication international app - 18 months from priority date
3) written opinion of ISA 30 months from priority date
* 4)Optional prelim. exam - demand from latter of 3 months of issuance of ISA, or 22 months from priority date
Requirements to enter national stage of US
1) Fee, 2)Translation, 3)Oath/Declaration (FOT)
- fee/application by 30 months of priority date
- oath can be made 1 month later w/fee
Elements of international apps
1)request
2)designation one contracting state
3)Name of applicant
4)spec drawing
5-6)Abstract/drawing can come later
MPEP 1821
1) Request has title of invention and ID’s applicant
2) Applicant - inventors and owners
3) Receiving office of international app must have at least one applicant that is a resident or national
4) No US - then can file without naming inventors/getting their signatures
Designation of contracting state
Requires no fee
Priority Claim
1) before 16 months after priority date, certified copy must be submitted to IB or RO
2) w/in 4 months of international filing date
3) PLTIA reprieve
Article 19 amendment to claims before international application publishes
1) one chance
2) IB and language of country
3) Must have received ISA/written opinion
Article 34 amendment
Until 22 months after priority date or 3 months after date of mailing of ISA search report/opinion whatever is later.
*Once in national stage - can amend in US as in normal prosecution
*Requirements for National Phase
1) by 30 months after filing/priority date (whatever is earlier)
2) copy international app + fee
* Can’t be submitted late/deadline extended
Oath translation can be given later w/surcharge
PCT app having IA filing date prior to 11/29/00
1) pre AIA 102e art, once patent based in I.A. has issued
2) FOT must all be received by patent office
3) DUSE rule after 11/29/00 (designate US, publish in English) - international filing date of IA
Term of PCT originated US patent
20 years from filing date of international application (not national stage date)
Minimum parts of PCT for US
EAR-PD 1)English description 2)at one application who is US national/resident 3)Request for treatment as int'l app 4)Priority claim 5)designation of one country - US *Spec, claim drawing Abstract can be submitted later
Tricky issues
1) fee/abstract can be submitted late
2) applicant means inventor/owner
3) priority claim cannot be added late
Post AIA PCT
1) Doesn’t have to publish in English
2) prior art as of its effective filing date
*Filing international app
No later than 12 mos. from priority date
PPH
1) same earliest filing date as intrn’l app
2) one claim allowed and all claims must sufficiently correspond
3) substantive examination of US app has not begun yet (notice missing parts/restriction doesn’t count)
Inter Partes Review
1)not patent owner
2)Cancel as unpatentable one or more claims
3)102 or 103, only prior patents and printed publications
4)Timeline:
9 months after grant of patent or termination of post grant review
5)If used for infringement can file IPR too, within one year of being served lawsuit
6)reasonable likelihood standard for at least one claim
7)estoppel with regards to that claim or any ground petitioner could have raised
Post grant review
1)not owner of patent
2)102, 101, 112, not failure to comply with best mode
3)”more likely than not” at least of the claims is unpatentable standard
4)infringment enacted w/in 3 months of patent grant, will not stay bc post grant review enstated
Timeline:
9 months after patent grant or issuance of reissue
5)Estoppel exists
Covered Business Methods
1) If party sued for infringement/charged with it
2) data processing for finance, but not technological innovations
IPR, PGR, CGM chart
pg. 15
Derivation
1) particularity, oath, substantial evidence
2) *Must be within 1 year of publication of claim
3) ID which app disputed & affidavit of communication of derived invention
4) can appeal to federal circuit
PLTIA
December 18th! 2013
1) spec only required
2) restoration of patent rights via abandoned apps/acceptance of delayed maintenance fee payments
3) restoration w/in 2 months of expiration of 12 month period, as long as unintentional (applies to anything)
4) by reference allowed, treated as notice of missing parts
SME: Natural Phenomena
pg. 39, 4 of them
SME: Abstract ideas
pg. 39 list
SME: What is or is not enough for judicially recognized exception
pg. 40, two lists (abstract!)
SME chart
page 60
Protest
1) member of public against pending app
2) Entered in record if a)served upon applicant, b)protest filed prior to date of allowance or published, whichever is first
3) if allowed by applicant will be matched for prosecution
Third party submission
1)third party submit patents, published patent apps, other pubs, to pending app w/concise explanation
2)later of 6 months after date of pub and date of first office action rejecting any claims on the merits or
before date of notice of allowance
Supplemental Exam
1) Sept. 16, 2012
2) patent owner to correct things
3) SNQ
4) w/in 3 months of receipt office will conduct SNQ and ex parte exam will be ordered
Citation prior art in patentented file
Sept 2012 - can include written statements of patent owner
Ex Parte Reexam
1) Any person
2) SNQ + fee
3) No claim broadening, auto ext. of time not allowed
D/C Inter Partes Reexam
Ends Sept. 15, 2012
1) estoppel for issues brought up during review for 3rd party
2) have appeal rights
General rules about secrecy
1) unpublished pending, abandoned in confidence
2) Issued patents and published applications available any member (obviously)
3) Reissue/reexams involve issued patents so avail. to public
Express abandonment
May need petition and 4 weeks (37 CFR 1.138)
When is interference public?
If unpublished app vs. issued patent:
Available if:
1)interference is *terminated
2)priority award has been made
When is status provided?
1) Access obtained
2) app ID’s by serial number/filing date in published doc, or US app open to public inspection
3) App in the national phase of PCT, where US is receiving state
*Written request and copy of doc needed for patent doc, but NO FEE?!
Who can access file?
1) Inventors, even if assigned interest
2) Inventors in app, even w/o their signature
3) Assignee
4) Attorney, agent or anybody with written authorization
Exceptions to access unpublished abandoned application
1)not petition/service, just written request
A)referred to in US patent/published app
B)referred to in US app open to public inspection
C)referred to in PCT which designates the US
How access unpublished, pending apps?
1)petition filed + fee paid
2)Special Circumstances petition needed owner using patent to interfere w/competitor’s business.
A. petition to owner
B. extra copy to Patent Office
C. objection can be raised
3)Patent relies on app for priority
4)app incorporated in its entirely by reference into a patent or published app
5)if pending app incorporated in part - only get access to specific part w/o notice and service
Foreign filing license
1) In made in US, must get FFL before patenting in another country
2) 6 months pass since US filing (includes provisional)
3) Granted on filing receipt
4) Petition
* If another country (even American), no license needed
* Retroactive license possible through petition
* If US patent issues w/o foreign license, for foreign patent filed, US patent becomes illegal
National vs. national stage
National stage - unity of invention, must have fee and oath/dec to get filing date
National - can get filing date w/o Oath or Dec, sent Notice of Missing parts
Post AIA - 1.48 inventorship correction rules
Non provisional
1)signed ADS, ID’s each inventor by legal name, address
2)fee
Oath?
Provisional
1) Request to correct inventorship
2) fee
Elements of provisional app
MPEP 201.04(b) (ADS, drawings, spec, fee). 200-5.
Substitute app
1) same disclosure as earlier app
2) not copending, not continuing
3) no priority to previous app, common inventor
1.53(d)
CPA - design only, death of parent
PLTIA reference filing
Can access foreign app by country, serial number, filing date..
1)complete certified copy of reference filing must be submitted by 4 months of filing or 16 months of original ref. filing date
Foreign priority
Does not count in patent term, nor provisional app
Formal requirements for obtaining foreign priority
1) file claim - ask for benefit of foreign ADS
2) file certified copy of original foreign app
Timing for claiming domestic/foreign priority
USC 119, 120, 121, 365
16 months from claimed priority date
4 months from application filing date
-whichever is later
*Requirements for recording
MPEP: 302.02, 03, 01, 07 1)English or w/English translation 2)Patents/apps by number, assignments by date/exec of oath/dec, name of inventors, title of app Prov - title of app/name of inventor 3)Fee 4)Legible and one side of paper 5)Original or certified copy 6)Cover sheet *302.07 - all requirements right here!
Assignment carry over…
All apps, continuations, divisionals, but NOT CIP’s
2nd buyer takes title to patent over first if:
1) first buyer fails to record assignment w/in 3 months or prior to second assignment, whichever is later
2) 2nd buyer took for consideration
3) 2nd buyer did not know of first sale
* does not apply to licenses
Power of Attorney
1) Only individuals, not firms
2) PTO Customer number or list of practioners, not both
3) Rule 11.18b
Revoking
1) mere recording does not revoke
2) effective date received at PTO
Withdrawal
- 06
1) reasonable notice to client
2) delivered all papers
3) notified of anything due and time frame
hostile inventor
1) Assignee - proof of interest, sub. statement
2) Sufficient interest - sub statement, petition, fee, proof of interest
Dead/incompetent before/after filing
Before filing:
- oath/sub statement by someone who steps into inventor’s shoes
- someone must sign oath/dec
After filing:
- need new power of attorney, unless coupled with Interest/Notice of Allowance
- requirement for Supplemental oath can be waived
Rights of assignee
1) revoke power of attorney
2) exclude inventors to file
3) must establish title or refer to recorded assignment
General receipt rule
Day received by patent office
Fascimile Exceptions section
MPEP 502.01/502.02
CPA fax rule
is okay, but subject to EST
Signature req.
- S-sig (combo letters, numerals)
- EFS character coded sig
- wet sig only when paper version of credit card form
- handwritten (copy or photograph)
Incomplete App
Spec, claim, drawing (pre-PLTIA)
-FOT, signed ADS, need not be in English (notice of missing parts)
Calc of filing fees
1) fee for filing, searching, examination
2) surchages for more than 3 independent claims, claims in excess of 20 (ind. or dep.)
3) MDD’s
4) spec drawings over 100 pages long
5) late filing oath or dec or filing fee
Small entity status
- 02
1) Independent inventor - no relation to someone who is s small entity (even group even 1 is enough)
2) Non-profit org
3) Small biz concern
4) No more than 500 (pt, or other included) or associated with someone who is small entity
Micro entity status
1) neither applicant or inventor on 4 patents (doesn’t count if last place of employment)
2) not more than 3x median household income (or greater than 150,162)
3) higher ed employment or assigned to higher ed
Small Entity Fee Exceptions
1) Petition and processing fees
2) Document supply fees
3) Certificate correction (no fee for Patent office mistakes)
4) Request for re-exam
5) PCT fees
Exceptions to certificate of mailing
1) New patent apps
2) Papers files interference
3) agreement settling an interference
4) Any PCT papers
Express mail procedures
Post office to Addressee Express Mail:
- Express mailing label number
- Certificate of Mailing
- “Date in” taken as filing date
Process and apparatus are distinct if:
1) process claimed can be done by another materially different apparatus
2) Apparatus can practice another process
Apparatus and product distinct if:
- 05(f)/(g)
1) Apparatus not obvious apparatus for making product and can be used for others
2) product claimed can be made by another, different apparatus
Double patenting
1) claims match - not terminal disclaimer
2) obviousness - terminal disclaimer
Standard for correcting substantive mistakes
1)unintentional/unavoidable, 2)without deceptive intent
Reissue limits
1) Invalid if not enabling or does not disclose best mode
2) only patent owner
3) must have mistake
4) any prior art may be considered
Complete reissue requirements
MPEP 1410
- offer to surrender original patent grant
- written consent of assignee
- copy spec, claims, with material being deleted bracketed, added underlined
- FOT
Oath - must declare something is defective
Restriction in reissue
MPEP 1451
- Can’t restrict in reissue
- separate patents issues where original patent contains independent and distinct inventions
Design patent features
- 01
1) single claim
2) “ornamental design….as shown”
3) ornamental, not secret devices
4) preamble needed (inventor’s name/title)
5) no main. fees
Double patenting in design apps
1) two design apps
2) design and utility
Color drawings
- 152(a)(2)
- fee/petition
- three sets color photographs
- “file has one in color..copies in color provided upon request”
Design vs. Utility
1) no PCT in Design
2) Six months foreign priority
3) No provisional
4) six months preAIA 102d
Plant patents
1) Not bacteria, tuber propagated (potatoes, Jerusalem Artichokes)
2) Two color copies, one B/W
3) Must be asexually reproduced (not from seeds)
Who/when re-exam
1) Anybody
2) Until six years after patent expired
Scope of information cite in patent file
1)patents
2)printed pubs
3)written statements of patent owners
Citation prior art - only issued patents?
Patent owner statements for citation prior art req.
1) forum/proceeding patent owner filed statement
2) specific papers/portions that have that statement
3) how each statement is one where patent owner took position on a claim
4) relevance in writing
Reexamination
MPEP 2214
1) Anybody can file
2) statement for each SNQ
3) Id claim, explain art around claims
4) copy every patent/pub relied upon
5) copy spec, claims
6) certificate patent owner served
If SNQ (re-exam)
1) patent owner has 2 months to respond
2) 3rd party requestor can respond to statement
3) then ex parte prosecution examiner and patent owner (3rd part cannot participate!)
4) At conclusion, Reexam certificate canceling, confirm, adding claims
Re-exam testable points
1) 3rd party who initiates cannot participate unless inter partes reexam
2) auto extensions not available, only for cause and petition fee
3) no continuations, cannot be withdrawn or canceled after filing
4) new claims can be added, but not broader ones
5) final reject appealed by patent only BUT NOT third party
6) reexam can be revived if unintetional
7) Appeals can only go to CAFC
8) Intervening rights exist?
Inter partes re-exam vs. review
D/C Inter partes re-exam, no there after Sep. 16, 2012.
Inter partes review applies to any patent regardless of filing date.
Not usable in re-exam
Never sale, or insufficient disclosure
Reissue vs. Rexam
Reissue is ONLY the owner
Interference
1) needs one app to have priority to document with filing date of 3/16/13 or before
2) can initiate by copying claims from another app into your app, but must ID specifically and w/in one year of its publication
3) never two patents, one must not have issued
4) loser loses the count
Biotech
if hard to reproduce, etc., then deposit at IDA or PTO permanent depository will suffice
Maintenance Fees
1) 3.5, 7.5, 11.5 years
2) Maintenance fees for reissue and reexam based upon utility app schedule
3) Patent lapsed, can be revived after 6 months, was untintentional
4) Design/plant patents do not have maintenance fees, design patents have a 14 term
5) 24 month, for late payment, along w/possibility of intervening rights under PLTIA
Supplemental Examination
1) patent already issued (any)
2) patent owner only
3) remove errors/omissions lead to inequitable conduct
4) PTO looks at within 3 months for SNQ
5) Ex parte reexam
6) estoppel for later questions of inequitable conduct
7) risk loses patent rights under SNQ or some claims under ex parte reexam
Content of supplemental examination
MPEP 2811
*37 CFR 1.610(b)
IDA
1) Date of intn’l registration - filing date of IDA or date of any mandatory content if date later than filing date
2) USPTO will examine IDA designating US based on published registration from IB
3) Only one independent and distinct design + period of up to 6 mos. for security clearance
4) At least one applicant must be national of US, or domicile in US than US contracting party (USPTO office of indirect filing)
USPTO as office of indirect filing
1) accepts international design apps
2) receive record receipt date (or any indirect intn’l office)
3) collect fees
4) compliance
5) transmit to IB
IDA transmitted to IB
1) NOT if fee not paid
2) NOT if national security clearance obtained
3) If all fine, reg. date of filing is indirect office in US
IDA filed directly at IB
1) date complete application received or when it is fixed
2) 3 months to fix irregularies on pages 2900-7/8
International registration
1)Upon receipt of app in Geneva Basic app includes: 1)ID inventor 2)brief description of design 3)a claim
Int. filing date vs. Intn’l reg. date
1) US filing date is “intn’l regis. date” (complete app in Geneva, contracting party receipt date)
2) Intn’l Bureau date is “international filing date”
IDA must include
2909
1) request in’l design regis.
2) ID of applicant
3) What design is
4) Description in terms of industr. design classification
5) designation contracting party
6) fee
US adds:
1) claim
2) ID inventor
3) Oath
Misc IDA
1) Notification of refusal like “official action”
2) After May 13, 2015 - new term is 15 years
MPEP 1000
To whom decisions/director delegated to
SIR
not enforceable, 102a block (1100)
Pre-grant pub
MPEP 1120-1130
1100-2/3
Opting out - if no app in another country with 18 month publication can request it won’t be published
-may rescind at any time
Issue fee extension
1) Petition must be filed
2) Filing of drawings (cannot be accepted late)
Withdrawal from issue
1) Prior to payment of issue fee
2) Petition of the applicant
3) Continuation before issue fee due, and parent abandoned
AFTER ISSUE PAID can be withdrawn by PTO for:
37 CFR 1.313
1)mistake by PTO
2)Violation duty to disclose
3)Unpatentability of claims
4)Serious question of patentability not enough
5)An interference
BY APPLICANT after issue w/fee and petition:
1) **abandonment to consider an IDS in a continuing application or RCE
2) Unpatentability of claim
Patent term and extension
MPEP 2700, dates for extra 5 years
Periods not counted against three years (PTA, initial filing to issue):
1)time consumed by continued exam and RCE’s
2)secrecy order, appellate review
3)applicant request delays
PTA dispute
1) Within 2 months
2) Final determination to Virginia court w/in 180 days.
Provisional Rights
1) Between date of pub and date of grant (122b)
2) Owner had actual notice of published app
3) patent claims substantially identical
Protests
1901, 37 CFR 291
1) anybody
2) timely/served on applicant
3) copies, translations, concise explanation
4) no fee
5) protestor cannot participate in prosecution
6) raise new issues/new art
*Third party submissions
1) patents/printed pubs
* Three dates are the last deadline to file:
1) date of notice of allowance
2) six months from date of first pub from PTO
3) date of first rejection any claim by examiner
- No limits on number of submissions
- patents/relevant printed pubs
- Must be fine by 35 USC 122e or barred
- If compliant with 35 USC 122e, but issues with 1.290 that are minor, may be able to get it through
Preissuance (Third party?) req.
1) List ID items to be submitted
2) In writing
3) Concise descrip
4) copy each document (US)
5) Eng translation
6) Submission compliance statement
7) Not an individual with duty to disclose statement (1.56)
Fee unless
1) First only submission under 122e
2) 3 or few total items
Duty to disclose
everyone, not just those under oath, has anything to do with patent, but not corporations
Material
1) case for non-patentabilty
2) inconsistent with something opposing or asserting patentability at patent office
