2007 Patent Bar Outline Patentability 35 U.S.C.

§101 Patentable Subject Matter – MPEP §2100 * Living subject matter with human intervention is patentable (includes genetically engineered material, excludes a human being) * Mathematical operations without claimed practical application are not patentable e.g., a data structure per se, updating alarm values * Product-by-Process – patentability is determined based on the product itself; includes steps to produce product * Must have utility – need not show that something is safe or effective for humans – that is the FDA’s responsibility * A Utility rejection (§101) should be accompanied by an enablement rejection (§112) o Utility rejections may be overcome by: reasoning/arguments rebutting logic of non-utility, amendments to the claims, amendments to the spec that do not add new matter, evidence from a 132 declaration/affidavit, evidence from printed publications/patents §102(a) – known or used before the invention – The invention was [publicly] 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 (filing date unless otherwise shown) thereof by the application for a patent. * Before the date of invention (not the filing date); must be by 3rd party * Overcoming a §102(a) rejection o proving an earlier date of invention – Rule 131 – Swearing behind a prior art reference; reduction to practice (RTP) before the application filing date, or conception and diligence from before the prior art reference until RTP o Showing the Disclosure was Derived from Applicant (Not by another) – use disclaiming affidavits o Amend claims, arguments rebutting rejection; priority to an earlier patent application (provisional, foreign, continuation, divisional) * Overseas Activities – Activities in NAFTA countries (12/8/93) and WTO countries (1/1/96) may be introduced to prove earlier conception and RTP * Declassified Material – Date of declassification is date of publication for 102/103 purposes; may be used as prior knowledge under 102(a) as date of printing * Abandoned Material – Matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in that it then constitutes prior public knowledge under 102(a); where the reference patent claims the benefit of a copending but abandoned application which discloses subject matter in common with the patent, and the abandoned application has an enabling disclosure of the common subject matter and claimed matter in the reference patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application; may become prior art when it is properly incorporated by reference in the disclosure of a U.S. application publication

§102(b) – Statutory Bar – more than one year – The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than 1 year prior to the effective filing date for patent. * What is the effective filing date? o The date the application is filed with the PTO o Continuation (§120), Divisional (§121), or International (365(c)) if: + Specification contains a specific reference to prior application + Prior application supports new claims (§112) + Application is filed before patenting or abandonment of prior application o Provisional application – applicant has up to 12 months to file a non-provisional application claiming priority or convert the provisional application to a non-provisional (§111(b)) o Foreign – an earlier filed foreign application CAN NOT be used to overcome a §102(b) bar + Only entitled to §119 foreign filing date if during pendency of US application: # Foreign application is identified (application #, country filed, filing date) # Same inventors # Same invention # Foreign application must satisfy, via §112, new US claims # U.S. application is filed within 12 months of earliest foreign filing * Can NOT swear behind a §102(b) reference with a 131 declaration * Can be a reference from the applicant or a 3rd party (anyone) * Prior art; U.S. patents may be used as prior art as the date of issuance or publication (not filing); a foreign patent may be used as prior art as the date rights become enforceable (MPEP §2126.01) * Printed Publication – must be publicly accessible; when it reaches the public; catalogued and indexed in a library; confidential disclosures are not printed publications; published patent applications are printed publication; magazine and other mailed publications are prior art as the date the publication reached a member of the public * Public Use – only in this country (the U.S.); can be a public and hidden use, but not a secret use (if inventor maintains control) * On Sale – sold or offered for sale in this country; test – offered for sale AND ready for patenting o Offer – need not be accepted; details about product do not have to be disclosed; offer can be by anyone; sale need not be public – exception –where a patented method is kept secret, but there is a sale of the product from the method, such a sale is a bar if made by the patentee, but not a bar if the sale is made by a 3rd party. o An offer to assign rights to patent is NOT an offer that will bar a patent o Date is when offer is mailed o Ready for Patenting – RTP – invention is physically built and tested (known to work for intended purpose) OR enabling drawings or other descriptions o Experimental Use – subjective intent of inventor –perfecting invention to see if it will work for intended purpose; extent of control is a key factor

* Overcoming a §102(b) rejection – amend claims; argue claims are distinguishable from prior art; experimental use; earlier filing date (provisional, continuation, divisional) * NEW AIPA §122(b) – U.S. patent applications shall be published 18 months from the earliest filing date (domestic and foreign priority included) sought; except: o Apps no longer pending; subject to secrecy; provisional applications; design applications; if applicant certifies that the invention disclosed has not and will not be the subject of a foreign patent application (non-publication request) o Non-publication request must be issue at time of filing of application and statement that application has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication

§102(c) – Abandonment – inventor intended to abandon invention. Inventor must intend to dedicate his invention to the public – delay in the application process is not sufficient proof for abandonment. §102(d) – Foreign Prior Art * A statutory bar if: o Applicant files a foreign application more than 1 year before U.S. application; AND o Foreign application issues before U.S. application is filed + A published application is NOT a patent + Same invention must be disclosed in foreign application + Same applicant, legal representative, or assigns §102(e) – New AIPA – Disclosure In Earlier Filed Applications * Effective November 29, 2000 * A person shall be entitled to an invention unless (e) the invention was described in (not necessarily claimed) 1. An application for a patent, published under §122(b), by another filed in the US before the invention by the applicant, except that the international application (IA) filed under the treaty … shall have the effect under this subsection of a national application published … only if the international application designating the US was published … of such treaty in English; or 2. A patent granted on an application for patent by another filed in the US before the invention thereof by the applicant for patent, except that a patent shall not be deemed filed in the US for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a) * US Patents can claim the benefit of an IA prior art date and have the IA filing date if:

o IA was filed on or after 11/29/00; the IA designated the US; and published in English o US Application Publications – is prior art of the application’s US effective filing date, which can include an IA filing date, if it meets above 3 conditions §102(f) – Derivation from Another * The inventor did not himself invent the subject matter sought to be patented o Ex parte rejection under 102(f) requires derivation, which usually requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention

§102(g) – Prior Invention (basis for interference practice) * The first to reduce to practice wins unless 2nd to RTP can prove earlier conception AND diligence from time prior to first’s conception to subsequent RTP or filing * Publications are not constructive RTP * Rule 131 can be used to swear behind prior art * Senior Inventor/Party is the entity that has the earliest effective filing date * Ex parte rejection under 102(g) if: (1) the subject matter at issue has been actually reduced to practice (conception is not enough) by another before the applicant’s invention, and (2) there has been no abandonment, suppression or concealment * If inventor does nothing over a period of time to develop or patent his or her invention, the inventor ridicules another person’s attempts to develop that invention, and the inventor actively shows interest in promoting and developing the invention only after successful marketing by another of a device embodying that invention will be considered abandonment

§103 – Obviousness * Level of ordinary skill in the pertinent art, or reasonable pertinent to problem inventor was trying to solve MPEP 2141; at the time the invention is made * Combining references – there must be some motivation to combine; the suggestion does not have to be explicit; the reason the reference suggests for combining can be different from the actual reason * Invention as a whole must be considered; not an element by element analysis of differences * Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness * Objective Considerations – affidavits or declarations containing evidence of:

commercial success, unexpected results, failure of others, long felt need, skepticism of experts, copying by others * 102(e, f, g) cannot be used as a reference (New AIPA) for obviousness when the reference subject matter and the patent application subject matter were owned by the same person or assignable to the same entity at the time invention was made for any application, including utility, design, plant, continuation, reissues filed on or after 11/29/1999. RCEs of application filed before 11/29/2000 do not qualify.

§112 First Paragraph; Specification – MPEP §2100 * Specification must contain: written description, enablement, and best mode * New matter cannot be added by amendment to an application’s disclosure after its filing * If provisional or foreign application supports the claims, the invention is entitled to priority of previous application * Written Description – Applicant’s specification must reasonably convey to those skilled in the art that the Applicant was in possession of the claimed invention * Enablement – The specification must describe to one skilled in the art how to make and use the invention as of the filing date without undue experimentation o Undue Experimentation Factors: breadth of claims, nature of the invention, state of the prior art, and level of ordinary skill in the art * Best Mode – must disclose best mode that was known at the time the application was filed * Lack of agreement between claims and specification and a claim that omits essential material are 112, 1st paragraph deficiencies

§112 Second Paragraph; Claim Requirements – MPEP §2100 * The definiteness requirement – Claims must particularly point out and distinctly claim the subject matter which the applicant regards as his invention; must clearly portray the metes and bounds of the invention * The use of “for example” and “such as” are usually indefinite * Antecedent Basis is needed, unless the scope of the claim could be reasonably ascertained by a skilled artisan. Also, if there’s an inherent part of an object, the use of ‘the’ instead of ‘a’ is appropriate e.g., the center, the edge * Markush Groups – Valid form of alternative expression – “selected from the group consisting of A, B AND C” * Product AND Process claims where both are used are indefinite * Means for limitations with no corresponding structure, materials, or acts are indefinite under 112, 2nd paragraph; claims that fail to interrelate essential elements are deficient under 112, 2nd paragraph * Evidence in the application file (excluding the specification) may lead to a rejection

e. if all claims are to the same invention as the parent application and could have been finally rejected in parent or rejection of claim was necessitated by amendment o final rejection is NOT proper where it is made: first OA in a CIP and at least one claim includes subject matter not present in parent. new matter in the claims is rejected to under 112. there are others too. first OA in a substitute or continuing application containing material presented after final rejection in an earlier application but was denied entry based on new matter o Prematureness of Final action is reviewable by petition under 181 and should be submitted while the application is pending before the Examiner * Appeal – you may appeal after two or more actions on the merits. claim should be rejected under 112. Means Plus Function Claims * Examiner must interpret the claim as limited to the structure. filing was in error without deceptive intent) and fee * Final Rejection o second or later rejection. “a step for”. or acts disclosed in the specification * Is the element of the claim set forth by the function it performs. 51%) Examination of Applications Rejection of Claims * Rejection of claims is based on subject matter. rather than by the specific structure that performs the function? * Look for “means for”. license was diligently sought. 2nd paragraph Patentability – Examiner has burden to prove unpatentability by preponderance of the evidence (i.. * Foreign Filing License – US application will be rejected if applicant files in another country before receiving filing license (if invention made in US) o Automatically after 6 months from filing date o Get retroactively if: petition (countries filed. unless: new rejection of claim that was not added or substantively amended. not secret. the substance – subject to appeal * Objections are based on the form and may be reviewed only by petition * New matter in specification is objected to. * If no corresponding structure in specification. rejection is based on newly cited art other than info submitted and IDS o first action in a continuing or substitute application. dates. if any claim in an application is properly appealable. and after any final rejection. 1st paragraph as not enabling.under 112. the entire application is appealed . etc. 2nd paragraph if Applicant is not claiming subject matter regarded as the invention §112 Sixth Paragraph. materials.

invention will materially enhance the quality of the environment. specify time requested (3 months). will manufacture if patent is granted. HIV/AIDS or cancer. fee o 1. and # Prospective manufacture (w/ statement alleging): sufficient capital/facilities. pending more than 5 years. a search was made. reissued apps.103(a) – may be allowed on petition if: good and sufficient cause. If not met. biotechnology (small entities). won’t be granted after mailing of office action or notice of allowance. AND appropriate agency requests suspension . must specify time of requested suspension (no more than 3 months). applicant must specify time of requested suspension (not to exceed 6 months). provides copies of closest references. maximum of 3 year deferral from earliest filing date from which benefit is claimed. applicant gets a second chance to try to meet them. interference. comparison to claims made. counter-terrorism. no outstanding Office Actions) o 1. superconductivity. AND search of prior art or good knowledge # Any new (not previously examined) application if: claims are to a single invention. Applications are examined in order in which they are filed in the US. fee o 1. first served. no non-publication request. Applicant is 65 or over. invention will materially contribute to energy resource development or conservation o Petitions that DO require a fee: + Safety of recombinant DNA research.. office will notify applicant o Suspension for public safety or defense if: application owned by US.103(c) – may be allowed by request if: filed along with a request for continued examination (RCE). must be in condition for publication. identify application by number and filing date o Petitions that DO NOT require a fee: + Applicant’s health (w/ doctor’s certificate or statement). AND made a prior art search or has good knowledge of prior art # Actual infringement (w/ statement alleging): infringing product/method is on the market/in use. ready for allowance.103(b) – may be allowed by request if: filed along with a request for CPA. * Special – made special by petition. publication may be detrimental to public safety. no response can be due from applicant (i. ready for final rejection. Suspension of Action by Examiner MPEP §709 * By Applicant o 1. fees.Order of Examination MPEP §708 * General – first come. must pay fee (unless PTO’s fault).103(d) – Deferral of Examination of Application. reexaminations * Petitions to make Special – in writing.e. will not manufacture w/o granted patent. 2000 * By PTO – Maximum period is 6 months. regular (utility) and plant apps or international application that entered national stage – on or after Nov 29. AND provide detailed discussion of references and why claims are patentable over them. transferred to different examiner.

No limit as long as done before abandonment.o Suspension for Statutory Invention Registration (SIR) if: PTO accepts a request to publish an SIR in the application * Overlapping Applications by Same Applicant or Assignee Period for Reply MPEP §710 * Due dates are calculated from PTO mailing date * Extensions of time (EOT) cannot exceed the 6 month statutory period for Office actions * If a timely reply is not filed.10 * Examiner may require (from inventors. last office action is final. * RCE is NOT available for: o Adding new matter to an application (must use a CIP for that) o Provisionals o Design applications o Patents under reexaminations (reissues are okay) o Patents and international apps filed before June 8. and other under individual identified under 1. or another action that closes prosecution o Applicant must request RCE by filing a submission and fee PRIOR TO the . assignees. 1995 o Application after the filing of notice of appeal or civil suit unless appeal or suit is terminated while application is still pending * What is needed to get RCE? o Prosecution must be CLOSED: application is under appeal. examiner may not make next action a final rejection if it relies on the new material Request for Continued Examination (RCE) MPEP §706. if no reply – abandoned * After applicant’s reply – examiner must respond within 2 months of receipt. notice of allowance. application is considered abandoned * An authorization to charge all required fees to a deposit account will be treated as a constructive petition for extension of time * Notice of Allowability.56(c). submitting formal drawings. an applicant can get continued examination again by filing submission and fee. EOT’s are available. paying issue/publication fee Requirements for Information MPEP §704. If a subsequent action is made final.07 * Provides a way for an applicant to obtain continued examination of an application after prosecution has closed by filing a submission and paying a fee. the submission of information that is reasonably necessary to properly examine or treat the matter (including: reissues. Ex Parte Quayle. reexams) * Any reply that states that the information required to be submitted is unknown or is not readily available will be accepted as a complete reply – safe harbor * Applicant generally has 3 months to reply if it comes with OA and 3 months if it comes separately. Notice of Allowance – time is not extendable (3 months) for: submitting an oath or declaration. patents.

the application still may be abandoned (extension of time may be given if response appears to be a bona fide attempt to respond) * Express Abandonment o How is it done? + by filing a written declaration identifying the application.192.earliest of the: + Payment of the issue fee (unless petition to withdraw is granted) + Abandonment of application + Filing of notice of appeal or start of civil suit (unless terminated while application is still pending) o RCE is entitled to benefit of a certificate of mailing (CPAs are not) o A request for a CPA filed in an application having a filing date on or after May 29. however: + express abandonment of the application may not be recognized by the Office unless it is actually received in time to act before date of issue or publication + for express abandonment after receipt of Notice of Allowance. may expressly abandon the prior application as of the . Payment of the fee for an RCE does NOT toll the running of any time period set for reply. it will serve to reopen prosecution. amendments to specification/claims. However.111 in order to continue prosecution. 2000 for which CPA practice is not available (utility) will be treated as a RCE * Submissions with a request for RCE o Allowed: IDS. the application will automatically become abandoned o If applicant replies within the time period but the reply is not fully responsive. arguments in a previously filed appeal or reply brief submitted in reply to a final rejection o Not allowed: appeal briefs under §1. applicant must submit arguments. * What does RCE do? o PTO will withdraw the finality of any Office action o Will be treated as a request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision even if RCE is improper o If filed after a decision but before filing an appeal. amendments. applicant should submit declaration along with a petition to withdraw the application from issue and fee o Who can do it? + Applicant (with Assignee’s consent) + Owner/Assignee + Attorney/Agent of record + Attorney/Agent Not of record. who acts in a representative capacity when filing a continuing application. reply briefs under 193(b) o If a reply to an OA is outstanding. or a showing of facts as to why any rejection upheld or suggested by the Board should be removed Abandonment MPEP §711 * Abandonment of an application (not of an invention) * Failure to Reply o If an applicant fails to respond within the appropriate time periods. submission must meet requirement of §1.

137) – should be filed within 2 months from abandonment or is untimely. he may give the applicant a 1 month time period to complete the reply Amendments and Other Actions by Applicant MPEP §714 * Amendment. examiner can either accept it or require reply within remaining . or + Known by examiner to be local rep of record attorney * After an Interview: applicant must ensure the substance of the interview is made of record in the application – often the examiner agrees to do it. Notice of Appeal * Requirements of Response – every response must: o Reply to every rejection and objection in Office Action o Be a bona fide attempt to advance case to final action o Be in writing. or + Using his file. Attorney of record. reply may be a RCE. bona fide reply o If intentional. must remedy within statutory period to avoid abandonment o If unintentional.37 * Interviews in conference room.filing date granted to the continuing application * Special Abandonment Situations * Termination of Proceedings – terminated when: o Issue fee is not paid when due (can be revived if fee is accepted with petition) o Application in a interference where all claims corresponding to the count lose o After decision by Board or court * Revival of Abandoned Applications o Petition to revive abandoned application (1. Full response to OA is still required. Owner(s). or attorney not of record but acting in representative capacity * The entry of second or supplemental responses is discretionary with the PTO * Non-responsive. and fee Interviews MPEP §713. * If examiner thinks applicant’s statement is not complete. typed or written in permanent ink and proper size paper o Be properly signed by: Applicant(s).137(a) for unavoidable or 137(b) for unintentional delay. petition must be accompanied by the required reply. submission. Request for Reconsideration. videoconferencing are allowed (amended) * No interviews before first OA unless in a continuation (or CPA) or substitute application * No fee for interviews even if after time for reply * Examiner may require that an interview be scheduled in advance * No right to an interview after a final rejection * Not normally allowed after filing an appeal brief * Who can interview? o Inventor/applicant o Registered attorney/agent + Of record.

and the PTO does not issues an advisory action until after the end of the 3 month shortened period for reply. preliminary amendments must be filed on the filing date of the CPA + A preliminary amendment will not be entered if it cancels all claims and fails to simultaneously submit any new claims + A preliminary amendment generally will not be disapproved if it is filed no later than: # 3 months from filing date. # NOT extendable time periods + Factors to be considered in whether a preliminary amendment “unduly interferes” with preparation of first OA: nature of changes to claims or spec that would result from entry of amendment. but does not get to examiner until after NOA is mailed.period or set a new 1 month time limit (extendable). must also submit a showing as to: why it’s necessary. OR # 3 months from date the national stage is entered. o Amendments After Allowance of All Claims – you have no right as a matter of law to have an amendment entered after mailing of Notice of Allowance – it’s a matter of grace. new time limit cannot be given after final OA * Types of Amendments o Preliminary Amendment – received by PTO before first OA is mailed + Not considered part of original disclosure unless filed with original application and oath refers to both the disclosure and PA + Should be filed after application receives application number and filing date if not filed with original application + Should be filed with original application if claims are canceled to reduce the filing fee + For CPA’s. it has same standing as if NOA was not mailed + If filed after NOA. good and sufficient reason with a petition and fee + If amendment is received in PTO before NOA is mailed. Amendment o Amendments after Final Rejection – no unrestricted right to entry of amendments after final rejection unless: + Amendment cancels claims or complies with objections as to form + Places case in condition for allowance or better form for appeal by removing issues + Adopts suggestions by examiner + Period for reply cannot be extended more than 6 months from the date of the final action + If applicant replies within 2 months from date of mailing of final rejection. any extension fee will be calculated from the mailing date of the advisory action + If applicant submits a complete replay within 2 months from date of mailing of final rejection and an Examiner’s amendment is needed to place the application in condition for allowance. # filing date of CPA. why . state of preparation of first OA as of date of receipt or pre. amendment may be submitted any time before the 6 month statutory period end w/o an extension fee.

why claims were not presented earlier + A supplemental oath or declaration is NOT treated as an amendment except when submitted in a reissue after NOA 131 Affidavit or Declaration of Prior Invention MPEP §715. failure of others. unexpected results. * Opinion evidence is also entitled to be considered * May not be submitted if the rejection is based on a US patent to others claiming same . commercial success.d)) * Must be filed before final rejection. under 129 132 Affidavits or Declarations Traversing Rejections MPEP §716. long-felt but unsolved need. e.it requires no additional search or examination. the cited reference is the applicant’s own work or was derived from applicant * Needed when claims are rejected or objected to * Objective evidence considered for 103 rejections: comparative date. or refuses to sign * What may be filed? o Oath or declaration established invention of the subject matter o If conception – applicant must SHOW (alleging is not enough) evidence of facts establishing diligence * Geographical Limitations – prior invention may not be established under this section before Dec 8.g. commercial success. unexpected results. 1993 in a NAFTA country or before Jan 1.37 * Purpose is to demonstrate any fact to justify patentability.37 * Purpose is to prove that applicant was the first inventor when faced with a reference dated earlier than the application filing date * Constructive RTP – filing a US patent application complaint with 112 * Actual RTP – when the invention is successfully performed * Needed when any claim of an application or patent under reexamination is rejected based on prior art before the date of invention * Who may file? o Inventor o Assignee (when affidavit from inventor cannot be produced) o Owner of patent under reexam o Party qualified when inventor is dead. before appeal. * Swearing behind can not be used if: o The rejection is based upon a US patent claiming same invention (interference) o Cannot alleviate a Statutory bar (102(b. insane. why claims are patentable. after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195. 1996 in a WTO country.. skepticism of experts. etc.

after final rejection and submitted with a first reply after final for the overcoming a new ground of rejection or with a satisfactory showing under 116 or 195. Form. is considered part of the written description under 112.a proceeding to determine whether an invention claimed in an application had been in public use or on sale over 1 year before filing of application Trade Secret. Proprietary. applicant can try to petition for a waiver to get originally filed material expunged Parts. and Content of U.S. however. before appeal. available for: o Information properly submitted that was not found to be material o Info unintentionally submitted in application o Info submitted in incorrect application o Cannot be used for info forming part of the original disclosure.patentable invention (interference. it will be resealed and retained in case applicant files a petition to expunge o Will not be made available to public until issuance of the patent o Info submitted in reissue or reexams will be sealed. Directed towards subject matter of the invention and not the . double patenting) * Must be timely filed: before final rejection. Title must be technically accurate o Abstract (separate sheet – 150 word max). it will be made of record in application o If it is NOT material. 1st paragraph. and may be amended by Examiner’s amendment instead of issuing Ex Parte Quayle o Brief Summary. it will become permanent part of application. Abstract may be used to interpret claims. under 129 * Attorney arguments cannot take the place of objective evidence * Presumptions of validity must be rebutted by a preponderance of evidence Public Use Proceeding MPEP §720 . and Protective Order Material MPEP §724 * Proprietary information can be submitted if it is believed to be material to patentability: o If it is material. Patent Applications The Application * Specification: o Title (500 characters max). Abstract should be a concise disclosure of that which is new and should not compare invention with prior art. it will be resealed pending possible petition to expunge o Info that is only favorable to patentability should not be submitted * Petition to expunge information: must have fee. if not. If important to reasonable examiner.

the applicant will be sent a notice to file missing parts (usually has 2 months from filing date. PTO requests a “numeric identifier” in cases where inventors are not known. Refund of Fees o Basic filing fee includes 3 independent claims and 20 total claims o Claims fees are not refundable o Non-elected claims in a restriction requirement must be cancelled or paid for o Multiple dependent claims count as at least two D claims. Small entity requests must be made within 3 months of the payment of fee.g. should file response to last OA o If application doesn’t meet requirements.g. but is incomplete (e. drawings where required. o Real examples should be described as “was” done. lack of enablement o Photographs and ink drawings may not be included in same application and photographs must not show environmental structure (design patents) o If a claimed invention is capable of being illustrated by drawing and is not. applicant can petition to have a filing date assigned o If application meets these minimum requirements. e. filing fee * Filing Date Requirements – to receive a filing date: o Non provisional (regular) – adequate specification with at least one claim. extra fee applies o Improper MDC count as a single dependent claim o Fees Paid by Mistake – may be refunded.. Summary should be consistent with subject matter of the claims. oath/declaration. statement in specification.01 o Formulae and tables may be in the specification. missing oath or fee). . filing fee o Provisional – cover sheet. Payment issued from credit account will be credited back to originating credit account * Complete Applications: o Non-provisional (regular) – spec (at least one claim). PTO will not refund $25 or less w/o request. drawings where required. * Format of Specification MPEP §608. drawings o CPA – separate request for CPA. spec (need not include any claims). and fee * Claims Fees. Prophetic examples should be described as “is” done. extendable for a total of 7 months) o There is no requirement that the inventors be named. drawings if necessary o Provisional – specification. * Drawings o Application may be filed with informal drawings o Formal drawings are normally required within 3 months after mailing of Notice of Allowance (not extendable) o Must show every feature specified in the claims o Drawings submitted after filing date may not be used to cure insufficiency of disclosure.disclosure as a whole. Drawings and flow diagrams must be on separate sheets. Must be requested within 2 years. Examiner may require such drawing o Color photographs may only be submitted after petition is granted with 3 copies.

declaration has statement that willful misrepresentation is punishable by law and need not be notarized o Declaration must be in permanent ink o Must identify each inventor (first and last). the correspondence address may be changed only by a registered attorney of record. US application publication. o Essential material – may be incorporated by reference to a US patent. unless the ‘ca’ is to a customer number Conversion between Provisional and Non-Provisional Applications * Non-Provisional (regular) to Provisional o Must be within 12 months from application filing date o Prior to abandonment or payment of issue fee o Prior to request for statutory invention registration o No refund of fees. he must file a separate paper in each application.’ o Identify application o State that oath giver understands contents and duty to disclose o Unless the following is provided in application data sheet. and countries of citizenship o Statement that inventors signing ‘believe to be first. or ANY of the inventors. or ALL of inventors (unless there’s an assignment of entire interest and that assignee has been made of record) o If the attorney changes his address. If assignee or party who will be assignee filed the application.. they may change the correspondence address o After a declaration. oath must provide: . you need: a request for conversion and fee * Provisional to Non-Provisional (regular) (as opposed to claiming priority) o Must be filed within 1 year for filing date and prior to abandonment o Fee o Application filing fee (may be filed after conversion date) o Amendment including at least one claim (unless already a claim) o Oath or declaration (may be filed after conversion date) Oath/Declaration/Power of Attorney/Data Sheet * General Requirements of Oath/Declaration: oath is notarized.* Incorporation by Reference – mere mention of another document without language of incorporation is not sufficient to incorporate the doc by reference. To convert.. may not incorporate essential material that itself incorporate essential material o Nonessential material – may be incorporated by reference to a non-US patent or to a published document (no hyperlinks) * Correspondence Address – PTO requires one – to make a change: o Before a declaration of any inventors has been filed. pending US application or abandoned application less than 20 years old. an assignee. the correspondence address may be changed by a registered attorney named in transmittal letter.

but a statement requesting deletion of the omitted inventors must accompany the submission * Application Data Sheet – 1. year of any foreign application to which priority is claimed o If the declaration is filed with the application. + If co-inventors are removed in continuation or divisional. a 1. domestic priority info. and + Copy of Oath/Declaration filed previously is submitted. or correspondence address * Inconsistencies between Oath/Declaration and Application Data Sheet o The o/d always governs names and citizenship. o/d must be in their language and translated or be on a PTO form o It is improper for an applicant to sign o/d which is not attached to or does not identify specification and/or claims o An attorney may not sign on behalf of inventor o No amendments to spec after declaration has been executed o Initialized and date alterations may be made before execution.+ Inventors’ mailing addresses and residence if different + Application number. or + Title of invention and with a cover letter identifying the application for which it was intended by either application number or serial and filing date o If applicant(s) cannot read English. . + Attorney docket number which was on the spec as filed. it must include one of: + Application number. day. not inventorship. + Name of inventor(s). + Title of invention and reference to an attached spec which is both attached to o/d at time of execution and submitted with o/d. representative info. or + Name of inventor(s). non-initialized and dated alterations are not in accordance with rules o If person is not the inventor. citizenship.182 petition must be filed to change name * Copies of Oath/Declaration – may be filed in lieu of original signatures (including fax) o A new Oath/Declaration need not be submitted in a continuation or division if: + Prior application contained proper Oath/Declaration + Filed by all or fewer than all of the inventors named previously + No new matter is added (not a CIP).76 encourages applicants to submit an application data sheet containing bibliographic information: o Applicant info. assignee info o A supplemental data sheet may be submitted to correct info previously supplied. correspondence info. application info. + Serial number and filing date. it must include one of: + Name of inventor(s). Only to be used to correct new info. and title of invention which was on the spec as filed o If the declaration is filed after the spec. and reference to an attached spec which is both attached to the oath or declaration at time of execution and submitted with o/d on filing. the o/d must state their relationship o If inventor changes name. foreign priority info. a copy of the previous declaration may be filed. and attorney docket number which was on spec as filed. month. country.

publication date + US application: inventor. usually done with an IDS * No need to perform a search * IDS’s are not permitted in provisional applications. and returns a copy * Time for Filing o May be filed freely during: first three months after filing or entry into national stage. prior to first office action on the merits o Three month grace period does not apply to RCE/CPA – only before first OA o After these periods. only such portion must be submitted + If not in English. an IDS is not necessary for references that were cited in the international stage proceeding. place of publication o A Form PTO-1449 is used.o The application data sheet governs when submitted simultaneously with the o/d. can be satisfied by submitting English language version of foreign search report o How should references be cited: + US Patents: inventor. legible copies of materials cited. patent application publication number. must include both fee and statement o Once issue fee has been paid. or + no info was known 3 months prior o After final OA or NOA. application number. but if a continuing application is filed. Examiner reviews. relevant pages of pub. publications. or an English translation. patent number. nor are they permitted in the international stage of a PCT application * Content o IDS’s must contain: a list of materials (patents. with fee or statement + Info was disclosed in communication for foreign patent office no more than 3 months before filing of IDS. title. Only the inventors as to whom the o/d is defective must submit a supplemental document o One may file an application data sheet to correct errors in some new matters (mailing address. o The latest filed document is controlling * Supplemental Oath/Declaration o Generally required when defect in o/d as filed. instead of new dec. foreign priority claim). initials. issue date + US Patent application publication: applicant. if portion of a reference is cited. o A supplemental o/d can be required under rare circumstances Information Disclosure Statement * Applicant must disclose information that is “material to patentability”. filing date + Foreign patent or published foreign patent application: country or patent office which issued patent or published application. no IDS will be accepted * National Stage Applications – ordinarily. date. document number. author (if any). must have: concise explanation of the relevance. other references) cited. IDS can be filed before a final OA/notice of allowance/other action terminating substantive pros. publication date + Publications: publisher. .

MDC must use alternative language such as “any” or “one.” e.g. A gadget as in any preceding claim. fee.. a gadget as in one of claims 4-7 so as to be in alternative form. list of patents or publications submitted for consideration. apparatus and process) o If MDC references a groups of claims (e. nor can it refer to different sets of claims (e. English language translation * submission must be served upon applicant * must not have any discussion/arguments/highlighting/etc. * limited to 10 references * must be made earlier of within 2 months of publication date.. no additional correspondence with submitter Type and Status of Applications Multiple Dependant Claims * Multiple Dependant Claims – dependant claims that refer back in the alternative to two or more claims o MDC may not depend on another MDC. non provisional application must be filed within one year * Claim of priority must be filed within later of four months from the regular filing date or sixteen months from the provisional application filing date – translation of nonEnglish provisional must be filed then too * Regular application must have at least one inventor in common with provisional * Regular application must contain a cross-reference to prior provisional * Pendency is extended to next business day * If applicant fails to make priority claim within 4/16 months. he may petition to accept an unintentionally delayed claim.copies of the references must be cited Third Party Submission – Rule 99 * after publication of an application. or at least relevant parts. a third party may submit materials for consideration * the submission must include: identify application by application number.g. or prior to NOA * may be submitted later. copy of each listed patent or pub.g. including date of publication. This petition requires a fee and statement that the entire delay between due date and date filed was unintentional * A provisional can never claim priority to another application . claims 1-4. claim 1-4 or 5-8).. “the proceeding claims”. Provisionals * Establishes a filing date for the subject matter contained in the application * To establish priority. but only if references could not have been submitted earlier – with fee * does not guarantee that references will be considered * Applicant should always submit IDS with same references * Ex parte in nature.

before patenting or abandonment). # of attorney and docket # (if applicable) + Correspondence address + Any government agency that has a property interest in the application o Fee is required o Claims are not required. abandonment. analyzed on a claim by claim analysis * Divisional Application – application for an individual or distinct invention ‘carved out’ of the parent. Continuing Applications * Must be filed during the pendency of a prior application (e. overlap of inventors is measured as of the original filing date of application o A design application may filed as a division of a regular application if the drawings in the original application sufficiently disclose the claimed design * Continued Prosecution Application (CPA) – the pending application must be: + Regular or plant filed on or before May 29.53(b) o The effective filing date of a CIP is determined by the date on which the claim first finds support. multiple continuing applications are allowed * Continuation o Directed towards the same general invention as parent o Filed during pendency (before patenting.. or termination of proceedings) o Discloses same or less subject matter o Has at least one common inventor with parent o Contains a cross reference to parent o If filed on or after Nov 29.* A design application may not claim priority to a provisional * Contents of a provisional: o Specification and drawing (if necessary) o Cover sheet – identify application as a provisional and provide following: + Name of all inventors + Inventor residence(s) + Title of invention + Name and reg. Other requirements are the same as continuation. 2000 (irrespective of any priority claim) + An international application (may 29) that has entered national stage + Design application of any vintage + Filed only under 53(d) o A continuation or divisional (but not CIP) may be filed via CPA o The inventors may be the same or fewer as those of the parent application.g. It may only disclose and claim only subject matter disclosed in the parent. unless statement requesting deletion . o Inventorship may change upon filing a divisional. Presumption of identical. other requirements are the same as for a continuation. the claim for benefit must be made within later of 4 months from filing date of application or 16 months from parent filing date * Continuation-In-Part (CIP) – adds new matter.2000. filed only under 1. No oath/declaration or IDS is required.

attorney. written consent from assignee * Provisional with no cover sheet – filing of a cover sheet naming correct inventors will operate to correct inventive entity * Provisional – adding inventor after cover sheet filed: request to correct Inventorship that id’s the inventor being added. if o/d has been filed: request to correct. statement from each person being added that the addition is necessitated by amendment of claims and error was without deceptive intent. identification of inventor being deleted. statement be person being deleted that error occurred without deceptive intent. if o/d has been filed: request signed by e. serves as prior art as date of publication Inventorship – inventors only get credit if they contribute to the conception of the claimed invention * Provisional applications are determined on the basis on disclosure. fee * Provisional – deleting inventor after cover sheet filed: request with desired change. O/D by actual inventors. Such documents can be copied and refilled – including small entity assertions in parent o An assignment of a parent application carries title to any divisional.o Causes parent application to become abandoned automatically o Applicant will not be allowed to amend the first paragraph of the application to add a cross reference o Only a request is filed – no new spec is needed o The filing date is the date on which the requesting paper is received * Other Continuing Information o Obviousness-type double patenting rejection – asserts that claims presented in multiple apps should have been presented all in one application o Papers submitted in a parent do not automatically become part of the continuing application (unless it’s a CPA). written consent of assignee o O/D not yet filed: file o/d that names the proper inventive entity * Cancellation or Amendment of Claims requires removal of Inventor from inventive entity o to remove. if assigned. (CIP’s are ambiguous) * Statutory Invention Registration – not a patent. no rights granted.. o/d by actual inventors. written consent by assignee . if assignment.g. practitioner. as opposed to the claims Correction of Inventorship – Rule 48 – 201. fee. acknowledge that inventor’s invention is no longer being claimed. fee. error occurred without deceptive intent. statement from each person being added and from each person being deleted that error was without deceptive intent.03 * Errors in inventors originally named o Oath/Declaration already filed: request to correct. fee (no statement needed from inventors) * Amendment of claims requires addition of Inventor o to add. fee. continuation. or reissue application filed after the date of assignment. if assignment.

should be submitted by payment of issue fee + for apps filed in US (or entered national stage) on or after 5/29/2000. US application must be filed within 12 months of foreign application’s filing date. Time measured from date of first foreign application. 2000 (including CPA.Correction of Inventorship Not Required * Issuance with Correct Inventors – if the inventive entity is correct as of the issue date. the priority claim must be made within four months of the filing date or 16 months from foreign filing date (the later) – petition may be filed + applicant must claim priority to the first filed application Publication of Patent Applications * most patent apps are published 18 months from the earliest priority date under any claim of foreign or domestic priority * publication statute applies to any application filed on or after Nov 29. not including RCE) * for earlier filed apps. the foreign priority claim will not help the applicant -. priority claim must be made with submission of a certified copy of the foreign priority document # the claim for priority may be filed at any time up to (including) the date of issuance of patent.the 102(b) bar is based on the actual US filing date * Requirements for Foreign Priority Claim + NTO or WTO country. must be same invention. the applicant may request publication (or early pub or reg apps) * Exceptions: o apps that are no longer pending (issued or abandoned) o apps subject to a secrecy order or publication would be detrimental to national security . foreign application must have been filed by inventor or his assigns. reissue (when inventors are not in agreement) Foreign Priority Claims * application claiming priority to a foreign application must be filed within 12 months of the prior application (six months for designs). can be corrected with a certificate of correction or request * Name Change – need not be corrected. * a priority claim under 119(e) and 120 establishes an effective US filing date for all purposes for commonly disclosed subject matter * a foreign priority claim does not obviate a statutory 102(b) bar. no correction required * Typos or other name errors – need not be corrected. distinguished from incorrect inventor Other Ways to Correct Inventorship * Court order.

or + for republication of an application o If drawings are ‘acceptable.72 + drawings “acceptable” for use in the patent application publication as prior art document. * Publication format and process o each utility and plant application must be in condition for publication: + contains filing fee and o/d + spec of sufficient quality for optical character recognition + title and abstract in compliance with 1..e. or + one months from the application’s actual filing date. or + a petition within the later of 14 months from the earliest claimed priority date or one month from the actual filing date of application Patent Cooperation Treaty (PCT) MPEP 1800 General ** a PCT application that designates the US is a US patent application. the national stage of PCT . or + for publication of an application as redacted. even if filed in another receiving office ** the 102(b) statutory bar is measured back from the PCT filing date ** R1. the applicant must notify the PTO of foreign filing within 45 days or application will become abandoned. applicant must timely file a copy of the application as amended o new drawing requirement will not be held in abeyance o The patent application publication will be based on the EFS copy of the application if the EFS copy is filed within the later of: + 14 months from the earliest claimed priority date. or + before the PTO has started the publication process. or + within one month of the mail date of the first filing receipt indicating the application’s confirmation number o The applicant must also file and EFS copy of the application: + for ‘voluntary’ publication of an application pending on Nov 29.o provisionals. reissues * Exceptions upon request: o must be made upon filing of application. 2000. + sequence listing computer-readable form o if applicant wants publication to be reflected by amendment. designs.48 may not be used to correct inventorship in a national stage application where the inventors were named erroneously in the application (i. may not file a continuing application with a nonpublication request o if application is filed abroad (after nonpublication request).’ applicant may submit better quality drawings for publication with: + an EFS copy of the application. request must certify that the invention has not been and will not be subject of a foreign patent application o applicant may file a petition with fee to avoid publication of a currently pending application.

a certified copy of the priority application to the International Bureau will be submitted + implicitly carries a request for a foreign filing license . and an applicant may file a continuation application within that time ** For apps filed on or after 11/29/00. if priority is to a prior US application. if the inventor is not also the applicant. if any claim for benefit is made to a prior PCT application. this does not apply to the national stage of a PCT application * treaty that establishes a system for filing international patent applications * only for utility inventions (not design) * PCT application is published * may or may not claim priority to an earlier filed application. US application may claim priority to an earlier filed PCT application International Applications Filed in US o Who May File + must include one applicant who is a resident or national of the US + application must be made in name of inventors + must be in English or application is forwarded to International Bureau o Where to File + apps may not be filed via fax o What to File + PCT request + to get a filing date.application) ** Section 365 (c) is a special case. name. An international application (PCT) may be treated as the parent application until 30 months from the international filing date. # name of applicants # description in English # drawings # at least one claim # if the application designate US. address. signature of EACH inventor (or attorney) and any application to which domestic priority is claimed shall be included # indication as to which international search authority + abstract and filing fees are typically paid upon filing by may be paid subsequently + the priority claim should be made when filing the application. the designation of the United States is invalid. you need: # indication that at least one applicant is a resident or national # indication that application is an international application # designation of at least one contracting state. the first sentence of the spec must state whether the application was published in the English language.

the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office if accompanied by a fee equal to the transmittal fee International Stage * Chapter I – the following events occur or may occur: o the ISA determines whether there is unity of invention o the ISA establishes a search report o the applicant has one opportunity to amend the claims within 2 months after establishment of search report o the application is published at 18 months o applicant may file a demand for Chapter II proceedings (19 month date) o applicant may enter the national stage in any designated state (30 month) o A Chapter II demand may be filed via fax. inventive step. it is not a statement as to patentability o National Stage/365(c) * The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office. applicant may demand examination for all or fewer of the states originally designated.+ when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office. and industrial applicability. the application will be subjected to international preliminary examination before an international preliminary examining authority (IPEA) o the IPEA will usually issue a written opinion based on the search report and other aspects of the application (optional) o the applicant has the opportunity to reply to the written opinion. and industrial applicability. these states become elected states * Chapter II o if the applicant files a chapter II demand by the 19 month date. however. amendments made and translation o o/d of the inventor . such reply may include arguments and amendments to the claims o the international preliminary examination report (IPER) will issue o the written opinion will discuss novelty. as well as unity of invention and formal matters o the IPER will provide a statement as to novelty. or if the applicant does not have the requisite residence or nationality. which are: o fee o when required. some elected Offices provide a longer period to complete the requirements. inventive step. a copy of the international application and English translation o when required.

to addressing the mail to the wrong area within the PTO * Specific Address: Assistant Commissioner for Patents. number of pages of spec. including claims. secrecy related.C. usually the fee and cover sheet are all that is required by the 30-month deadline. o written authorization is required for PTO employees to communicate via internet with an applicant for reissues and reexams * Signature Requirements – original signatures are generally not required o copies are not permitted for docs that relate to registration practice before the PTO in patent cases. Washington. and drawings. copy of application and fee to enter national stage. drawings under certain rules. further. may not be faxed * a petition to revive may be filed if the application does not meet the necessary requirements by the 30-month date * subject to publication if the PCT application was filed on or after 11/29/00 Receipt and Handling of Mail and Papers MPEP §500 * Addressing of Correspondence – no penalty. issue fee transmittals. international application. request for reexam * Internet – generally not allowed unless written authorization o permissible communication: all situations except those which otherwise require a signature. expect to the general solicitor. D. amendments. judge order. use date of deposit * Facsimile – fax is usually ok after an application has commenced. a printed copy must be given a paper number and entered into PALM. When email is used. filing receipt will be sent upon receipt of spec and required drawings. petitions. it can still get the date that it should have been received if sender provides statement that fax was sent and the sender’s report confirming transmission o fax is not acceptable for: document that is required by statute to be certified. and drawings and is mailed when a determination is made that the application meets minimum requirements o for Provisionals.* in practice. application or other doc for obtaining an application filing date. the following are ok via fax: CPAs. disciplinary proceedings * Application Number and Filing Receipt – will be assigned to apps upon receipt o a filing receipt w/ application number and filing date will be returned upon receipt at the PTO of the spec. enrollment and disciplinary investigations. or replies to office actions. interference agreements. claims. amount and manner of paying the fee . A cover sheet or letter identifying application as a provisional is required to prevent the provisional from being treated as a regular application * Postcards – should include: applicant’s name or id number. declarations. some interference correspondence. no certified copy of the priority doc will be required. authorizations to charge deposit account o date stamped on the date that the transmission is complete (next business day) o if fax is not received. if o/d is included. 20231 * All correspondence except relating to pending litigation can be hand delivered * Express Mail – if “Post Office to Addressee” service is used. title. provisional cover sheet (if provisional).

charges to accounts with insufficient funds will not be accepted. agreements of interfering parties. each document must have a separate certificate + Lost Mail or Transmission – will be considered timely if applicant: promptly notifies Office the it was sent. an applicant may make a general authorization that will apply to all fees that may be addressed during the pendency of the application o Small Entity Status – 50% reduction of fees for: + Independent Inventor + Small Business (< 500 employees) + Nonprofit Organization # Applies to following fees: filing fees. the PTO will immediately suspend an overdrawn account and will not accept any more charges against it until the proper balance is restored and $10 service charge is paid + authorization to charge deposit account – authorization must be clear and unambiguous. statutory disclaimer. if on separate sheet. issue fees. drawings o Provisional – specification. document supply. etc. certificate of correction. international applicationa. and appeal. request for reexamination. Non-Provisional – specification.* Return Receipt of other papers – should be so complete as to clearly identify the paper for which receipt is requested * Date of Receipt of Correspondence o Express Mail – date stamped with the date it is deposited. revival petition. requires “Express Mail Post Office to Addressee” o Facsimile – date stamped on date the transmission is complete o Certificate of Mailing or Transmission – only applies if paper is received after the applicable deadline has passed. interferences. including filing date and serial number. This date stamp will be used for all other purposes including calculations of future deadlines + benefits of certificate of mailing do not apply: obtaining an application filing date. it’s considered timely + The PTO will still stamp the correspondence with the actual date of receipt. each month the minimum balance must be restored promptly to avoid a $25 service charge. it must be signed and clearly identify the paper it’s with. UPS or FedEx. maintenance fees # Does not apply to: most petitions and processing fees. including CPA. cover sheet * Payment of Fees o only fees paid by mistake or in excess of that required at the time of payment are refundable – provided electronically o Deposit Accounts – minimum deposit of $1. statement that attests on personal knowledge on timeliness * Completeness of Original Application – to get a filing date o Regular. one or more claims. must be attached or part of document. drawings. EOT. miscellaneous and charges under .000 is required to establish an account. If date on certificate meets the deadline. supplies a copy of the original correspondence and certificate. + Contents: requires a signature.

English language/translation + SES must be claimed on each patent application filed by the inventor. perform interference search. excludes favorable material * Burden of proof is preponderance of evidence. list all cited references. assignee. statement regarding transferred rights.21. statement of qualification as small entity. o once application is in condition for allowance and an indication of allowability is mailed. the applicant has no further right to substantive examination of application * Notice of Allowability o terminates substantive prosecution o if applicant broadens claims (anything that would require a new search). other people “substantially involved”. must file a continuing application or RCE . do NOT have a duty to disclose since they are not considered a “person. attorney. firms. etc. claim renumbering. disclosure should be filed with it or within 2 months of the filing thereof * Members of the public are limited to prior art submissions to protest a pending application * Examiners may not investigate deceptive intent * All claims become invalid or unpatentable where fraud or inequitable conduct is found regarding to any claim Allowance and Issue MPEP §1301 – 1309 Termination of Substantive Prosecution * Review of Disclosure and Examiner’s Amendments – examiner should review application to make sure it complies with all formal and substantive requirements: o clear abstract <=150 words. including continuations + Refunds for paying full fee are given if statement is filed within 3 months of the payment of the full fee + Exact payment of small entity fee will be considered a claim for small entity status for basic filing or basic national filing fee only + Small entity status claim remains in affect for an application until changed + Loss of small entity status must be determined upon payment of issue fee and maintenance fee Duty of Disclosure MPEP §2000 * Who has the duty to disclose: each inventor. the claim is prima facie unpatentable * material information at time application is filed OR if you become aware during prosecution * Disclosure must be in writing. when info points to the unpatentability.” * All information “material to patentability” must be disclosed. organization.1. international application. recording fees + To claim small entity status – must file statement containing: signature. if reissue application.

lack of response may indicate agreement with Examiner o Applicant has no right to amend. unless reasons for withdrawal is PTO’s fault + can file a continuing application and permit parent to become abandoned + NO PETITION is required if a RCE is filed before issue fee o After payment of issue fee: . applicant may respond and if applicant does not respond. why claims are patentable + good and sufficient reason should: amendment is needed for proper disclosure or protection of invention. and amendment requires no substantial amount of work for PTO o after issue fee is paid: + must have good and sufficient reason (same as above) and petition and fee * Deferring Issuance of Patent MPEP 1306.01 – normally available for up to one month – unless extraordinary circumstances o to request deferral. + file continuing application. why no more search or examination is required. or + file CPA (for utility/plant before 5/29/2000 or design) o Applicant has three months from mailing date of formal NOA to: + pay issue fee – NO extensions of time – if payment is late.137 + submit formal drawings (no EOT) + submit response to reasons for allowance + submit a priority claim Changing the Application After Allowance * Amendments after NOA o no amendment as matter of right o no broader claims allowed – would require a new search o before issue fee is paid: + need good and sufficient reason why claims were not presented earlier. applicant needs: petition. must file petition to revive under 1. but can: + file RCE with fee (stops 3 month clock). it’s abandoned. showing of good and sufficient reasons why it’s necessary o not appropriate unless issue fee is paid * Withdrawal from Issue MPEP 1308 o Before payment of issue fee: + need petition and good and sufficient reason to withdraw application. fee. and fee. why amendment is needed.o no amendment as a matter of right o applicant has right (not duty) to respond if Examiner gives reason for allowance. but must respond by payment of issue fee o apps in condition for allowance except as to form are considered special and formal matters must be handled w/in 2 months * Formal Notice of Allowance and Fee Due (NOA) o starts three month clock for payment of issue fee o if examiner includes reasons for allowance.

unless PTO’s fault + no withdrawal unless: PTO mistake. fee. and (for all design apps and other apps filed before 6/8/95) a terminal disclaimer for period of abandonment + delay is unintentional: same. fee. issue fee. filing date of application immediately preceding the first CPA in the chain Patent Term Extensions * none for apps filed before 6/8/95 * on or after 6/8/95 and before 5/29/2000 . but showing that entire delay was unintentional * Effect of Issue Date o patent rights become fully enforceable o cannot file continuing apps. one or more unpatentable claims.01-. An incorrect fee or fee form w/o payment will be treated as request to charge deposit account.02 * Patent Term o patents filed before 6/8/95. authorization must be written o Fee can be paid late if: + delay is unavoidable: file petition. showing that entire period was unavoidable. abandoned o issue fee and publication fee and formal drawings can be made via fax o authorization to charge issue fee to deposit account can only be filed after the mailing of the NOA. not the date of notice of allowance o if not paid or insufficiently paid. OR abandonment to consider IDS in continuing application Issuance of Patent * Payment of Issue Fee o three months to pay (watch for holidays and weekends) NO EOT o must pay amount due as of payment date.+ petition and good and sufficient reason. CPAs or RCEs o starts two year clock for broadening reissue claims o starts one year clock for others to copy claims for an interference o maintenance fee due dates calculated from issue date Patent Terms and Term Extensions MPEP 1309. for interference. term is greater of 20 years from filing date or 17 years from issue date o foreign and provisional priority not counted when determining filing date for term purposes o utility and plant file on or after 6/8/95: term begins on issue date and lasts for 20 years from filing date o Design patents: 14 year term from issue date o patents resulting from international apps – term ends 20 years from date of filing international application o CPAs – term is based on filing date of prior application or. for chain of CPAs. illegality or inequitable conduct.

including CPA. successful appeal o Premarket Regulatory Review (e. but may also obtain judicial review o PTO delay – day by day patent term adjustments for failure to: + initially act on an application within 14 months + respond to a reply or appeal by applicant within 4 months + act on application with at least one allowable claim after BPAI or court decision within four months of decision + issue application after issue fee is paid and all other req. or appeal) o other delays – day by day: interferences. successful appeals to BPAI or fed court o limitations on AIPA term adjustments: + where overlapping. no adjustment beyond actual days issuance was delayed + adjustment will be reduced by amount of time applicant failed to engage in reasonable efforts to conclude prosecution. application is not in proper form. secrecy order. continuations (but not design.’s .. while ass.Original patents issued on apps ACTUALLY filed on or after 5/29/00. rights of pending or abandoned apps are generally not open to public and may only be viewed upon written consent of the applicant or the assignee * Recording of assignment documents – each application must meet the following: o must be an original or certified true copy o must be in English or with an English translation o fee o cover sheet . supplemental reply. FDA review) 5 years + 5 years (pto delay) * PTA .g. or RCEs of apps filed before 5/29/00) o no limit on total length of adjustment o applicant has one chance to request reconsideration of initial determination. amendment after NOA + further prosecution via a continuing application eliminates any adjustments that may have been accumulated in the parent Ownership and Assignment MPEP 300 * Assignability of patents and apps o an assignment is considered void unless it is recorded in the POT within 3 months of its date of execution or before subsequent assignment o each of the joint owners of a patent may exercise the rights of a patent holder without the consent of and without accounting to other owners o rights to patent pending may be assigned * Accessibility of assignment record – all assignment rights are generally open to public. secrecy orders.o PTO delay – can be extended 5 years for delays in issuance due to: + interference. failures include: requesting EOT. secrecy. failing to file complete application at date of filing.’s are satisfied + issue patent within 3 years of actual filing date of application (unless delay is caused by applicant requested RCE. failure to fulfill national stage req. interference. reissues. filing papers prior to one month before examiner mails office action – necessitates a supplemental action by PTO.

a new assignment must be submitted * Employees of PTO – incapable. the mere filing of papers on behalf of an applicant constitutes a representation that he or she is authorized to represent the party in whose behalf she acts. fee address. Continuation. payments with credit card * Assignment of Division. fee address can be the same o applicant may designate ONE correspondence address o Customer Number – designed to served the purpose of providing a correspondence address. and providing list of practitioners appointed with power of attorney + the last provided customer number determines correspondence address o correspondence will be directed to the last appointed principal attorney Changing Representation * Applicant may designate a new representative at any time – becomes effective when . of applying for a patent and of acquiring any right or interest. you must get consent * Correspondence with the PTO o correspondence address must be submitted. requests for corrections to docs previously recorded. docs with two or more cover sheets. have cover sheet to record single transaction. * An applicant may appoint a representative – by executing a power or attorney o only individual attorneys may be given a power of attorney o signature of attorney constitutes a representation to the PTO that she is authorized to represent the particular party in whose behalf she acts. date when fax is complete o For submission by fax. AND payment via PTO account o Docs that may not be submitted via fax: assignments filed concurrently with newly file apps. either directly or indirectly. while they are employees and for one (1) year thereafter. CIP and Provisionals o Division or Continuation Apps – a prior assignment recorded against the original is applied o Substitute or CIP – prior assignment is NOT applied o Provisional – if new application based on provisional contains subject matter not disclosed in provisional.* Facsimile submission of assignment documents – PTO generally allows assignments and other docs affecting title to be submitted via fax. in a patent (other than inheritance or bequest) Representative of Inventor or Owner MPEP 400 * A pro se applicant is one who chooses to represent himself in filing and prosecution * Agent or Attorney of Record – one that appears in person or signs a paper before the PTO on behalf of applicant. you must: identify application or patent number. Substitute. Attorney/Agent should specify her registration number with her signature * All papers submitted must be signed and truthful – violations of this may jeopardize the validity or enforceability of any patent resulting therefrom o advising a client of these requirements is not required but recommended * Conflicting Parties may not have the same attorney – at minimum.

and includes only the following: o whether the application is pending. OR + the expiration date of the period which can be obtained by a petition for extension of time Situations Where Representation Ceases: Death. assignee of record. up the 6 months). o the application number and filing date. are NOT appropriate causes for petition o if no inventors are available or refuse to join. and any . if there are such other apps. National Security & Foreign Filing MPEP 100 * Information on the status of an application (status info) is only available to an inventor. filing dates. and. such as vacation. the remaining inventors may apply on behalf of the non-signing inventor(s) – oath must include petition showing last known address of non-signing inventor + temporary absences. * If the inventor is dead. or a person with written authority from previous. an inventor may subsequently join in the application . or patented.it is received in the PTO * The assignee of an entire interest may revoke previous powers and appoint another attorney * Papers giving or revoking a power of attorney require signature by all applicants – unless accompanied by a petition giving sufficient reasons o each party (each inventor) entitled to prosecute must sign replies * Withdrawal of Attorney – must be approved by commissioner o effective when it’s approved rather than when received o Commissioner usually requires at least 30 days between: + approval of withdrawal and the end of a reply period (including EOT. abandoned. and o whether one or more apps claims the benefit of the filing date of the application in question. Insanity. other info open to the public include: + reissue apps. an assignee. hospitalization. attorney of record. etc. an application may be made by another o if less than all the inventors are available after diligent effort or refuse to execute the application. or other party having a proprietary interest may apply for a patent on behalf of and as agent for the inventor(s). and their status * Right of Public to Inspect Patent and Application Files o Patent Issued – after a patent has been issued.petition showing: [applicant is one to whom the inventor agreed to assign] OR [applicant shows a sufficient propriety interest and such action is necessary to preserve rights of parties] or [such action is necessary to prevent irreparable harm and the last known address of the inventors or reps of deceased inventors] Secrecy. all patent docs and papers relating to the case in the patent file are available for inspection by the public. the application numbers. papers relating to reexamination proceedings. insane or unavailable. unconsciousness. Access.

or # is referred to in a US application open to public inspection. or # claims the benefit of the filing date of a US application open to public inspection. and # it is referred to in a US patent. the assignee. and none of the involved parties object within 2 months * Power to Inspect Application – no one but the applicant. o remains in effect for one year and can be renewed * Foreign Filing Licenses – two ways to get permission to file abroad o file a petition for a foreign filing license. or attorney of record. + the Commissioner determines it is necessary for the proper conduct of PTO business. see above). foreign filings that occurred prior to the revocation need not be abandoned Restriction MPEP 800 * Restriction – the practice of requiring an election between distinct inventions. or # the applicant has authorized the application to be open to public o any member of public may petition to access a pending or abandoned application o provisional apps – access will only be given to parties with written authority from a named inventor. 1977 are inspectable by public o All requests for reexaminations are available to public o Decisions of PTO . assignee. her legal rep. + written authority has been granted by the applicant. must provide a list of countries it has been filed in o a foreign filing license may be revoked by the PTO.will be made public if: commissioner believes the decision has important precedent value. only allowed one invention per patent * Election of species – must elect between two or more patentably distinct forms of a .interference files. if: + the application has been published. or the attorney o Reissues – all reissues filed after March 1. OR + the application is abandoned. assignee. except reissue apps. but not if it is in the file jacket of a pending application under the CPA regulations. + the application falls in one of the categories (patent issued or incorporated by reference. unless written authority is given from one of these parties or the Commissioner * National Security – must always be filed in home country first * Secrecy Order – prevents disclosure of the subject matter to anyone without the express written consent of the Comm. or attorney of record may have access to any pending application. can view the contents of an application without notice to the applicant. or wait six months after filing an application o retroactive license may be pursued if an unlicensed foreign filing has occurred through error and without deceptive intent. upon written request and payment of a fee. as long as the interference has terminated o Pending apps incorporated by Reference in a US Patent can be obtained o Anyone.

if applicant did not traverse. file petition (no fee) w/in one month after all elected claims are allowed or no later than filing a notice of appeal from rejected claims (no EOT) * Applicant agrees with requirement – file a divisional application to the non-elected inventions. an applicant may prosecute a reasonable number of additional species thereunder and it’s not a shift o RCE can’t overcome a restriction requirement * Criteria for Restriction – examiner must show application claims independent or distinct inventions AND examining all claimed inventions in a single application would be a serious burden o restriction may be required in a divisional application. if scope is similar * Adding claims after election – if original claims relate only to one invention (no election necessary) and new claims to a patentably distinct invention are added after Office Action. the new claims will be deemed withdrawn (constructive election) * After elected claims are allowed – if applicant traversed. with or without traverse. examiner will give one month (no EOT) to cancel non-elected claims or filed a petition to director. no right to petition later on. The parent case is NOT prior art against a co-pending divisional. indicated why examiner was wrong. there is no shift where the examiner holds the invention to be in the process + if a genus is allowed. even though inventions were grouped together in a requirement in a parent application * Improper Restrictions: a single claim (including Markush and design). claims differing only in form or scope. if election is without traverse. examiner will either withdraw the requirement or make it final * Applicant disagrees but requirement is made final – applicant may petition and MUST have: traversed the original requirement.generic invention claimed in same application (swivel and reclining chairs) * Restriction Practice Features – always discretionary with the examiner o lack of restriction is NOT a defect in a patent o No shifts are allowed from elected to non-elected subject matter. examiner can cancel the non-elected claims without notice and applicant will receive a notice of allowance * Rejoinder . applicant must point out reasons why examiner erred o if no traversal. examiner gives reasons for restriction (can be by phone) o applicant has one month to respond (extendable for up to 5 months) o applicant must elect an invention for examination. the following are not considered shifts: + where a process is rejected as obvious. examiner withdraws non-elected claims from consideration – same result if traversal is improper o only claims elected are examined o if traversal is proper. presenting claims to the product is not a shift + if a product is elected. the only invention being in the product made. claims clearly unpatentable over each other. means plus function apparatus claim and a method claim using same language w/o “means for” * Restriction Procedure – usually done before first search.

and the subcombination has utility either by itself or in other and different combinations o A product and process of making the product – can be distinct inventions if either: the process as claimed is not an obvious process of making the product and can be used to make other products. product claims elected: if the product claims are elected and one or more are subsequently allowed. even if different inventors. withdrawn process claims will be rejoined o Product claims only – if the original application discloses the product and process for making or using the product. or in reexamination or international – if US is involved * Provisional DP rejections – if the first filed application has not yet issued as a patent at the time the rejection of claims in the second application occurs * Two types of DP o Statutory (Same Invention–Type) DP – inventor is allowed only a single patent on an invention: + same inventor or owner . an application and a patent. only concerns cases of two or more patents or apps with common inventors or owners * DP issues can arise between two or more apps. no rejoinder. terminal disclaimer will not apply and 2nd application will not be allowed to issue * prevents the same inventor or owner form obtaining a second patent on the same invention or an obvious variant thereof. or the product as claimed can be used in a materially different process o Intermediate-Final Product Restrictions – intermediate and final products are clearly not dependent. o if no common ownership. the applicant may present claims directed to the process via amendment o Product and Process claims in separate apps. the inventions are distinct only if it can be shown that the claimed combination: does not require the particulars of the subcombination for patentability. different process o A product and process using the product – can be distinct if either: the process of using as claimed can be practiced with a different product. examiner must show 1) the generic claim embraces patentably distinct species. or o common owner/assignee. and a claim is found allowable. so to make a restriction. or 2) those species exceed a reasonable number * Types of Related Inventions (for determining if restriction is proper) o for combination/subcombination claims. Double Patenting MPEP 804 * Double Patenting applies to: o same inventor(s). not as a result of restriction. the second application may be rejected under obvious type double patenting * For election of species requirement. or the product as claimed can be made by another. but only claims the product. distinctness must be shown – can be shown if the intermediate product is useful other than to make the final product.o Product and Process claims in same application. restriction is not appropriate when the invention resides in the subcombination + requires both two way distinctness and reasons for insisting on restriction.

) + Solutions – try to overcome by arguing patentable distinctness. then a two-way obviousness determination is necessary for rejection.cancel offending claims or amend claims. if the application is the earlier filed application. * cannot disclaim terminal term of specific claims. * fee * Disclaimer will not work for Statutory DP * no term extension for later patent past date of TD * not an admission of the correctness of the rejection * put all claims into one application if possible * Domination Distinguished: when a broad claim in one patent or application completely encompasses a narrower claim in another patent or application – does not imply DP * Double Patenting and Restriction – no DP rejection may be made in a divisional application over a parent patent (or application) where the examiner imposed a restriction . a one way OTDP is still proper UNLESS: * administrative delay on part of the PTO caused a delay in prosecution of the earlier filed application.+ at least one application must be involved + identical subject matter + analysis is claim by claim # Solutions . or file a terminal disclaimer in the later application: * disclaim entire terminal term of all claims in the second patent beyond normal expiration of first. the claim in the 2nd application can only be rejected for OTDP if it is an obvious variant of the claim in the first patent AND if the claim in the first patent would be an obvious variant of the claim in the second patent. and * the applicant could not have filed the conflicting claims in a single application + Two Way Obviousness – if applicant could not have filed the claims at issue in a single application AND there is administrative delay. * must include statement that common ownership will be maintained. AND the application on which the patent was granted is the later filed application. abandon application o Non-Statutory (Obvious-Type) DP – designed to prevent improper time extensions by patenting something that is not patently distinct form parent + same inventor or owner + at least one application must be involved + “does any claim in the application define an invention that is merely an obvious variant of an invention claimed in the patent?” + “was applicant prevented from presenting the same claims in the issued patent?” + terminal disclaimer may overcome non statutory DP + Tests – One Way Obviousness – if the invention described in the application’s claim is an obvious variant of the invention in the claim of the patent: enough for a OTDP rejection if: # the application is the later filed application or both filed on same day. (In other words.

or the requirement for restriction is withdrawn before the patent issues * Double Patenting between utility patents and design/plant patents – allowed where appropriate. patentee is given opportunity to respond. request that R3. FEE required o 3rd Party – PTO has no duty to act upon or respond to 3rd party request for a CoC. identify patent number and issue date. identify how errors occurred. corrected patent. may place request in file for public notice purposes o Errors that Affect Understanding or Interpretation – misspelled words. letter in file). statement by all assignees agreeing to change. usually a two way analysis Correction of Patents MPEP 1400 and 2200 Certificates of Correction * mechanism to correct minor. identify action requested (CoC. and copy of Notice of . non-substantive inconsistencies between application as prosecuted and the patent ultimately issued. error in name. Commissioner acting on information provided by 3rd party. use of PTO form is encouraged * Special CoC Procedures o Rule 324 Petition to Correct Inventorship Errors: requires statement from each inventor being added that error occurred without deceptive intent on their part.and scope is same as it was o this prohibition is not available if: applicant voluntarily files 2 or more cases w/o an examiner imposed restriction requirement. or the patentee or assignee – NO FEE required o If mistake was applicant’s fault: the patentee or assignee may request so long as error was made in good faith. restriction requirement was only made in a international application before it entered the national stage in the US.81(a) be waived. include fee if not PTO’s fault (no small entity discount). statement from each inventor named (including those being deleted) agreeing to change. claims of 2nd are drawn to the same invention as 1st. they have discretion not to issue CoC and instead. wrong formula or equation o Serious Errors (rare) – PTO may issue a corrected patent * CoC Procedure – Applicant’s or PTO’s mistake o request made to CoC branch of PTO. if PTO’s mistake. and fee o court order can also change Inventorship o Assignee Name Correction: Rule 183 Petition with fee. clerical corrections * cannot be used to correct patent to add new matter or requires substantive reexamination * Who can request a CoC? o If mistake of PTO: Commissioner acting sua sponte – on his own accord. missing text. 3rd party papers will not be entered into file wrapper * What type of Errors are Correctable via a CoC? o Minor Errors – grammatical and typos in spec or drawings. statement that failure to include was inadvertent.

. patentee must also file a petition for an unintentionally delayed foreign priority claim under 37 CFR 1.e. too broad) or defective and desires to delete such claims form the issued patent o must be without deceptive intent (i.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patented continuing application if the requirements of 35 U.55(a) are met. but co-pending application to be added by CoC is identified in application papers. attached to patent.C. only if: + domestic or foreign priority properly claimed but not printed on face of patent.C.S.Recordation of Assignment o Priority-Related Errors – CoC is proper to correct. if application on of after 11/29/00. and dates back to original issue date Disclaimers * What is a disclaimer? o mechanism for any (full or partial) owner of a patent to disclaim “too much” patent protection originally received o Two Types: + Statutory – patentee give up subject matter by disclaiming one or more claims of patent + Terminal – patentee gives up a terminal portion of the patent’s term * Why us a disclaimer? o patentee discovers one or more claims are invalid (e.. discovery must be subsequent to patent’s issuance) o patentee desires to dedicated one or more complete claims to the public. or + 120 domestic priority not claimed in application filed on or after 11/29/00. but co-pending application to be added by CoC is identified in application papers (requires R78(a)(3) – unintentional delay – and surcharge * Legal Effect of a CoC – Retroactive – becomes part of patent. o disclaimer is irrevocable and binding on the patentee/assignee’s successors in interest o each joint inventor can only disclaim his percentage of the patent * Patent Disclaimer Procedure o Addressed to CoC Branch of PTO o Identify Patent Number o Identify claims or term to be disclaimed o Identify disclaimant and their ownership interest in the patent o Include R20(d) Fee – small entity discount applies o Signature by patentee/assignee or attorney o Disclaimer is placed in file.g. and listed in OG o Terminal Disclaimer filed in an application is revocable until patent issues .55(c) + 119(e)/120 domestic priority not claimed in application filed before 11/29/00 . 255 and 37 CFR 1.S. + a certificate of correction under 35 U. 119(a)-(d) or (f) had been satisfied in the parent application prior to issuance of the patent and the requirements of 37 CFR 1.

which occurred without deceptive intent.55(c) in addition to filing a reissue application o can cure errors in priority not curable by CoC. and + to cure foreign or 120 domestic priority in non-design patent requires a R78(a)(3) petition and the R17(t) surcharge o cannot cure R56 or 112P1 (best mode) violations.S..g. and then you file an amended application for the unexpired term of the original patent. that renders patent wholly or partially inoperative or invalid o Commissioner may issue one or more patents based on reissue application (can file RCE. constitute one of the most difficult legal instruments to draw with accuracy.” o Offer to surrender original patent. but no CIP) * What Errors Can Reissue Correct? o any inaccuracy or error which could have been corrected by amendment during prosecution or by filing a continuation in the original application o can also correct errors normally done by CoC or Disclaimer only if incidental to Reissue process o can conform drawings to spec and vice versa – this is not new matter o can cure inadvertent failure to claim a statutory class of invention o can cure errors in Inventorship not curable by CoC (e. * Grounds for Reissue o In order to broaden claims. lack of consent or all parties do not agree) o Reissue is also available to correct the “error” in failing to take any steps to obtain the right of foreign priority under 35 U. but it does carry over to CPAs and RCEs Reissue * What is Reissue? o mechanism for correction of scope and contents of patent which requires substantive examination o Why? “The specification and claims of a patent. but if patent issued from an application filed on or after 11/29/00: + cannot cure failure to claim 119(e) priority (to provisional). 2000. 119(a)-(d) before the original patent was granted. must file for reissue within two years from the issue date of original patent by inventor o Cannot introduce any new matter o error is specification or claims. particularly if the invention be at all complicated. continuation and divisional apps off a reissue. In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application and the patent to be reissued resulted from a utility or plant application filed on or after November 29.C. or totally defective oath * Types of Reissue o Broadening – when patentee discovers claims are too narrow .o Terminal Disclaimer filed in an application does not carry over to continuations (unless it says so). the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.

+ two year time limit to file reissue (not to present broader claims) + cannot be filed by assignee # Recapture Doctrine – applicant cannot broaden claims in an attempt to reclaim subject matter given up by a narrowing amendment. statement of which claims are cancelled. + even if some elements of a claim are narrowed.+ new or different claims are sought that read on subject matter not read on by original claims. with one exception: file is open to public for inspection and comment o upon filing reissue application. however. as long as any element is enlarged + must be disclosed and enabled in original application spec. including the claims. and a clean copy of the drawings o a copy of any disclaimers. argument or cancellation in original application o Narrowing – when patentee becomes aware of prior art + seeks to amend claims + may act like a disclaimer if any claims are eventually cancelled o Same Scope + seeking to add claims of same scope is improper + may seek. Deleted drawings must be completely enclosed in brackets and “cancelled. CoC. specifying at least one error. file is publicly .” at filing o Oath stating: applicant believes patent is wholly or partially inoperative or invalid by reason of claiming more or less. to correct indefiniteness errors o Interference + patentee may seek to present new claims to provoke an interference (copying claims from another issued patent) * Reissue Application Filing Mechanics o a copy of the patent spec (double column. if any unless seeking to enlarge the scope of claims in which all inventors must sign as well o small entity discounts apply * Prosecution of a Reissue Application o Reissue application prosecution is identical to examination of “normal” apps. all info required by R63. error arose w/o deceptive intent. or reexamination certificates issued in the patent. single-sided sheet format).” o must include statement of offer to surrender original patent. the actual ribbon original. and disclose any other proceedings in which patent is or was involved o may file an amendment either on a separate sheet of paper or by “cutting and pasting” copy of patent + All [deletions] and additions in spec must be noted + All deletions and additions in text of amended claims must be noted. or state that it is “lost or inaccessible. and separate sheet with status of all claims + Amendments to drawings must be shown on separate sheet and noted in red with “amended” label. notice is published in OG. AND all assignees consent or statement that there’s no assignee o must be signed by all assignees. + new claims directed to different statutory class of invention. Added drawings must have the “new” label. or defective spec or drawings.

patentee may end up with original. . + list of pertinent prior art (not already of record in patent file). but not examiners # When? May cite prior art that has a bearing on the patentability of any claim of a particular patent at any time during period of enforceability of patent (expiration date plus 6 years) # Restrictions? Citations of prior art will not be entered into a patent’s file during a pending reexam. there is an absolute continued right to use or sell products manufactured before date of reissue and covered by new claims for those who actually relied on the original patent + court may fashion equitable remedy for products manufactured after date of reissue if substantial preparation was made prior to reissue grant Citation of Prior Art * Overview of Prior Art Citation # What? Presentation of prior art patents and/or printed pubs to the PTO for placement in a patent’s file # Why? To ensure that art will be considered in subsequent reissue or reexamination proceedings # Who? Any person. to original patent claims # Intervening Rights For New Claims: + between issue date of original patent and reissue patent. original patent is surrendered # Expiration: expires when original patent would have issued # Maintenance: fees based on original issue date and payable on same schedule # Infringement: no effect for reissue patent claims that are common. and there is no presumption of validity o reissue apps are granted special status o duty of disclosure applies * Effects of a Reissue Patent o Filing Date: given effective filing date of original application # Result: after reissue application process. + another reexamination requester. narrowed. unless submitted by: + patent owner.accessible and 3rd parties may file R291 protest (2 months from OG) o filing a reissue application: reopens prosecution as to all claims. allows prior art of record to be reapplied. including the patent owner. issue date and patentee. or no patent at all # Issuance: when reissue patent issues. broadened. or substantially identical. or + as part of a 3rd party requestor’s reply * Filing Procedure o Must include: + cover sheet identifying patent.

it is put in storage until reexam is terminated. and copy of each patent and printed pub relying upon (and English . giving a statement pointing out each substantial new question of patentability: + proper basis – patent or printed pub serving as a basis for 102a. and notice and duplicate copy of papers sent to patent owner o if citation is not proper and was filed by patent owner. Center o if citation is proper and was filed by patent owner.. fraud. notice sent to 3rd party (if known). including application to at least one claim of the patent. it is entered into file o if citation if proper and was filed by 3rd party.g.b.103 and double patenting. and original copy returned to 3rd party (if known. it is returned to owner o if citation is not proper and was filed by 3rd party. + If by 3rd party – Certificate of Service or duplicate copy of papers + NO FEE + “Poor Man’s Reexam” o May also include: + copy of each piece of prior art (English translations if necessary) + affidavits or declarations relating to prior art documents (e. CoC. else to owner) Ex Parte Reexamination of Patents * What is a Reexamination? o mechanism for correction of scope and contents of patent which requires reexam because there exists a substantial new question as to the patentability of one or more claims therein based on other patents or printed pubs * Who can request an ex parte reexam? o Commissioner on his own accord o Patentee with fee o Any interested 3rd party (corp. or on-sale or public use bars under 102(b) o Fee: no small entity discount o Submit: copy of patent with any disclaimers.+ explanation of pertinence of prior art cited. but patent is under reexam. intervening prior art if claim not entitled to earlier filing date via 120 + improper basis – 112. or reexam certificates issued in the patent. but only in combination with patents or printed pubs. and admissions by patentee. notice is sent to 3rd party. notice given to patent owner. explaining effective date of art) + If by patent owner – explanation of how claims of patent differ from cited prior art * PTO Handling of Prior Art Citations o forwarded to relevant Tech.f.g. and notice and duplicate copy of papers (if filed) sent to patent owner o if citation is proper and was filed by 3rd party. or individual) with fee * Mechanics of an ex parte reexam request o must be in writing.e. it is entered into file. duplicate copy of papers sent to owner.

certificate of service on patentee or duplicate copy of papers if service was not possible. but not before. order granting reexamination o EOT is typically one month and are only available for good cause (R550c) o owner’s statement must particularly point out why claims are patentable over prior art. all communications by patentee or 3rd party requestor to the PTO must be served on the other party o During reexam. and her position with respect to each issue raised by requestor in the proper form + examiner’s position may be same or different from requestor’s o Patentee may file R181 Petition to vacate reexam order if they believe grant was improper o During reexam. 3rd party requestor may file a reply brief within 2 months o EOT is not available for filing reply o reply is limited to issues raised in owner’s statement o reply may include additional prior art and printed pubs (see previous) . file is open to public for inspection * Owner’s Statement o patentee may file owner’s statement within 2 months of. may also file proposed amendment. request will be considered on claims of issued patent. prosecution will begin.translation) o Must identify claims for which reexamination is sought and the pertinence of prior art being submitted to each such claim o If by 3rd party. and may include an amendment * Requestor’s Reply to Owner’s Statement o If owner’s statement is filed. and preferably copy of power of attorney if filed by attorney/agent for 3rd party o If by patentee. based on amended claims o Timing – must be filed within period of enforceability of patent including statute of limitation for bringing an infringement case (+6 years) o PTO will give requester notice and time (typically 1 month) to respond if request contains any defects * Ex Parte Reexamination Procedure o request is announced in OG o Assigned to same Art Unit (but usually not same examiner) o PTO must decide whether to grant reexam within 3 months of request o If Denied (no substantial new question of patentability) then: + order denying reexam is sent to requestor and patentee + requester may petition for reconsideration once within one month of initial decision + initial decision and decision on petition is final and nonappealable + requester receives partial refund o If Granted: + examiner will issue an order granting reexamination to requestor and patentee that states each substantial new question of patentability with respect to specific claims and prior art. if reexam is granted.

or reply if 3rd party requestor o First OA should address all claims. a decision whether to grant is made on its own merits o if there is more than a three month difference between the date of a second . with suggestion for reissue o Reply to first OA is typically due in 2 months (1 month if reexam ordered by court or stayed) with only good cause EOT (must be filed before due) o Reply is same as ex parte prosecution.o reply is the requestor’s last chance to participate in ex parte reexam * Special Characteristics of Ex Parte Reexamination Prosecution o reexam proceedings are conducted with special dispatch o all claims are examined for 102 and 103 issues without deference o only new or amended claims are also examined for 112 issues o duty of disclosure applies o interviews are only allowed after first OA. patent owner get automatic one month EOT o if no final rejection or appeal. and only raise 112 issues as to new or amended claims o Issues beyond scope of reexam should be noted by examiner. but amendments must be in [ Rule 530 d-j format] o Failure to file reply to an office action results in termination of reexam and issuance of reexam certificate in accordance with last office action. examiner will issue a notice of intent to issue a reexam certificate (NIRC) which states reasons for allowance o no issue fee is required after ex parte reexam o reexam certificate is published in OG o intervening rights (as in reissue) exist * Multiple Reexamination Requests o if subsequent request involves the same prior art cited in first reexam. rule 137 petition (unintentional or unavoidable) is the only way to revive o Second OA is typically final * Conclusion of Ex Parte Reexamination o if examiner issues a final rejection. not include any restriction requirements. and patent owner must file statement of reasons presented during interview in a separate paper or in next reply to OA o correction of inventorship is allowed o reexaminations are never abandoned o no filing of continuation apps is allowed o only patent owner can appeal to the Board (not 3rd party) o appeal process is the same as ex parte prosecution except for EOT (on or after 11/29/99. it is automatically granted o if subsequent request involves different prior art than that cited in first reexam. 2 month period for patent owner to reply or appeal o if first response to a final rejection is a reply. but not addressed. must be final rejection) * Ex Parte Reexamination Office Actions o First OA should be completed within one month and mailed within 6 weeks of filing/due date of: owner’s statement if no 3rd party requestor.

and Service of. same claims must be pending in both files. partial refund o no interviews are permitted during inter partes reexam o 3rd party requestor may respond to patent owner’s reply to EACH OA o 3rd party requestor may appeal to the Board or participate in patent owner’s appeal to Board o a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim is estopped from later Court action on the basis of issues raised or issues that could have been raised in the inter partes reexam * Estoppel: Who May NOT Request Inter Partes Reexamination? o the patent owner o a party who previously lost in a court action on a validity challenge to the patent on the basis of issues raised or issues that could have been raised o a party who has previously requested an inter partes reexam which has been granted and is still pending o a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim was made on the basis of issues raised (or could have been) on previous request * Request for. but multiple reexam certificates will issue o if date of second request is within three months of expected issue date of reexam certificate in first proceeding: + group director will not normally merge proceedings. litigation. identical papers in both files. Inter Partes Reexamination . patent owner must file original. then certain time periods are shortened in reexam proceedings. but any subsequent request will be decided with respect to new claims issuing from first reexam * Ex Parte Reexaminations in Conjunction with Other Proceedings o patent owner must disclose any other proceedings to examiner (e..g. and examiner will issue identical OA in both files. final decision by court that claims are invalid or unenforceable is binding on PTO Inter Partes Reexamination of Patents * What is Different from Ex Parte Reexamination? o applicable only to patents issuing from apps filed on or after 11/29/99 o if request is granted. first OA is mailed with the order granting request o if request is denied.request and the expected issue date of a reexam certificate in the first proceeding: + group director will merge first and subsequent reexams and suspend issuance of reexam certificate from first proceeding + when merged. reissue rules apply and reissue patent also serves as a reexam certificate o Reexamination – Litigation: If litigation is stayed pending reexam or if court orders reexam. reissue and interference) o Reexamination – Interference: reexam is typically not stayed for resolution of interference o Reexamination – Reissue: typically two proceedings are merged.

once. and one reexam certificate will issue o Reexamination – Interference: Commissioner is empowered to suspend one proceeding until the other is concluded o Reexamination – Reissue: may be merged or one proceeding suspended until the other concluded. to patent owner’s reply to each OA o must be filed within 30 days of receiving service of patent owner’s reply to OA o no EOT o written comment (50 max) must be limited to issues raised in OA & reply o citations of additional prior art are limited to those necessary to respond to patent owner’s reply and issues raised by examiner in office action * Appeal in Inter Partes Reexamination o examiner will issue a notice of right to appeal which is a final action setting forth final grounds for rejection and/or patentability for each claim o no amendments are allowed after the issuance of notice of right to appeal o parties may then appeal within 1 month of date of notice of right to appeal o parties may stipulate and request issuance of notice of right to appeal anytime after patent owner’s reply to initial OA o if no party appeals. inter partes rules govern. within 14 days. but requestor can participate. reexam is terminated and inter partes reexam certificate will issue o if a party appeals by filing notice of appeal. except: + includes rule 20c2 fee of $8. if merged with reissue. identical papers filed and same claims must be pending in both files.o essentially the same as ex parte reexam. and reissue patent also serves as the reexam certificate o Reexamination – Litigation: Commissioner has discretion whether to suspend in . but ex parte requestor get no additional rights. if inter partes merged with ex parte reexam. a notice of cross appeal o Nine-Step procedure (time limits are not extendable) + appeal brief – due two months from notice of appeal + respondent’s brief – due one month from service of appeal brief + examiner’s answer: no new grounds for rejection (or reopen pros) + rebuttal brief – due one month from examiner’s answer + request for oral hearing – due 2 months from examiner’s answer + oral argument – 20 mins for examiner and 30 mins for each party + decision by board + petition for rehearing due one month from initial decision + appeal to federal circuit by patent owner * Inter Partes Reexaminations in Conjunction with Other Proceedings o like ex parte reexam. inter partes rules govern.800 – no small entity discount + certification that R907 estoppel does not apply + must identify the real party who is making request * 3rd Party Requestor Participation in Inter Partes Reexamination o 3rd party requestor may file written comments. patent owner must disclose any other proceedings to examiner o Multiple Reexams: may be merged or one proceeding suspended until the other concludes.. all other parties may file.

plus surcharge fee (No SE) o If unavoidable. otherwise to correspondence address * Reinstatement o If unintentional.view of litigation. or if it removes an issue * Not allowed if raises new issues or increases total number of claims * Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant) Timing . if any. late payment = expiration of patent * Can be paid via fax. fee may be returned * Reminders are sent to FEE address. if only identifies patent number. 1999. plus fee * Intervening rights from after expiration of patent until reinstatement of patent * Does not apply to plant and design patents * Can pay 6 months early or 6 months late. EOT available for up to 3 more months Amendments after filing notice * Must be made before jurisdiction passes to the Board * Allowed if amendment adopts a suggestion made. can pay any time after grace period with petition and showing. only finally rejected after said date * Non-entered claims and non-entered amendments are NOT subject to appeal * Filing an RCE (whether proper or improper) will result in cancellation of appeal Appeal Process * File notice of appeal within 3 months of final (second) rejection on merits. or Internet * Anyone can pay Appeal MPEP §1200 Who and When * You can APPEAL matters dealing with SUBSTANTIVE issues (rejections). 29. can pay within 24 after grace period with petition (SE fee) and showing that entire delay was unintentional. patent owner may seek stay of court action until reexam is terminated Maintenance Fees MPEP §2500 * Must identify Patent Number AND Patent Application Number. mail. actions on the merits – made to the Board of Patent Appeals & Interferences * You can PETITION matters dealing with objections to FORMAL/PROCEDURAL matters – made to the Commissioner * Can appeal when claims have been twice or finally (ex parte) rejected * Patentee whose claim has been twice or finally (ex parte) rejected in a reexamination filed before Nov.

and must be filed within 2 months of examiner’s answer * Good cause EOT Timing of Filing a Request for Oral Hearing * Optional. 2 months of the PTO receipt of Notice. or time left to reply to the action being appealed * EOT for up to 5 months * Failure to file brief dismisses appeal and abandons application if no allowed claims Appeal Brief Specifics * Content requirements spelled out in MPEP §1206 * Must identify claims being appealed * New arguments are allowed but new evidence is not allowed * Must traverse all grounds of rejection * All claims of a group must stand or fall together. like a regular office action * If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law. time left to reply to action being appealed Appeal Conference and Examiner’s Answer * Examiner must answer within 2 months from receipt of appeal brief * MPEP §1208 recites 11 content requirements * No new ground of rejection * If new grounds. application file. must be filed within 2 months of examiner’s answer * Good cause EOT Decision by the Board * Closes prosecution for rejected claims * Can enter a new ground of rejection for any claim Remand by the Board to the Examiner . and an explanatory memorandum should be forwarded to the TC Director for consideration. the examiner’s answer should be forwarded to the Office of the Deputy Commissioner * for Patent Examination Policy for final approval Timing of Filing a Reply Brief * It’s optional. the examiner’s answer. If approved by the TC Director. unless stated otherwise * If notice of defects issued by PTO.* Must be filed within the GREATER of: 2 months of PTO receipt of notice. examiner must reopen prosecution. must reply within the greater of: 1 month.

* For a fuller description * Explanation of references * Selection of preferred or best ground * Further search if most pertinent art has not been found * Consideration of an amendment. explain relevance of each evidence. service to applicant is all that can be done. or 18 month publication date * Within 2 months of announcement of filing of reissue application in OG. contain a listing a evidence. Certificate of service or duplicate copies to PTO Timing * Must be prior to first of either: mailing of Notice of Allowance. copy or each evidence (English). EOT available * If after final Notice of Allowance or publication. PTO discards it Protestor’s Rights * One chance to submit protest * Can NOT participate in prosecution process after filing protest . affidavit/declaration * Supplemental Examiner’s answer Reconsideration and Court Appeal * Can request rehearing on paper within 2 months from Boards decision * Good cause EOT available * Court action must start within 2 months (at least 60 days) from decision Examiner sustained in whole or part – No Claims Stand Allowed * Claims allowable except for dependency from a rejected claim are treated as if they are rejected * Board reverses rejection of dependent claims-Examiner’s amendment may be used to rewrite allowable claim into independent form or 1-month time limit for appellant to rewrite claims Examiner sustained in whole or part – No Claims Stand Allowed * Cancel claims depending from reject base claim and allow others. Protests MPEP §1900 – very unusual * Made by member of public who thinks granting patent would be improper * May be filed against a pending application or reissue * Must specifically identify application # or serial #.

not a provisional Interferences MPEP §2300 * Claims need not be identical. and explain why interference should be declared * Applicant can copy a claim from another pending application or issued patent verbatim at the suggestion of examiner * Timing – provoking an interference with an issued patent must normally be done LESS THAN ONE YEAR from issue date. they win race * Burdens of Proof. the copying must be done less than one year from publication date * When two applications are involved. application and application – junior party must prove by clear and convincing. but they must have the same subject matter * Inter partes proceeding between 2 patent apps or 1 patent and 1 application * §1. good faith extension of time * if PUBLISHED and applicant’s filing date was after publication. reissue). does not stay time to reply to outstanding rejection * §1. identifying other pending application (issued patent). and 6 months if not simple matter .183 – waiver of a rule not required by a statute in an extraordinary situation where justice requires Document Disclosure Program – Miscellaneous MPEP §1700 * Retained for 2 years by PTO unless a later application is filed that refers to it * $10 fee * No priority.* Cannot file additional papers unless they could not have been filed earlier * Applicant typically has 1 month to reply if requested by examiner Petitions * MPEP §1002. application and patent – junior party must prove by preponderance of evidence (easier) Provoking an Interference * Applicant may provoke by: proposing a count (mock claim). but it CAN be used to swear behind a patent DISCLOSING same invention * Senior party has earliest effective filing date and is Defendant * If party was first to conceive and they were DILIGENT from before other party’s conception up until their later filing date. presenting or identifying a claim (in an application) corresponding to count. Examiner will not suggest copying if more than 3 months difference in filing dates for simple matter.182 – situations not specifically provided for in the rules – decided on merits * §1.02 – which PTO official has authority * Must be filed within 2 months in ex parte proceeding (regular.181 – situations in which a statute indicated that matter is handled by the Commissioner and provided for in the rules * §1.131 CAN NOT be used to “swear behind” a patent CLAIMING the same invention. reexamination.

one claim. no advertising allowed * No Maintenance Fees Small Entity .* Once interference is filed. computer generated icons can receive design patents. each party has access to opponent’s file * If interfering apps or application-patent have the same inventive entity or common assignee. © symbol can accompany design with a waiver to PTO * “The ornamental design for (the article) as shown. no reissue * Drawings. not the fruit of the plant. no claim to provisionals.02 Design Patents (p. claim the plant. Brief narrative is optional. drawing descriptions. single claim. an IDS.43 Receipt and handling of mail and papers) * Design must be reproducible. then double patenting rejection is proper * Failure to comply with suggestion (usually non-extendable 1 month) acts as a disclaimer to uncopied subject matter * Declarations must be filed only with an issued patent/pending application interference * Parties may voluntarily settle before interference terminates by filing written agreement with PTO Matters Decided by Various PTO Officials – MPEP 1002. 14 year term from date of patent grant. only one claim allowed. statement that a pre-examination search was conducted. two color (if necessary) copies of drawings. and in condition for examination Provisional Applications * No oath or declaration is filed * No publication * No RCE * Does not have to be in English * No IDS’s Plant Patents * must be asexually reproduced. * Not published * May have expedited examination if filed with fee. 112 applies. compliant drawings. bacteria is not a plant. must be novel and nonobviousness. no offensive subject matter.” * No Maintenance Fees * No publication * 6 months to claim priority to foreign apps * No RCE.

changes affecting tile. extension of time. reexams. correspondence in applications under secrecy order. document and recording fees Facsimile * Can pay: maintenance fees. drawings submitted under 1.* 50% Discounts for: o basic filing fees. fee for extra claims.81. basic national fee nor copy of application. reissue apps * No Discounts for: o Petitions (some). elect states. disclaimers. most correspondence in interference proceedings . 1. most appeal correspondence (except for ex parte appeals).83 through 1.85. most correspondence after initial filing of an application * Can send copies of oath/declaration * Can file CPA * can be used to pay issue fee and publication fee * can be used for assignment and other docs affecting title * can NOT be used to: file PCT apps. request for reexamination. enter the national stage. maintenance fees.

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