MPEP 600 (Parts, Form, and Content of Application)

1. Definitions
a. “Assignee” = the assignee of the entire right, title and interest in the application
regardless of whether the assignee filed the application for patent or has taken over
prosecution of the application to the exclusion of the inventor.
b. “Applicant” = means the inventor (or all joint inventors) if there is no assignee, or if the
assignee has opted not to file the application for patent and not to take over
prosecution. Alternatively, can also mean the assignee, obligated assignee (collectively
the assignee and the obligated assignee are the “(Obligatory)Assignee”), or person who
otherwise shows sufficient proprietary interest in the matter (the “Sufficient Proprietary
Interest Person” or “SPIP”), when such person has filed the application for patent, or
taken over prosecution of the application. Collectively, the “Non-Inventor Applicants”.

2. Who can file/prosecute an application?

a. Inventors and
b. Qualified Non-Inventor Applicants: (Obligated)Assignees and SPIPs on behalf of the
inventor.

3. Who gets the patent when the application isn’t filed by the inventor?
a. When a patent application is filed by a Non-Inventor Applicant, the grant goes to the
real party in interest (the Non-Inventor Applicant).

4. Altering of a patent application before filing, and how this affects the Inventor’s
Oaths/Declarations (“O/D’s”).
a. Apps can’t be altered after executing an O/D, unless the executed O/D still covers the
revised application.
b. An O/D doesn’t need to be the original: it can be a copy.
c. The attorney or agent cannot:
i. sign the O/D on behalf of the inventors; or
ii. alter the application either immediately before or after it the O/D is executed.
d. The attorney or agent can:
i. File an application without an O/D. Not due until paying issue fee
ii. Change the correspondence address prior to filing the oath/power-of-attorney.

5. Applications filed by a Non-Inventor Applicant must contain:

a. An application data sheet (ADS) that (1) is signed and (2) identifies the Non-Inventor
Applicant.
b. If the application is the national stage of an international application, the person who is
identified in the international stage as an applicant for the United States is the person
specified as the original applicant for the national stage.
c. Applications filed by an (Obligatory)Assignee: documentary evidence of ownership
must be recorded by the date that the issue fee is paid.
d. Applications filed by a SPIP: a petition must be filed, including:
 i. The required fee;
ii. Evidence of the sufficient proprietary interest; and
iii. A statement that making the application for the patent is appropriate to
preserve the rights of the parties.

6. Inventor’s O/D
a. Prerequisites:
i. The inventor’s oath/declaration cannot be executed unless the inventor has
reviewed and understands the contents of the application and is aware of the
duty to disclose information known to be material to patentability.
ii. The inventor needs to be competent and understand. Age doesn’t matter.
b. The form and content of the O/D must:
i. identify the inventor by legal name; and
ii. identify the application to which it is directed; and
iii. include a statement that the person executing the oath or declaration believes
the named inventor to be the original (joint)inventor of the claimed invention in
the application; and
iv. state that the application was made (or was authorized to be made) by the
person executing the oath or declaration.
c. Additional form and content of the O/D, if not already supplied in an ADS:
i. Each inventor’s legal name, and the inventor’s mailing and residential
addresses.
d. Filing deadline: By the payment of the issue fee.

7. Substitute statement in lieu of an Inventor’s O/D:

a. Prerequisites:
i. A substitute statement can be submitted instead of an inventor’s O/D, when the
O/D can’t be executed (deceased inventor, legal incapacity, missing inventor
even after a diligent search, non-cooperative inventor).
ii. A person may not execute a substitute statement unless that person has
reviewed and understands the contents of the application, and is aware of the
duty to disclose to the Office all information known to the person to be material
to patentability.
b. The form and content of the substitute statement must include:
i. Identification of the inventor; and
ii. a statement upon information and belief of the facts the inventor is required to
state; and
iii. identification of the person executing the substitute statement and the
relationship to the inventor; and
iv. identification of the circumstances permitting the person to execute the
substitute statement in lieu of an oath or declaration; and
v. an acknowledgment that any willful false statement made in such statement is
punishable by fine or imprisonment.
 c. Additional form and content of the O/D, if not already supplied in a substitute
statement:
i. the residence and mailing address of the person signing the substitute
statement; and
ii. identification of each inventor by his or her legal name; and
iii. the last known mailing address where the inventor customarily received mail
and the last known residence.

8. Application for Patent by Joint Inventors

i. Joint inventors must apply for a patent jointly, and each must make an
inventor's oath or declaration as required by, unless a substitute statement is
filed on behalf of a joint inventor due to a joint inventor’rs unavailability
(refuses to join, cannot be reached after diligent effort, etc)

9. Supplemental Inventor’s Oath or Declaration for when there were errors

a. The applicant may submit an inventor's oath or declaration to correct any deficiencies or
inaccuracies present in an earlier-filed inventor's oath or declaration.
b. Prerequisite
i. Must be executed by the person whose inventor's oath or declaration is being
withdrawn, replaced, or otherwise corrected.
c. May also be corrected with an ADS?

10. Application Data Sheet

a. Overview
i. An application data sheet (ADS) is a document that provides the bibliographic
data for an application to the USPTO. The USPTO prefers, but does not require,
the use of an ADS. An ADS can be advantageous, however, because it tends to
reduce errors in the conversion/recordation of application data into the USPTO’s
official electronic data record.
ii. An ADS may be submitted in a provisional patent, a nonprovisional patent
application, or a national stage patent application, and must be submitted when
required to claim priority to or the benefit of a prior-filed application.
b. Form
i. An application data sheet must be titled "Application Data Sheet."
c. Correcting and updating an ADS
i. An ADS may be corrected or updated until payment of the issue fee.
ii. To correct or update an ADS, you simply need to file a new signed ADS with the
corrected or updated information, with several important exceptions:
1. Any attempt to change inventorship must comply with the requirements
of§ 1.48;
2. foreign priority and domestic benefit information changes must comply
with §§ 1.55 and 1.78; and
3. correspondence address changes are governed by § 1.33(a).
11. Preliminary Amendments
a. A preliminary amendment can be submitted with an application and entered prior to fee
calculation if it is limited to cancellation of claims.
b. A preliminary amendment filed on the same day as an application and referred to in an
original or supplemental oath or declaration is part of the original application papers.

12. Inventorship
a. The Patent Office is fond of asking questions in which the person who demonstrated that
the invention would work, the one who carried out the tests which reduced it to practice,
made no contribution to the conception; and therefore cannot be an inventor. A
question is usually asked which requires you to know that each joint inventor need not
make a contribution to each claim and that joint inventors need not work physically
together.
b. Claim by claim
i. Inventorship is determined on a claim by claim basis.
ii. If an individual has made a patentable contribution to one claim, that person is
a joint inventor of not only that claim, but of the whole patent. The inventors
need not work together to make contributions nor do the contributions have to
be of equal number or value. To be a joint inventor of a claim, the person need
only have contributed to conception.

13. Notice of Omitted Items – when the applicant fucked up and the application is fatally defective
a. An unfortunate applicant has erred and filed an application missing specification page
and/or a necessary drawing. This application is fatally defective.
b. Upon receipt of a Notice of Omitted items, the applicant has two choices:
i. File a petition and fee, together with the omitted items, a copy of the Notice
and, if necessary, a supplemental Oath or Declaration, requesting that the later
filing date be awarded. The Notice of Omitted Items will set an extendable two-
month period to file such papers; or
ii. Do nothing? in response to the Notice of Omitted items. In this instance, the
original filing date of the incomplete application will be maintained. Applicant is
now required, preferably by preliminary amendment, to amend the
specification and drawings to renumber pages, clean up incomplete sentences,
renumber figures, etc.. The applicant could also amend the specification and
claims to add the disclosure from the missing page(s) and/ or drawings,
provided that such amendments are not new matter and bearing in mind that
disclosure in the Abstract and claims can be amended into the specification and
drawings.
 c. Or if you’re lucky, then Rule 57 allows submission of the inadvertently omitted
information as long as it was included in a priority document. Such a priority claim works
as an effective "incorporation by reference" of whatever was in the priority document.

14. Claims
a. the patent right is the right to exclude, not the right to practice...it is the right to prevent
others from making, using, selling, offering for sale, or importing.
b. A device claim is a combination of things; a method patent is a combination of steps.
c. To get a filing date, every nonprovisional patent application must have at least one
claim which asserts an invention submitted with the filing or, if none are present,
submitted in response to a Notice to File Missing Parts.
d. After filing the application, a claim may be amended, canceled, or replaced.
e. For there to be infringement, each and every claim limitation, element, or step must be
present in the alleged infringement. More can be present, and there still will be an
infringement unless the claim specifically limits (“consisting”, instead of “comprising”)
its coverage to the specific claimed combination and no more.
f. Punctuation and capitalization of claims
i. Even though it is not a complete sentence, the first word in each claim, and only
the first word is capitalized. A claim is divided by a colon (:) into a "preamble"
which generally describes the things or steps, and a "body" which sets forth the
elements or steps and limitations of the claims.
ii. The different elements or steps of the combination are typically each formed as
a separate paragraph and separated either by a semi-colon (;) or a comma (,).
The penultimate (second-to-last) element or step has an "and" after the semi-
colon ("; and").
iii. A period (".") ends the claim. Don't forget the period at the end.
g. Means Clauses
i. 112(f) allows claims to be written with a "means plus function."
ii. The "means" elements are each defined as covering the corresponding element
or elements in the specification and its equivalent.
iii. One element of the combination, all the elements, or some of the elements
may be expressed as means plus function
 iv.
v. Overall, if there is prior art that would have been similar to the means as
defined in the specification, there could be a 102 or 103 rejection.
h. Method v. Apparatus
i. Apparatus: claims a combination of elements
ii. Method: claims a combination of steps.
i. Independent v. Dependent
i. an infringement of any one claim in the patent is an infringement of the
patent.
ii. The idea is to try to make sure that the infringer will be ensnared by at least one
claim, and, if some of the claims are flawed and invalid, others will be good.
iii. Dependent claim: A dependent claim is one which refers to an earlier claim and
adds something to the combination of that earlier claim.
j. Markush Groups
i. A Markush group is used to define a claim limitation where there is no generic
term to describe a group of things.
ii. "chosen from the group consisting of A, B, and C" or
iii. “is A, B, or C.”
k. Jepson claims
i. Jepson claims are claims which have a preamble defining the prior art, has a
transitional phrase (e.g., “wherein the improvement comprises”), and then
states the inventive elements.
ii. "a system for storing information having [the prior art] . . . wherein the
improvement comprises [transition phrase] [the inventive elements]."
iii. many attorneys recommend avoiding them because they are more difficult to
write, provide more opportunities to err and are easier to reject.

l. Multiple Dependent Claims

 i. Multiple dependent claims depend from more than one claim, and follow these
rules:
1. A multiple dependent claim cannot depend from another multiple
dependent claim. If it does, it is improper;
2. A multiple dependent claim can depend from more than one previous
claim in the alternative only (“and " is forbidden; "or" is permitted); and
3. In calculating the number of claims for calculating fees, each proper
multiple dependent claim counts as the number of claims from which it
depends, and improper multiple dependent claims are counted as a
single claim.

15. Incorporation by Reference

Know the distinction between essential and· non-essential subject matter.
a. a priority claim present on your filing date can work as an incorporation by reference
for "inadvertently omitted” subject matter if the filing is followed up by submission of
the missing page or drawing and an indication of where the subject matter shows up in
a priority document (with translation, if necessary)
b. Form:
i. Must indicate a clear intent to incorporate subject matter; such language uses
the words "incorporate" and "reference". E.g., “the disclosure of which is
incorporated herein by reference”.
c. Incorporating “essential” subject matter:
i. Subject matter is "essential" if it is necessary to comply with statutory
requirements of disclosure.
ii. An application may incorporate "essential" material by reference to:
1. An issued U.S. patent (that doesn’t incorporate by reference essential
material from another patent); or
2. A published application.
d. “Non-essential” subject matter (e.g., background material) is not statutorily required.
i. May be incorporated from publications or foreign patents.

16. Form and Completeness of Specification

 a. There is no mandated form for a patent application. The USPTO merely recommends
dividing the application into certain sections.
b. The written specification may contain chemical and mathematical formulae, but may
not contain drawings or flow diagrams.

17. Abstract
a. disclosures in the Abstract can be amended into the specification and/or claims without
violating the forbidden new matter rule.
b. Legal terminology such as "means" and "said" are not permitted in the Abstract.
c. The Abstract should be on a separate sheet of paper and be no more than 150 words in
length.

18. Substitute Specification

a. The Patent Office may require a Substitute Specification, including claims, if the number
of amendments makes it difficult to examine or print the patent. The applicant may file
a Substitute Specification, excluding the claims, at any point until payment of the issue
fee, if it is accompanied by:
i. A statement that the Substitute Specification contains no new matter; and
ii. A marked-up copy of the Substitute Specification showing the additions and
deletions.
b. The additions and deletions are not underlined or bracketed in the submitted substitute.
c. No substitute specification is permitted in a reissue or a reexamination.

19. Drawings
a. Questions have been directed to the relationship between specification and drawings,
and to how drawings are amended after filing.
b. Drawings must show everything claimed, unless the element is conventional and details
are unneccessary.
c. Black and white photographs are okay in:
i. design applications and
ii. where photographs are the only practicable medium to show subject matter.
d. Color drawings or color photographs
i. will be accepted in utility applications, but
ii. require the grant of a petition explaining why the color drawings are necessary
and include:
1. The inevitable fee;
2. Three sets of the color drawings and/or photographs; and
3. The following language in the specification:
a. "The file of this patent or application contains at least one
drawing executed in color. Copies of this patent or patent
application publication with color drawings will be provided
by the Patent and Trademark Office upon request and
payment of the necessary fee."
e. Form of drawings
 i. Identifying indicia should be provided including: title of invention, inventor's
name, serial number, and docket number. This information should be in the
front top margin of the drawing.

20. Models or Exhibits

a. The PTO may require a model or exhibit along with photographs and/or
specimens/ingredients.
b. Otherwise, the applicant may only submit a model at their discretion via petition,
explaining its necessity.
c. If a model/exhibit/specimen is returned, applicant is responsible to maintain the model
for the enforceable life of the patent unless it was adequately photographed.

21. Information Disclosure Statements (IDS)

The duty of disclosure is a fertile area for questions and the basic rules should be
memorized. In particular, memorize the requirements for filing IDSs within three months
from the application filing, after First Action but before Final, and after Final or a Notice
of Allowance.
a. Each person associated with the filing and prosecution of a patent application has a duty
of candor and good faith in dealing with the Office, which includes a duty to disclose to
the Office all information known to that individual to be material to patentability.
b. What is “material to patentability”?
i. Information is material if it alone or in combination makes for a good rejection
or is inconsistent with or contrary to an argument or position taken in the
Patent Office.
c. What is the scope of the information?
i. It extends to all §102 acts, not just patents and printed publications.
d. Who has the duty to disclose?
i. everyone associated with prosecution.
e. IDS’s are the preferred way to disclose possible material information to the Patent
Office. In order to be considered by the Office, and thus for the duty of disclosure to be
discharged, an IDS must be timely filed and have certain minimum content.
f. IDS Filing Time Requirements:
i. If filed within three months of the application filing date or before the First
Action, only the IDS need be filed (in the case of an RCE, only the timing of First
Action matters);
ii. If filed after the First Action, but before allowance or Final Action, either a
statement or a fee must be provided, and
iii. If filed after Final Action, close of prosecution (Ex Parte Quayle) or allowance,
but before payment of issue fee, a statement and a fee are required.
An IDS in a reissue should be filed within two months from filing.
- If an IDS is filed after filing a CPA or RCE, it should be filed immediately, unless
a 1.103 (b) suspension of Action has been requested.
g. IDS form and content must include:
i. A statement that either:
 1. Each item disclosed was cited for the first time in a communication from
a foreign patent office less than three months before the date of the
IDS; or
2. No item was cited in a communication from a foreign office and no item
was known to anyone having a duty to disclose more than three months
before the date of the IDS.
ii. And the following minimum content:
1. A list of the individual items submitted with patents identified by
patentee, number, and issue date; and publications identified by author,
title, relevant page(s), date and place of publication;
2. A copy of every patent, publication or other information being
submitted (including cited U.S. pending applications not in the IFW
system)…unless it’s a published U.S. application or issued U.S. patent.
3. At least a concise explanation of relevance of anything not in English.
Translations into English are required if they are readily available.

h. Summary – memorize these bright line rules for IDS’s

i. The duty to disclose extends not only to the attorney and the inventor, but
everyone else associated with prosecution. This, for example, might include the
owner of the patent, or an expert retained to do research in conjunction with
responding to an official action.
ii. The information required to be disclosed includes information whether or not
obtained in conjunction with the particular application in issue. Thus, if an
attorney happened to remember some piece of prior art he had seen in doing
work in the past for another client, and that piece of prior art is material to the
application in issue, failure to disclose would be a breach.
iii. A breach of the duty to disclose will result in a refusal to grant the patent if the
failure is discovered before the patent issues, or invalidity of the patent if it is
discovered after issue.
iv. The refusal to issue or invalidity result even if the patent owner and/ or inventor
are entirely blameless, and the breach was by others.
v. The time for filing an IDS cannot be extended.
 vi. Information required to be disclosed extends to all §102 acts not just patents
and printed publications.
vii. When material prior art is discovered after the application has been allowed
and the issue fee paid, the proper course is to seek withdrawal of the
application from issue so the art may be considered in a continuation
application.
viii. Non-complying IDSs will be placed in the file, but not considered.
An IDS that is e-filed may be filed in the same timeframe as a paper IDS but can
only cite U.S. patents and U.S. published apps.

22. Requirements for Information from the USPTO

a. This area is ripe for a question or two on the Exam. A Requirement is used in technical
areas where the PTO could use a little help from applicants to zero in on information to
help the examination process.
b. Overview
i. The USPTO may require the submission of a Requirement for Information from
individuals or any assignee if the assignee has asserted its right to prosecute.
ii. The PTO may seek any information reasonably necessary to properly examine or
treat a matter.
iii. It is a sufficient answer to state that the information required to be submitted is
unknown or is not readily available.
iv. This is separate from any art that is material to patentability that must still be
submitted in an IDS.
v. A requirement for information is not necessary for a complete examination on
the merits.
c. Reasonable Necessity
i. In determining whether information is reasonably necessary for a Requirement
for Information, the Office may consider the following factors:
1. The need for search areas used and references found by applicants.
2. The need for base technology teachings as from inventor's publications
and references used to draft application.
3. The need for references implied in disclosure or response.
4. The need for information of inventors' or competitors' product or
service.
5. The need for industry technical or legal standards used in the invention
design.
6. Whether the need arises from a lack of accessible pertinent art or a
suggestion of a specified need from the record or examiner's search and
analysis.
7. Whether the Examiner has performed the search ordinarily performed
for such subject matter and finds the need for specific further
information.
8. Whether the Office has access to the necessary information.
9. The applicant or assignee likely has access to the necessary information.
 d. Examples of Types and Sources of Information that May Be Requested
i. Commercial Databases: The existence of any particularly relevant commercial
databases known to any of the inventors that could be searched for a particular
aspect of the invention.
ii. Search: Whether a search of the prior art was made, and if so, what was
searched.
iii. Related Information: A copy of any non-patent literature, published application,
or patent (U.S. or foreign) that was used by the inventors, that relates to the
claimed invention
iv. Information Used to Draft Application: A copy of any non-patent literature,
published application, or patent (U.S. or foreign) that was used to draft the
application.
v. Information Used in Invention Process: A copy of any non-patent literature,
published application, or patent (U.S. or foreign) that was used in the invention
process, such as by designing around or providing a solution to accomplish an
invention result.
vi. May also include request for admissions of fact as well as specific questions
(interrogatories). (Watch out for this last one!)

Decent flashcards from 600 (content, parts, form of applications):

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