600 Content Cards

Question 1

Oath and Declaration

Answer 1

Oath - sworn to be true in front notary or equivalent

Question 2

Basic Oath/Declaration Requirements

Answer 2

Believe themselves to be inventor
application is being filed with their permission
Inventor reviewed and understands contents of application
Duty to Disclose all information known to be material to patentability of application

Question 3

Submission of Sub. Oath

Answer 3

Under 1.43 - deceased inventor
Under 1.45 - Joint Inventor
Under 1.46 - assignee or otherwise proprietary interest
Under 1.63- Inventor deceased, legal incapacitatied, refused to execute oath, or cannot be reached

Question 4

Inventorship

Answer 4

In US human beings only
Determined on a claim by claim basis
Requirement is did indivudal contribute to invention in some manner
Consent of assignee must be obtained and mistake must of been honest one to change inventorship

Question 5

Notice of Omitted Items

Answer 5

Drawing or page omitted from filing
if no response filing date is the date without figure or page
can change filing date to date figure or page submitted
can retain original filing date but app may be defective
bad thing

Question 6

Notice of Missing Parts

Answer 6

No rights are in jeopardy
must respond by filing or pay
filing date date will not change
no possibility to change filing date
normal thing that happens

Question 7

Claims

Answer 7

assertion of thing or steps applicant wants protected
assertion is defined by words of the claim
Must have at least one present to get a filing date
must contain some element, step, or limitation not found in prior art
Infringement on one claim is infringement on patent

Question 8

Apparatus Claim

Answer 8

Defines a combo of elements interconnected by the language of the claim to show the purpose of the invention
combination of things

Question 9

Method

Answer 9

Combination of steps that when carried out achieve the intended results
Combination of steps

Question 10

Punctuation and Capitalization of Claim

Answer 10

First word only capitalized
Divided by a colon into a preamble and a body
period always ends the claim

Question 11

Preamble

Answer 11

general description of the thing or steps

Question 12

Body

Answer 12

sets forth elements or steps and limitations of the claim

starts with either comprising or consisting

Question 13

Markush Groups

Answer 13

Used to define claim limit where there is no generic term describe group
most commonly used in chemical claims
no specific wording is required

Question 14

Jepson Claim

Answer 14

Claims that have preamble defining what is old, a body defning what is new and a transition phrase such as “improvement comprising”

Question 15

Multiple Dependent Claims

Answer 15

Claim that depends from one or more claims

One set of multiple dependent claim cannot depend from another set

Question 16

Incorporation by Reference

Answer 16

May reference ; issued US patent, published application
cannot referencce: foreign patent or application, publication, us patent which incorporates by reference essential material from another patent

Question 17

Substitute Specification

Answer 17

USPTO may require this when number of amendments make it difficult to examine or print
applicant can submit one on own if swear no new material

Question 18

Drawings

Answer 18

Must show everything claimed unless element is conventional

Now accepts black and white photos for design when photos are only practical medium

Question 19

Models/Exhibits

Answer 19

USPTO may require model or exhibit to accompany photos and/or specimens/ingrediants
if model returened applicant must maintain during life of patent

Question 20

Nonprovisional Application Contents

Answer 20

1. written application
2. Include specification per 112, drawings per 113, oath/declaration per 115
3. At least one claim
   Prescribed filing fee, search fee, examination fee, application fee

Question 21

Provisional App Contents

Answer 21

Specification per 112(a)
Drawing per 113 
Claims not needed at time of filing 
Cover sheet identifying: 
Application as provisional
Name of inventor(s)
Title of invention
name & registration of attorney/agent if needed
Correspondence address
If made by us govt - name of agency and contact info

Question 22

Hague Convention Apostille

Answer 22

Document signed with US and 28 other countries on oct 15, 1981 and allows forge in notaries to submit to USPTO

Question 23

Non Provision fees

Answer 23

Basic filing fee
Search fees
Examination fee
Application size fee 
Excess claim fee 
Non electronic filing fee

At time of filing only basic filing fee is due as long as rest paid in timely manner

Question 24

Application Size fee

Answer 24

Applied when application exceeds 100 pages and additional 50 pages after get extra fee

If submitted electronically then only 75% of total size is counted as a page. 100 pages submitted electronically is counted as 75

Question 25

Excess claim fee

Answer 25

Independent claims over 3
20 total claims
Fees for multiple dependent claims are based on #of claims the set refers too

If this fee is applied to application then due at time of filing
Amendments can trigger this fee

Question 26

Order of fees for nonprovisional

If payment ambiguous or one lump sum sent in

Answer 26

Basic filing fee
Non electronic fee
Application size fee
Late filing surcharge 
Processing fee
Search fee 
Examination fee
Excess claim fee

Question 27

Order for Provisional

Answer 27

Basic filing fee
Application size fee
Late filing surcharge