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patent bar exam > MPEP 100 - 600 > Flashcards

MPEP 100 - 600 Flashcards

1
Q

People qualified to access pending or abandoned file

A

Inventors (unless barred by assignee)
Assignee
Exclusive licensee
Attorney or agent of record

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2
Q

access unpub pending application requires:

A

Fee

petition with good reason: someone threatening

request with reason:

  1. a patent (filed later but issued quicker) relies on the unpub app for priority.
  2. The unpub app is incorporated in its entirety by reference into a patent or a pub app.
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3
Q

Foreign Filing License,

relation to publication

A 
After 6 months, automatically granted
Within 6 months
1. Granted on filing receipt
2. Need to file petition
If forgot to get FFL when app at foreign countries, could obtain it retroactively.

If opt out publication, no FFL.
If already filed foreign app, no way to opt out publication.
If US app claim foreign priority, then no way to opt out publication, will publish in 18M and becomes a 102 prior art.

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4
Q

what’s needed to get a filing date? (provisional, nonprovisional, PLT, design app)

A

After PLT(2013): only spec is needed
before PLT: non-provisional: spec and claim
provisional: spec
Design: spec and one claim

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5
Q

provisional app
What are needed
what are not needed

A

Needed:
Spec, Fee, ADS,

not needed:
OoD, claim, IDS, amendment

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6
Q

period to submit other materials after spec is submitted? (provisional, non provisional)

A

non-provisional: 3M, fee, OoD, claims, ADS,

provisional: 2M, fee, ADS to specify provisional.

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7
Q

submit under 1.53(b), (c), (d)

A
  1. 53(b): non-provisional, continuation, divisional, CIP, design app.
  2. 53(c): provisional, no earlier priority
  3. 53(d): CPA.
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8
Q

inventor requirement for later app to claim earlier app priority.

A

at least one common inventor

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9
Q

time (and extension) between non-provisional and provisional/foreign apps

A

12M

12M +2M+ $$$

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10
Q

patent term for provisional, foreign priority, non-provisional app, continuation, CIP, and for design app

A

non-provisional: 20 years from non-provisional app filing date IN US (not provisional filing date, not foreign priority date)

continuation app: 20 years from earliest parent filing date IN US

CIP: 20 years CIP filing date (new matter, cannot claim parent filing priority)

design: 15 year from design patent issue

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11
Q

Foreign filing examples: which one could claim foreign priority:

  1. Foreign filing T1, US provisional app T2, US utility app T3, T3-T1 > 1Y, T2-T1 < 1Y.
  2. Foreign filing T1, another foreign filing T2, US filing T3. T3-T1 > 1Y, T3 - T2 < 1Y.
  3. Publish paper T1, foreign filing T2 within 1Y of T1, US filing T3 within 1Y of T2, but T3-T1 > 1Y
A

only the last one. T3 could claim effective filing date of T2, so the paper is not prior art against the US filing.

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12
Q

Foreign app filing T1,
Foreign app filing T2 with same content.
US filing T3. T3-T2 < 1Y, and T3-T1 > 1Y.
If T1 is at some point abandoned/withdrawn.
Under what conditions could T3 could call priority of T2

A

T1 was abandoned before publication, and

T1 and T2 are in the same country.

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13
Q

When is translation needed?

A
  1. overcome prior art
  2. interference
  3. examiner request
  4. recording assignment not in English…
  5. PCT file in the US not in English
  6. Third party submission of foreign publications
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14
Q

foreign filing as 102 prior art, determine the prior art date of
pre AIA: 102(e)
post AIA: 102(a)(2)

A

non-PCT foreign filing (without being claimed priority by US filing) is NOT prior art
PCT:
After AIA: 102(a)(2), designate US
Before AIA: after 2000: designate US, pub in English, (DUSE) 102(e)
before 2000: fee, OoD, translation (FOT). 102(e)

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15
Q

obtaining foreign priority need to submit (and timing):

If forget to claim earlier priority, what to do?

A

ADS specify foreign priority
certified copy of the foreign app.

submit within 4M of actual US filing, or 16M of foreign filing, which ever later

if miss to claim earlier priority, file a certificate of correction

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16
Q

Purpose of recording: solely for memorizing what happened. Not for validity and legality, which are determined by the District Court.
Recording:
In English or with translation.
Identify items: patents and/or app. If filed with app, identify inventor, title, date of OOD. If filed with a provisional app, identify inventor and title.
Fee, if submitted by paper (no fee for electronically).
legible , one-side paper.
Original, or certified copy.
Cover sheet.

A
17
Q

Conflict between two assignments: if the owner sells the patent to A, and later on sells it to B. If all the following conditions are satisfied, B takes the ownership:

B doesn’t know the first sale to A
B takes care of the patent (managing, producing, etc.)
A failed to record the assignment after the first sale in 3 months, or before the second sale, whichever later. So, record in 90 days!

A
18
Q

Power of attorney
Revoke start:
withdraw requirement:

A

revoke effective the date PTO receive the request.

withdraw requires:
Reasonable notice ahead to the client
Deliver relevant papers and documents to the client
Notify the client what and when they need to respond to the PTO in the future.
Approved by PTO Director/Commissioner.

19
Q

about Ethics

A

Contract for contingent fee is allowed
Take an interest in a patent as part of the fee is allowed.
Accounts of clients need to be separated (escrow accounts)
Constant monitoring the interests of different parties to avoid conflicts, inform both old and new employers and obtain statements of consents.
Be careful about ‘representation agreement’

20
Q

USPS express mail

USPS certificate mail

A

Express: Date in

Certificate mailing:
new app: PTO receive date,
other document like Notice of appeal, amendment: Date in

21
Q

about OoD

content, continuation, CIP, when to file

A 
content:
They believe they are inventors
App is filed with their permission
They reviewed and understand the app
They have duty to disclose
May not need inventors’ names and addresses, if already given in ADS

same inventor no need for continuation app
needed for CIP for the new matters

can file before issue fee paid.

22
Q

correction of inventorship

A

new ADS, fee, new inventor need OoD

23
Q

small and micro

A

small:
business less than 500
non profit
independent inventor no licensing

micro:
income less than 3 times median
work for university
no more than 4 apps

24
Q

Notice of omission, Notice of missing part

A

Notice of Omission, big problem, missing pages of the content of the invention. May result in adding new matter and changing filing date.

Notice of missing part: small thing, need to submit the missing part, such as OoD, fee,

25
Q

claim: means-to-function

A

instead of saying “a device comprising object #1, object #2…”, they say a device comprising means for doing job #1, means for doing job #2…”

26
Q

Markush, Jepson

A

Markush:

  1. something is chosen from the group consisting of A, B, and C
  2. something is A, B, or C.

Jepson: something is blablabla, with the improvement of … (don’t want to use it, since it mention prior art)

27
Q

improper claim

A

Can only be multiple dependent claim.
A multiple dependent claim depending on at least one claim which is also multiple dependent claim.
Counted as ONE claim.

Even if it is counted as only one claim, it is still an multiple dependent claim.
So if another multiple dependent claim depends on it, that one is also improper.
But if another claim only depends on it, that claim is proper.

28
Q

claim counts:
If claim D depends on A, B or C, then D is counted as ?
If claim E depends on D, E counted as ?
If claim F depends on D or B, then E counted as ?
If G depends on F, G counted as ?

A

D: 3,
E: 3,
F: 1 (improper. It make sense to be improper, since E depends on B twice…)
G: 1. proper

29
Q

What is Substitute Specification

A

The PTO finds your materials too hard to read, and requires rewritten. You can then submit a ‘substitute specification’, and do not have to include the claims (that being said, you can keep the original claims in the app)

Response:
Need to go with a statement saying no new matter.
a mark up copy of the substitute specification, identify the addition and deletion.

30
Q

IDS filing timing, fee (R1.97(b), (c), (d))

IDS no extention (R1.97(f))

A

(b) within 3M after filing date, or before first action: no fee
(c) before the prosecution close (final action or allowance): statement OR late fee
(d) before issue fee: statement AND late fee.
(e) . statement in (c) and (d): items in IDS are not cited by foreign communication more than 3M earlier than it was submitted… Otherwise, IDS is invalid

patent bar exam (9 decks)

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