MPEP 200

Question 1

To get filing date for US application you need to submit:

Answer 1

Spec, Claim, Drawing

You will subsequently get Notice of Missing Parts

Question 2

To get filing date for PCT application you need to submit:

Answer 2

Fee, Oath, Translation, Spec, Claim, Drawing

Question 3

Standard of restriction in US vs PCT:

Answer 3

US is examiner discretion,

PCT is based on treaty (NOT examiner discretion)

Question 4

Types of Patents and associated CFR/USC:

Answer 4

Utility Patents (53b, 101)

Plant Patents (53b, 161)

Design Patents (53d, 171)

Question 5

Inventorship defined as:

Answer 5

Contribution to conception ONLY

NOT RTP

Question 6

Inventorship requirement to obtain benefit of earlier filing date:

Answer 6

Applications must share at least one common inventor for both domestic and foreign filings

Question 7

Correction of inventorship is accomplished by:

Answer 7

CFR 1.48

Submission of:

ADS with new inventors listed

Fee

New Oath/Dec from new inventors

Question 8

Requirements for gaining filing date for Provisional Applications:

Answer 8

Cover letter or signed ADS with all identifying information

Specification under CFR 112

Drawings (e.g. blueprints, photos, published papers, etc. )

Fee

Question 9

Provisional Application benefits:

Answer 9

1 year window to claim priority for non-provisional PLANT or UTILITY application (NOT Design)

Does not count in patent term

Question 10

Which patent types can benefit from a Provisional?

Answer 10

Plant and

Utility

(NOT Design)

Question 11

Which patent types CANNOT benefit from a Provisional?

Answer 11

Design

Question 12

Seven “nos” for Provisional Applications:

Answer 12

i. No claims
ii. No Oath/Dec
iii. No Examination
iv. No Design
v. No priority claims to other apps
vi. No Information Disclosure Statements
vii. No priority basis for design applications
(viii) Cannot be amended w/ new matter

Question 13

A Provisional Application missing a part, and corresponding consequence:

Answer 13

No cover letter or fee or drawing - Notice of Missing parts and 2 mo window to submit or will become abandoned

Question 14

Can a provisional be revived?

Answer 14

Yes, within it’s 12 month period for non-intent

Question 15

A provisional can be made a non-provisional, or vice-versa, by:

Answer 15

petition and fee within the 12 months

Question 16

Types of copending applications:

Answer 16

Continuation,

Continuation-in-part (CIP), or

Divisional

CPA (53d Design apps only)

Question 17

Requirements for Continuation Applications:

Answer 17

2nd (or more) application by same applicant for same invention

Must not add new matter

must be filed before parent becomes abandoned or issued

No new oath required

Must have at least one common inventor

Available for 53b and 53d

Question 18

Requirements for Continuation-In-Part Applications:

Answer 18

2nd application by same applicant for substantial portion of parent and adds new matter

must be filed before parent becomes abandoned or issued

New oath required for new matter

Must have at least one common inventor

Not available for Design applications (53d)

Question 19

Requirements for Divisional Applications:

Answer 19

Application for distinct invention carved from claims of parent

must be filed before parent becomes abandoned or issued

No new oath required

Question 20

Substitute Application:

Answer 20

Have same disclosure as earlier application but are NOT copending

NOT a continuation

Question 21

Benefits of continuing (CON/CIP/DIV) applications:

Answer 21

Can file a copending application claiming the priority of it’s parent

Question 22

Continued Prosecution Applications (CPA):

Answer 22

Filed for Design (53d) patents only

Parent immediately abandoned

Question 23

Reference Filing points:

Answer 23

Created by the PLTIA

Requires:

filing date,

country, and

serial number of referenced app

Question 24

12+2 rule for foreign priority:

Answer 24

Exception to 1 year foriegn filing prioity grace period:

With fee and affidavit swearing honest mistake, there is a 2 month window in which to have rights restored

12+2 rule for foreign priority

Question 25

Does a proper claim to foreign priority gain a prior art date under pre- and post-AIA?

Answer 25

Date of proper foreign priority is:

NOT the prior art date for pre-AIA 102e (which is US only) (NO)

but

IS the prior art date for post-AIA 102a2 (YES)

and does not count for patent term

Question 26

The window in which to claim foreign or domestic priority is:

Answer 26

16/4

Either 16 months from claimed priority date,

OR

4 months from application

whichever is later

Question 27

CIP claim priority dates:

Answer 27

same priority date as parent application for subject matter disclosed in the parent app; and

the filing date of the CIP application itself as the priority date for new matter/claims

Question 28

Amendments filed in the application must be signed by:

Answer 28

A patent practitioner of record;

A patent practitioner not of record who acts in a representative capacity; or

The applicant

Question 29

When deleting inventors, a new oath is:

Answer 29

not necessary.

Question 30

When determining patent eligibility, bright line rules are:

Answer 30

inappropriate (Bilsky)

Question 31

In a CIP application, claims directed to the parent application gain the benefit of _______

Claims not directed to the parent applications, do not gain the benefit of _______

Answer 31

The parental filing date