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Published by: Verena Streber on Dec 15, 2010
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35 USC 102

35 USC 102(a)

35 USC 102(b)

35 USC 102(c)

35 USC 102(d)

35 USC 102(e)

35 USC102(f)

35 USC 102(g)

35 USC 101

35 USC 112

Prior art includes: - patent for the same subject matter anywhere in the world - public knowledge in the US only o must be used in this country - publication anywhere in the world - use by others in the US only refers to different inventive entity

For anticipation: Reference must teach every aspect of the invention – either explicitly or impliedly

- abandoned inventions will be rejected - if invention abandoned cannot be patented later o ie – if 10 yrs pass w/out filing o delay in making first application is not sufficient to determine abandonment

- if patent or publication printed or issued more than 1 year or public knowledge or use in US = rejection - Statutory bar – inventor discloses work more than 1 year before obt. Patent - Experimental use doesn’t bar a patent but commercial exploitation is incidental

Patent was filed by another with an earlier filing date - doesn’t apply to apps filed before 20 NOV 2000 - to qualify as ref: US patent, US app or WIPO publication of international app - International app o In filing date after 20 NOV 2000, designate US, publish under PCT Art21(2) in English - (g)(1) conflict w/ priority during course of an interference - (g)(2) invention made in this country - US – 1st to invent rather than 1st to invent - Constructive reduction is date of filing at PTO - Actual reduction – sufficiently tested to its intended proven purpose - Diligence – time b/w actual red and disclosure Enabling disclosure o Enablement found in specification o Must be consistent with published info - Best mode o To restrain inventors to conceal preferred embodiments o No requirement to update - Dependent claim can’t be broader than claim it depends from - Claims limitation must use “means for” or

person entitled to patent unless invention 1st patented or subject of invention certified by app., legal reps or assigns >12mths before in US - 4 conditions o More than 12 months filing of foreign app o Foreign filed by same US app o Must be granted before US filing date o Same invention must be involved
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- if subject matter invented by someone else and not inventor(s) listed - inventor listed must be those exactly those that invented work - no requirement that inventor be the one to reduce to practice as long done on their behalf

- inventions will be granted for “any new & useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” - Rejections based on lack of utility o Any substantially unaltered thing occurring in nature o Printed matter o A scientific principle divorced from tangible structure o Mathematical discoveries not

“step for” patentable ACCESS AMENDMENTS APPLICATION TYPES NONPROVISIONAL APPLICATION PROVISIONAL APPLICATION CONVERSION OF NONPROVISIONAL TO PROVISIONAL APPLICATION CONVERSION OF PROVISIONAL TO NONPROVISIONAL APPLICATION CONTINUATION APPLICATION .

53(c)(2) and a fee The nonprovisional will become a provisional application and will keep the original filing date to the nonprovisional - Contains no claims Is abandoned after 12 months No oath or declaration is required .R.F. Registrations o All reissue applications o All requests for re-exam.34(a) Assignee of entire interest or all assignees of partial All applicants New matter includes: Matter wholly unsupported by original disclosure Adding specific %s or compounds when original was broader Omission of a step from a method Files open to public Issued patents or stat invent. or papers related o Files of any interference Pending or non-published abandoned patents may be viewed by o No members of the public  confidential o Any of the inventors except in cases where assignee requested otherwise o Any assignee. any license of entire interest o Any attny/agent of record or authorized by inventor o Contains at least 1 claim Is NOT abandoned after 12 months Requires an oath or declaration - Nonprovisional Provisional Conversion of nonprovisional to provisional application Conversion of provisional to a nonprovisional Continuation Application Continuation-In-Part Application Continued Prosecution Application - Requires a petition under 37 C.CONTINUATION-IN-PART APPLICATION (CIP) CONTINUED PROSECUTION APPLICATION (CPA) o o o o o o o Must be signed by Attorney or agent of record Registered attorney or agent acting under 37 CFR 1. 1.

old material will have date of original application 1st app must be copending CIP contains new matter over – some substantial portion of all earlier apps repeated Fresh set of papers w/ oath must be sent Filed before parent app becomes abandoned Filed under 37 CFR 1.If examiner rejects 1 or more claims filed in original app – continuation may be filed w/in 3 months of rejection o Requires new fee & newly written claims & receives new filing date o No new matter is accepted Must be filed during pendency of parent Need only have one inventor in common - - Continuation application of prior nonprovisional app claiming a design may be filed as a CPA CPAs filed under 37 CR 1.53(b) CERTIFICATE OF CORRECTION DESIGN PATENTS DUTY TO DISCLOSE INVENTORSHIP MAILING ISSUE FEE CERTIFICATE OF TRANSMISSION .53(d) o Have same serial number as its parents o Cannot be filed for provisional apps o Can be filed for PCT apps in national stage - - - In case of a successful conversion – only one app & that app has single filing date – date of provisional app Conversion will adversely impact on the term of any patent to issue from the application Conversion will result in the term of any patent to issue from app to be measured from at least the filing date of the provisional app o Can avoid by filing nonprovisional app claiming benefit of provisional app under 35 USC 119(e) If inventor makes improvements after they file original app  may file CIP to cover improvements New material will have new filing date.

reg practitioner.MAILING CERTIFICATE OF MAILING MAILING EXPRESS MAIL MAILING MAINTENANCE FEES HAND DELIVERY - - Term is 14 years from date of grant There is no maintenance fee Only one claim is present Distinct invention is mandatory May not file under PCT Period of foreign priority is 6 months May not file a provisional application - Inventors may apply for a patent jointly even if: o They did not physically work together on invention or they did not work at same time on invention o They made unequal contributions.324 & fee 2 statutory requirements o Applicant’s mistake (clerical or typo) o Correction must not involve changes that constitute new matter All information material to patentability of invention must be disclosed to Office w/ candor & good faith Rules governing duty o Info includes more than just patents & printed publications  all presently known info o Exists until app becomes abandoned o Exists even after patent is issued Who had duty to disclose? o Each inventor. petition under 37CFR 1. assignee. prior app ID’d elsewhere. every other person involved in prep of patent o . meant they each made different claims (so long as they pertain to the same invention) - - When to use Through error w/out deceptive intent – failure to make reference to prior copending app & failure doesn’t affect what is claimed but ref in a record of application o Error w/out deceptive intent.

00 Grace period of 6 months (4yrs. whatever day of the week that may be Correspondence must state “Express Mail Post Office to Addressee” o Service must be provided by US postal svc o “date in” must be entered by the USPS and the mailing label must be completed by the USPS Required on all patents issued after 12 DEC 1980.00 o 7yrs & 6 month after grant $1.900. never on the date it is received Must be addressed correctly with enough postage for 1st class mail & must include a signed dated certificate of mailing with each piece of correspondence Listed Only certain types of correspondence may be sent via a Certificate of Mailing - - - May be used for any type of correspondence It will be considered filed on the date of the deposit. 8yrs & 12yrs) When paying during 6 month grace period. when received o Faxes can’t be used for anything to obtain an app filing date o Individual may state the date on which the paper will be transmitted Time period for payment of issue fee is statutory and cannot be extended o Fee can be paid late but app will have become abandoned during time period Possible to withdraw from issue & then file continuation application 37 CFR 1. you should receive a receipt back for the papers as proof of their delivery NEW MATTER PATENT TERMS .910.Must accompany a facsimile and is used as proof of establishing when fax was received by PTO o PTO will date stamp corres.137 discusses paying issue fee late o Same procedure as reviving application o States app is basically abandoned & will have to be revived  Prove unavoidable or unintentional delay Date is based on date correspondence is sent.00 o 11yrs & 6 month after grant $2. there is a surcharge required in addition to the payment of the maintenance fee - Hand delivery is only available during Office hours. except design or plant patents Fees are due at 3 time periods thru patent life o 3yrs & 6 month after grant $830.

claims.PROTEST SMALL ENTITY STATUTORY INVENTION REGISTRATION PETITION TO MAKE SPECIAL CLAIMS CLAIMS DEPENDENT CLAIMS DEPENDENT CLAIMS - Utility and plant patents filed after 8 JUN 1995 o Term ends 20 yrs from date of patent app filed Design patents end after 14 years – term begins on date patent issues Continued prosecution application (CPA) – will have same app # and filing date of parent Reissues – term is unexpired part of parent - Matter not in original specifications. or drawings is usually considered new matter Where new matter is confined to amendments in the specification a review of the examiner’s request for cancellation is by way of petition Where alleged new matter is introduced or affects the claims. thus necessitating their rejection on this ground. the question becomes an appealable one .

or .- - - - Small entity receive a 50% reduction in certain fees o Owner or officer of app may sign statement for this not attorney Those who qualify o Independent inventors (w/ no assignment) o Small businesses (less than 500 empl.28(a)(b) with in 3 months DO NOT require fee to make special o Illness/health of applicant o Age of applicant o Environmental contributions o Enhancement of energy sources DOES require fee to make special o Prospective manufacture Infringement o Safer DNA – HIV/AIDS and cancer o Superconductivity . refers to another preceding claim Since independent claims are broadest claims – broadening of dependent claim cannot broaden scope of invention Lesser burden of proof may be required to make out prima facie obviousness for productby-process then when product is claimed in conventional fashion . even mere fact that such app exists Protest must be submitted prior to mailing of a Notice of Allowance  application must be pending when examiner receives the info - Original SIR can be abandoned and replaced by a continued application o In this case. and) Each claim should begin w/ a capital and end with a period (only 1st word capitalized) o o o Rules Placed at end of specification If more than 1 – separate by line of indentation Arranged in order of scope – 1st is broadest Claims of like species should be grouped together Process & product claims need to be separately grouped Any measurements – Metric 1st then English May contain tables if necessary o o o o - - RULES Dependent claim must further limit the subject matter of a previous claim o No minimum or max # of dependent claims o Dependent claim may refer back to any preceding claim.countering terrorism o Biotech apps filed by small entiies o All other instances where petition to make… o o o o o - Any member of public may submit a protest & attorney may file protest w/out naming client Unless a protestor granted access to original app – protestor not entitled any info from PTO. separates each paragraph Last step should have an “and” after the semicolon (. from the dependent claim o Series of singular dependent claims is allowed where a dependent claim refers to preceding claim.) o Nonprofit organizations Request refund based on change in small entity status – petition under 37 CFR 1.may be a string of these o Claim depending from a depending claim should not be separated from any claim which does not also depend (directly or indirectly). which in turns. applicant will get the earlier filing date o Applicant must file an express abandonment of the original application and a timely request or petition to withdraw the request for an SIR prior to the publication of the SIR - Grammatical Rules Claims should begin with “I (or we) claim” or “The invention claimed is” Claim is divided by a colon (:) which generally describes things or steps Either .

MULTIPLE DEPENDENT CLAIMS MULTIPLE DEPENDENT CLAIMS MULTIPLE DEPENDENT CLAIMS CORRESPONDENCE MARKUSH CLAIMS ESSENTIAL MATERIAL ESSENTIAL MATERIAL PRIOR ART Enabling References PRIOR ART Prima Facie EFFECTIVE FILING DATE Continuing or divisional of earlier US application EFFECTIVE FILING DATE Continuing or divisional of earlier international application .

foreign patent. commonly owned US app Level of disclosure required w/in a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue Does not matter whether prior art ref is a US patent. may be incorporated by ref if it’s o a US patent o a pending US application o an abandoned app less than 20yrs old – to same extent as a copending app o - - Where claimed and prior art products are identical or substantially identical in structure or composition. a printed pub. or are produced by identical or substantially identical processes  prima facie case of either anticipation or obviousness has been established - Material NOT allowed to be incorporated by ref in US utility application includes: o Essential material from foreign patent or app o Matter from a magazine article o A US article that incorporates the material from another patent by reference Nonessential material is background material – may be incorporated by reference from o Patents or apps published in the US o From publications or foreign patents o From a prior filed. B. C and D o “chosen from the group consisting of” and “chosen from the group consisting of essentially of” o Material is considered necessary if it: Is necessary to describe the claimed invention o Provides enabling disclosure of the claimed invention o Describes the best mode Essential mat.Series of dependent claims that refer back in the alternative form to more than 1 preceding independent or dependent Determining fees – count up all dependents o Claim 2 depend from 1 = total of 2 o Claim 3 depend from 1 or 2 = total of 3 o o o o o o o Correspondence will be held with the listed attorney or agent An application number must be used to identify a patent application in all correspondence Rules governing May only refer to one set of claims Cannot depend on another multiple dep clm Cannot depend on more than 1 previous May not serve as basis for multiple dep clm Will not contain limitations of all alternate claims Must be considered in same manner as plurality of single dep claims Restriction may be required b/w embodiments of multiple dependent claim Acceptable form of alternative expressions Always contains the phrase “consisting of” and the conjunctive “and”  They never contain “or” Example o R is selected from the group consisting of A. or other form Reference contains an enabling disclosure if public was in possession of the claimed invention before the date of the invention Shows that app’s invention is not novel and is anticipated tf will be rejected .

- Same as the earliest filing date in the line of continuing or divisionals - Same as the earliest filing date in the line of continuing or divisional EFFECTIVE FILING DATE CIP or earlier US or international app EFFECTIVE FILING DATE Applications claiming foreign priority EFFECTIVE FILING DATE Application claiming priority to a provisional application REJECTION ON PRIOR ART 102 vs 103 OVERCOMING REJECTIONS 35 USC 102(a) OVERCOMING REJECTIONS 35 USC 102(a) OVERCOMING REJECTIONS 35 USC 102(b) OVERCOMING REJECTIONS 35 USC 102(b) .

132 that ref invention is not by “another” o Filing affidavit under CFR 1. although the foreign filing date may be used to overcome certain applications) - New claims in the CIP have the filing date of the new application Claims supported by the earlier parent application will receive the same filing date as the earlier application - 35 USC 102 – focuses on the novelty and loss of right to patent o Claim is anticipated by reference 35 USC 103 – refers to nonobvious subject matter o References must be modified in order to meet the claims Can be overcome by: Perfecting a claim to priority under 35 USC 119(a)-(d) o Amending the claims to be patentably distinguishable over the prior art o Persuasively arguing claims are patentably distinguishable from the prior art o Filing affidavit under 37 CFR 1. or in public use o Public use must be in the US o Foreign sales do not count 1 year time bar is measured form US filing date Market testing is not proper exception to bar Experimental use does not bar a patent ∆ b/w 102(a) – relates to invention date & - - - - .OVERCOMING REJECTIONS 35 USC 102(c) OVERCOMING REJECTIONS 35 USC 102(d) - Same as the filing date of the US application (the filing date of the foreign priority document is not the effective filing date.131 to “swear back” Persuasively arguing that the claims are patentably distringuishable from the prior art Amending the claims to be patentably dinstringuishable from the prior art Perfecting the priority o Amending spec to contain specific reference to prior application o Filing app data sheet contain specific reference to prior application Has to be at least 1 intermediate application between provisional & nonprovisional o Filing date of the provisional application - - A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country before the invention Applies when the reference has a publication date earlier than the effective filing date & it is not the applicant’s own work Asks if the invention was public or patented anywhere else in the world Ask if it was on sale in this country.

suppresses or conceals the invention OVERCOMING RJECTIONS 35 USC 102(e) OVERCOMING REJECTIONS 35 USC 102(e) For a reference based on a regular US application filed with no claims for benefit or priority: What is the 102(e)(1) date? What is the 102(e)(2) date? For a reference based on a regular US provisional app with a priority/benefit claim under 35 USCC 119(e) or 120 to a prior US provisional or nonprov app: What is the 102(e)(1) date? What is the 102(e)(2) date? .102(b) – relates to filing date - Establishes 4 conditions Foreign app must be filed more then 12 mths before effective filing date of US app  Continuation-in-part breaks chain of priority o Foreign & US app must be filed by the same applicant. legal reps or assigns o Foreign app must have actually issued as a patent or an inventor’s certificate o Same invention must be involved Cannot filed an app if have foreign pat for >1yr o - Where the invention becomes abandoned If it is abandoned it cannot be patented Abandonment must be a deliberate surrender of patent rights o Does not have to be expressly abandoned o It can be expressed or implied either by actions or inactions of the inventors A mere lapse of time will not bar a patent o Exception is when there is a priority contest under USC 102(g) & applicant abandons.

designates US but not published in English under PCT Art 21(2)? What is the 102(e)(1) date for an int. designating the US and published in any language under PCT Art 21(2): What is the 102(e)(1) date for an int. Filing and affidavit or declaration under 37 CFR 1. designates the US and is published in English under PCT Article 21(2): What is the 102(2)(1) date for an int’l app by WIPO? What is the 102(e)(1) date for a publication by USPTO? What is the 102(e)(2) date for a patent For a reference based on the national state of int’l app if filed prior to 29 NOV 2000. 2000.l app by WIPO? What is 102(e)(1) date for publication USPTO? What is 102(e)(2) date for patent? How to overcome Persuasively argue claims are patentably distinguishable from the prior art Amending claims to be patentably distinguish.For a reference based on a regular US application with a priority/benefit claim under 35 USC 119(a)-(d) to a prior foreign application: What is the 102(e)(1) date? What is the 102(e)(2) date? For a reference based on national stage of int’l app if filed on or after 29 NOV.l app by WIPO? What is 102(e)(1) date for publication USPTO? What is 102(e)(2) date for patent? For a reference based on a reg US app that is a continuation of an int’l app filed on or after 29 NOV 2000.l app by WIPO? What is 102(e)(1) date for publication USPTO? What is 102(e)(2) date for patent? Most used when the publication or issue date of the reference is too recent for the reference to the applied under 35 USC (a) or (b) Allows for certain prior art to be applied against the claims as of its effective US date Where “patent was filed by another with an earlier filing date” Inventive entity of app must be ∆ from ref Reference date is the filing date not date of inventor’s conception or reduction to practice For a reference based on the national stage of an int’l app if filed on or after November 29.131 (swearing back) showing prior invention Perfect claim to priority under 35 USC 119(a)-(d) Perfect priority under 35 USC 119(e) or 120 - - .l app by WIPO? What is 102(e)(1) date for publication USPTO? What is 102(e)(2) date for patent? For a reference based on a US app that is a continuation of an int’l app filed on or after 29 NOV 200 but not published in English under PCT Art 21(2): What is the 102(e)(1) date for an int. 2000.132 showing ref invent. is not by “another” File an affidavit or declaration under 37 CFR 1. designating US and published in English under PCT Art 21(2): What is the 102(e)(1) date for an int.

l app by WIPO? What is 102(e)(1) date for publication USPTO? What is 102(e)(2) date for patent? OVERCOMING REJECTIONS 35 USC 102(f) . published in any language: What is the 102(e)(1) date for an int. just the date of the first regular US app 102(e)(1) date for an int’l app for WIPO – There is none 102(e)(1) date for publication by USPTO – There is none 102(e)(2) date for patent – There is none Although it cannot be applied under 102(e) the int’l publication by WIPO can be applied under 102(a) and (b) as of its publication date 102(e)(1) date for an int’l app for WIPO – The filing date of the international application 102(e)(1) date for publication by USPTO – The filing date of the international application 102(e)(2) date for patent – The filing date of the international application - - - - For a reference based on a regular US app that is a continuation of an int’l app filed prior to 29 NOV 200.- 102(e)(1) – the date the first US provisional or nonprovisonal application was filed 102(e)(2) – the date the first US provisional or nonprovisional application was fied - 102(e)(1) – the date is the regular US application was filed 102(e)(2) – the date is the regular US application was filed - - 102(e)(1) date for an int’l app for WIPO – filing date of the international application 102(e)(1) date for publication by USPTO – filing date of the international application 102(e)(2) date for patent – filing date of international application 102(e)(1) date for an int’l app for WIPO – There is none 102(e)(1) date for publication by USPTO – There is none 102(e)(2) date for patent – The filing date of the international application Int’l publication by WIPO can be applied under 102(a) and (b) as of its publication date 102(e)(1) date for an int’l app for WIPO – There is none 102(e)(1) date for publication by USPTO – the filing date of the regular US app that claims benefit of the int’l app 102(e)(2) date for patent – The filing date of the regular US app that claims the benefit of international application - 102(e)(1) – the date is the regular US application was filed 102(e)(2) – the date is the regular US application was filed Here the date of the foreign app doesn’t count under 102(e).

OVERCOMING REJECTIONS 35 USC 102(g) OVERCOMING REJECTIONS 35 USC 102(g) OVERCOMING REJECTIONS 35 USC 103 35 USC 103(a) OVERCOMING REJECTIONS 35 USC 103(b) OVERCOMING REJECTIONS 35 USC 103(c) Factors that support obviousness - When the “applicant is not the inventor” Even if just some of the inventors are left out. this rule will bar a patent Listed inventor must be exactly those who invented the actual work Used in cases the applicant derived the invention from another inventor One must contribute to the conception of the invention in order to qualify as an inventor An inventor may consider & adopt suggestions from any sources - 102(e)(1) date for an int’l app for WIPO – There is none 102(e)(1) date for publication by USPTO – the filing date of the regular US app that claims benefit of the int’l app 102(e)(2) date for patent – The filing date of the regular US app that claims the benefit of international application - .

separable. integral. suppressed or concealed it 3 critical components o the US o abdn. reversal. adjustable or continuous. shape or sequence of adding ingredients Making object portable. etc o owned inv Partial exception is made 4 commonly Prior invention must not have been Prior invention must’ve been made in - Based on obviousness of the subject matter Appropriate if someone skilled in the art would consider the invention obvious over the prior art - Subject matter which would otherwise be prior art to the claimed invention & the claimed invention itself must be commonly owned at the time the invention was made Only applicable to biotech processes Requirements Biotech process & compositions should be in the same app or separate apps w/ same filing date Biotech process & compositions must be owned by the same person at time the process was invented Patent issued on process must include claims to composition of matter involved with the process – if 2 ∆ pats must expire at same time Aesthic design changes Elimination of a step or element and its function Automating a manual activity Changes in size.- Suppression and concealment Need not be attributed to inventor Conception Reduction to practice Simultaneous inventions Diligence o Time b/w concept and reduction to practice Obviousness o Invention as a whole must be considered to determine obviousness o Establish prima facie case of obvness 3 criteria Must be some suggestion or motivation either in ref or knowledge available to the public to modify the ref or combine teachings Must be a reasonable expectation of success Ref must teach or suggest all the claim limitations Arguments against obviousness rejection Person skilled in the art wouldn’t see combo suggested by the examiner as obvious Resulting combo is not the claimed invention - Basis for interference practice in the US (g)(1) – may be used when a question regarding the priority of the invention is discovered during the course of an interference (g)(2) – the invention was made in this country by another inventor who had not abandoned. duplication or rearrangement of parts Purifying an old product .

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