Flashcards in law Deck (62):
35 USC 102(a)
A person shall be entitled to a patent unless -
(a) the invention was 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 thereof by the applicant for a patent.
Before the invention date (first OA will assume this as the US filing date)
= Conception (idea + enable) + RTP
Known or used in US
o Known must be not only the invention but also how it works
o Use must be by the general public or known to the general public, secret use will not bar
o The entity need only differ by one person to be “by others”
***Patent or described in a printed publication in anywhere
35 USC 102(b)
1, More than 1 year before the US/ international application date (foreign priority date doesn’t count)
2, Patented or described in a printed publication anywhere
3, Public use in US
o Mere knowledge is not enough
o Any “non-secret” use by someone unconnected to the inventor
o Experimental use exception (court 13 factors)
• Nature of the invention
• Primary purpose is experiment
• No market testing
• Non-feasible to experiment in private then public ok
• How does the inventor acts
• If the inventor thinks the test is complete then problem
• Experimental use ends with any actual RTP
• * Experimentation by another in public more than 1 year before your filing date is a bar for you, your public experimentation is not bar, experimentation by another in public under your supervision is not bar
4, On sale in US
o On sale
• secret sale counts
• need not be ready for satisfactory commercial marketing
o Offer to sell
• even if no one actually purchased it
• condition sale like if u don't like we will take it back still counts
o grant of license or an assignment or sale of the rights without more does not trigger the bar
o inventor’s consent to sale is not required
35 USC 102(c)
35 USC 102(d)
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States
dont need to be granted within 12 months prior to us filing!!!
o the applicant on the foreign application must be the same as the applicant on the US filing
• employer who filed in foreign country is treated the same as though the inventor filed
o same subject
o 12 months for utility applications, 6 months for design application
o the foreign patent application must be an issued patent prior to the US filing
• issue and publish the same date in US, but not foreign; so public available date doesn't matter
• the foreign patent’s filing date is the date that counts here
35 USC 102(e)
cannot rely on matter which?
no patent if… before invention date
• domestic 102(e) patent granted, filed by another
o US filing date is the 102(e) date
• Domestic 102(e) patent application published, filed by another
o US filing date is the 102(e) date
• foreign 102(e)
o no 102(e) date for foreign applications
• international 102(e) publications
o if the international application was filed before Nov. 29, 2000: 102(e) date is when the fee, oath and translation arrive at the USPTO
o on or after Nov. 29, 2000: 102(e) date counts only when the international application designates the US, and it publishes in English (don't assume)
A 35 U.S.C. 102(e) Rejection Cannot Rely on Matter Which Was Canceled from the Application and Thus Did Not Get Published in the Issued Patent
35 USC 102(f)
• no patent if you didn't invent
• 102f rejection by itself alone
35 USC 102(g)
must be Made in US = claimed in a US patent application
interference: use invention date
• g(1) was made by another and was not
o abandonment, suppression or concealment
• abandonment can be inferred from conduct without express acknowledgement, trade secret is concealment
o ex parte 102(g) rejection, if
• 1, the subject matter had been RTP by another before this invention, and
• 2, there has been no abandonment, suppression or concealment
• first to RTP will be the patentee unless another was the first to conceive, later RTP with diligence
o 1, first to conceive
• conception: idea + game plan
o 2, RTP: actual or constructive (file application), and
o 3, with diligence
• critical period for 1st conceiver but 2nd RTPer: just prior to the entry in the field of the party who was first to RTP and continues until the first conceiver reduces to practice
• vacation, looking for fund can be bar for diligence
• attorney can break the diligence by put the case aside for a while
102(a)(1) disclosure with prior public availability date; invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the EFD
• grant date of the patent for the prior art date, and if that date is secret, then the prior art date is when the patent was made available to the public by being laid open for public inspection or disseminated in printed form
• US grant date = publishing date, not true for other countries
o Printed publication
• reasonably accessible to the public (on web, no necessarily print)
• 1, each and every element of the claimed invention must be disclosed either explicitly or inherently, and the elements must be arranged or combined in the same way as in the claim, and
• 2, a person of ordinary skill in the art must have been enabled to make the invention from the document without undue experimentation
o public informing = know what it is and know how it works
• in public use
• on sale (on internet)
• otherwise available to the public
• student thesis in a library, posted display at a meeting, a commercial transaction that's not a sale under UCC
o *prior art can be from inventor himself or others
o *PTO will treat admissions by the applicant as prior art (specification)
102(a)(2) patent (application) related to US with prior filing date; sm described in patent or application published or deemed published by another and was effectively filed before the effective filing date of the claimed invention.
3 types of prior arts: (1) U.S. patents; (2) U.S. patent application publications; and (3) certain WIPO published applications
o WIPO-published applications
• WIPO publications of PCT applications that designate US are treated as UC patent application publications for prior art purposes
• Regardless of international filing date, whether published in english, or whether PCT international application enters the national stage in the US
o Names another inventor: need only one different person to be another, but can be A/AB within original inventors ABC
102(b)(1): exceptions to 102(a)(1), not a prior art if
• 102(b)(1)(A) grace period disclosure by inventor or obtained form inventor; exceptions, if within the 1 year grace period
o the disclosure was made by the inventor, or
o by a joint inventor, or by another who obtained it directly or indirectly from the inventor or joint inventor
o 1.130 affidavit to establish a disclosure is not prior art
• 102(b)(1)(B) grace period intervening disclosure by 3rd party; exceptions, if within the 1 year grace period
o 3rd party disclosed
o but the subject matter has already been disclosed by the inventor or joint inventor before (but this one needs to be within 1 year to not be count as a prior art itself)
o ***even if above satisfied, if the 3rd party disclosure is specific but inventor’s disclosure is generic then 3rd party is still prior art
• appropriate affidavit or declaration under 37 CFR 1.130(a) (attribution) for 102(b)(1)(A), or 1.130(b) (prior public disclosure) for 102(b)(1)(B)
102(b)(2): exceptions to 102(a)(2), not a prior art if
• 102(b)(2)(A) disclosure obtained from inventor
• 102(b)(2)(B) intervening disclosure by 3rd party
o after the sm had been publicly disclosed by the inventor, or from him
o only the claim that not covered by the first inventor disclosure is prior art
102(c) joint research agreement
• The sm disclosed was developed and the claimed invention was made by/ on behalf of one or more parties to a joint research agreement that was in effect on or before the EFD
• Claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and
• The app for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement
Claims Must Particularly Point Out and Distinctly Claim the Invention
Swearing back under 1.131 (pre-AIA 102(a) and 102(e) only)
o Establishing by submission of affidavits or declarations an earlier date of invention based upon:
• An actual reduction to practice, or
• Conception and diligence from the critical date to the actual or constructive (filing) reduction to practice
o Prior art can not be removed if it claims the invention, interference
Affidavit practice under CFR 1.132
o Used to submit facts to rebut prima facie showing of obviousness, to establish utility or to establish enablement
o Proof of secondary considerations can be submitted in reexamination and reissue, even include evidence that were not available before the issuance of the original patent
o Can also establish utility, operability and the like
example: An uncontradicted declaration by A asserting that the subject matter relied on by the examiner in reference P constitutes A’s sole invention, with the result that Reference P is not available as prior art against the claim.
37 C.F.R. 1.130 Affidavit or declaration of attribution or prior public disclosure under the AIA
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b).
appropriate affidavit or declaration under 37 CFR 1.130(a) (attribution) for 102(b)(1)(A), or 1.130(b) (prior public disclosure) for 102(b)(1)(B)
102 statutory bar
The Patent Cooperation Treaty (PCT) establishes a system for filing international patent applications. PCT is applicable to ? not ?
PCT case: The 102(b) statutory bar is measured?
back from the PCT filing date
how to file PCT
chapter I:the applicant has one opportunity to amend the claims within 2 months after establishment of search report
the application is published at 18 months
applicant may file a demand for Chapter II proceedings (19 month)
applicant may enter the national stage in any designated state (30 month)
if the applicant files a chapter II demand by the 19 month date, the application will be subjected to international preliminary examination before an international preliminary examining authority (IPEA)
to enter must file?
National Stage – 365(c)
Deadline to enter national stage is 30 months from first priority date/PCT filing date. To enter US national stage, applicant must file: 1) fee, 2) when required, a copy of the international application and English translation, 3) when required, amendments with English translations, and 4) oath/declaration of the inventor. In practice, usually the fee and cover sheet are all that is required by the 30-month deadline.
A petition to revive may be filed if the application does not meet the necessary requirements by the 30-month date.
The application is subject to publication if the PCT application was filed on or after 11/29/00.
1810: Getting the International Filing Date:
1. At least one applicant must be a U.S. Resident to use the U.S. as an RO and get an International Filing Date
2. The IA must be in English
3. The IA must contain at least the following:
1. An indication that the app is intended to be an IA
2. The designation of at least one Contracting State (member) of the Patent Cooperation Union;
3. The name of the applicant (before 20040101 this had to be all applicants, but on or after 20040101 it only needs to be 1 applicant).
4. A section that contains a description; (starting on its own page; this includes necessary drawings too)
5. A section with at least 1 claim (again, separate page).
If you want to demand a Chapter II search, you must do so before
i) if the IA is filed on or after 1/1/04, either 3 months from the transmittal of the international search or 22 months from the priority date, whichever is later; or ii) if the IA is filed before 1/1/04, 19 months from the priority date.
pct 1) Filing date is ? when everything’s right but all apps are non-US citizens
same as filed at RO/US
pct 2) is there 102(e) date for a PCT national stage patent or publication filed after Nov. 29, 2000 that does not publish in English (even if Fee/Oath/Translation submitted)
There is NO 102(e) date
pct 3) is there 102(e) date for Pre-Nov. 29, 2000 PCTs
Pre-Nov. 29, 2000 PCTs get a 102(e) date as of receipt of last of Fee/Oath/Translation
pct 4) When an applicant doesn’t file a complete spec with the International RO, an invitation to correct will be sent, giving between 10 days and 1 month to correct (see PCT rule 26.2). when will the filing date be?
However, the filing date accorded the application, much like with a Notice of Omitted Items, will be when the error is corrected; thus, if the 1-year term from the priority app sought to be claimed in the PCT expires DURING the 1-month period to correct, the latest you can really file the missing spec pieces is the 1-year deadline, regardless of how much time is left in the 1-month invitation. (Again, see PCT Rule 26.2 and MPEP 1810).
if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months.
in order to establish the optional international preliminary examination, applicant must?
make a demand for it by the later of 3 months from issuance of the international search report and the written opinion, or 22 months from the priority date
statutory vs nonstatutory double patenting rejection
Where the claims of an application are substantively the same as those of a first patent, they are barred under 35 U.S.C. 101 - the statutory basis for a double patenting rejection.
Where the claims of an application are not the “same” as those of a first patent, but the grant of a patent with the claims in the application would unjustly extend the rights granted by the first patent, a double patenting rejection under nonstatutory grounds is proper.
provisional double patenting rejection
Occasionally, the examiner becomes aware of two copending applications that were filed by the same inventive entity, or by different inventive entities having a common inventor, and/or by a common assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 103(c)(2) and(3),thatwouldraiseanissueofdoublepatenting if one of the applications became a patent.
court permitting the examiner to make a “provisional” rejection on the ground of double patenting. only when commonly owned...
What happens if the Patent Office determines at the conclusion of a supplemental examination that there is a substantial new question of patentability?
2200: An ex parte reexamination is ordered, which will consider any and all evidence pertaining to patentability, including but not limited to sale bars or public use.
2800 for supplemental examination
2800 Supplemental examination provisions of the AIA provide a patent owner with a mechanism to request that the Office consider, reconsider, or correct information believed to be relevant to the patent.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents and printed publications. The "information" may include any information that the patent owner believes to be relevant to the patent.
INCLUSION OF COPYRIGHT NOTICE, tm
When the specification includes a proper descriptive statement of the design (see MPEP § 1503.01, subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words “and described” must be added to the claim following the term “shown”; i.e., the claim must read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.”
can u use secondary consideration like unexpected results or commercial success to overcome?
2131.04 Secondary Considerations
can u use Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the inven tion’ or is not recognized as solving the problem solved by the claimed invention to overcome?
2131.05 Nonanalogous Art
AIA 135 interference
Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee
AIA 35 U.S.C. 135 applies to a claim to an invention that is the “same or substantially the same” as a claim of an earlier application
135 interference vs. 130 affidavit against deriver
Claims that are either identically or substantially similar to those filed by the deriver can be handled by interference 135, and cannot resort to a 130 affidavit with respect to those claims and must pursue a derivation proceeding. for Claims that are quite different than those claims submitted by the deriver, a 130 affidavit can be used to remove the deriver's reference as prior art for those claims.
Which, if any, of the following statements is correct relative to an obviousness rejection?
Obviousness is determined based upon whether the claimed invention would have been obvious to one of skill in the art at the time of conception.
Obviousness is determined based upon whether the claimed invention would have been obvious to one of skill in the art as of the effective filing date of the claimed invention.
Obviousness is determined based upon whether the claimed invention would have been obvious to one of skill in the art at the time of the filing of the nonprovisional patent application.
Obviousness is determined based upon whether the claimed invention would have been obvious to one of skill in the art as of the date the invention was reduced to practice.
AIA 35 U.S.C. 103 determines obviousness as of the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made. Under pre-AIA examination practice, the Office used the effective filing date as a proxy for the invention date, unless there is evidence of record to establish an earlier date of invention. Ultimately, however, the question under pre-AIA was whether the claimed invention was obvious as of the date of conception of the invention
Under the AIA, disclosures made one year or less before the effective filing date of a claimed invention may not be prior art. Which disclosures potentially qualify for this grace period and can be removed as prior art?
I. Printed publications.
II. Issued patents.
III. Public use.
IV. Offers for sale.
AIA 35 U.S.C. 102(a)(1) says: “A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention….”
The Office’s interpretation of AIA 35 U.S.C. 102(a)(1) is that the AIA grace period extends to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability. This interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention one day before he filed an application could not obtain a patent.
Which of the following are required in order to obtain a filing date of a nonprovisional patent application at the United States Patent and Trademark Office?
At least one claim.
A specification describing the invention.
A drawing if necessary to understand the invention.
(B) is correct. Thanks to the Patent Law Treaties Implementation Act of 2012, a claim is no longer required to file an application in the United States. Specifically, Sec. 201 of the Provisions to Implement the Patent Law Treaty explains “The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.” Sec. 201 also makes it clear, however, that if at least one claim is not supplied in such time as the Director requires after filing, the application shall become abandoned. A specification is still required, but the USPTO has also said that drawings are no longer required to establish a filing date.
Jocelyn Carter is the inventor of a unique and highly concealable spy camera, which incorporates facial recognition modules. Carter files a nonprovisional patent application on April 2, 2012. The nonprovisional patent application does not contain any additional disclosure, but is filed with 21 claims, 4 of which are independent claims. On March 14, 2013, a Continuation-in-Part (CIP) is filed, further disclosing a previously undisclosed computer-implemented filtering system for sorting the recognized faces. On March 17, 2013, a continuation of the April 2, 2012, nonprovisional patent application is filed.
Which of the following accurately states which law these applications will be examined under?
I. The April 2, 2012, nonprovisional patent application will be reviewed with the examiner applying pre-AIA.
II. The March 14, 2013, CIP will be reviewed with the examiner applying pre-AIA.
III. The March 17, 2013, Continuation will be reviewed with the examiner applying AIA.
(I) is correct because the nonprovisional patent application filed on April 2, 2012, will be examined under pre-AIA because it was filed prior to March 16, 2013. (II) is correct because the CIP will be treated under pre-AIA. Although it contains a new embodiment not found in either the provisional or nonprovisional applications, it was filed right before the trigger date for AIA application. Applications filed on or after March 16, 2013, are the first that are potentially open for treatment under the AIA. (III) is incorrect because the continuation filed on March 17, 2013, will be treated under pre-AIA because as a continuation the disclosure is identical to the parent, which in this case was filed on April 13, 2012. Thus, even though it was filed on or after March 16, 2013, it is entitled to pre-AIA based on its priority date.
Stanley Thaddeus Wojciehowicz is the inventor of an improved, combination coffeemaker/motion detector, which is useful for making better than mediocre coffee and doubles as a home security system. He first files a patent application in Poland on February 28, 2012. Subsequently, he files a patent application in the U.S. on February 27, 2013, which claims the benefit of his Polish filing date. The Polish application publishes on August 28, 2013, and the U.S. patent application publishes on August 29, 2013. The Polish patent is granted on March 14, 2014, and the U.S. patent is granted on October 22, 2014.
On November 1, 2014, Carl Levitt files an application claiming a combination coffeemaker/motion detector with integrated radio.
Which of the follow dates is the earliest date the Wojociehowicz disclosure will be prior art to Levitt?
A February 28, 2012.
B February 27, 2013.
C August 28, 2013.
D March 14, 2014.
E October 22, 2014
(A) is correct. AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO-published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, a U.S. patent, a U.S. patent application publication, or WIPO-published application is effective as prior art as of the filing date of the earliest such application, regardless of where filed.
Arnold Horshack is the inventor of a new and improved turkey call, which he conceived and reduced to practice on January 30, 2012. The device creates the most obnoxious sound, which approximates a wheezing hyena. Field studies show that turkeys appear to be drawn to the noise out of curiosity, or perhaps pity for what sounds like a dying animal. Horshack files a patent application in Canada on April 1, 2012, and on May 1, 2012, he files a U.S. patent application claiming priority to his Canadian filing date. For financial reasons, the U.S. application is expressly abandoned on July 1, 2012. The Canadian application publishes on October 1, 2013.
Freddie Washington files a U.S. nonprovisional patent application on November 1, 2013, which relates to a turkey call that approximates a wheezing coyote.
Which of the following would be the earliest date the Horshack disclosure could be used as prior art against Washington?
A January 12, 2012.
B April 1, 2012.
C May 1, 2012.
D July 1, 2012.
E October 1, 2013.
But will we have a published U.S. application, an issued U.S. patent or a published PCT? There is no mention of a PCT application, and the U.S. application was abandoned so there will be no U.S. patent. Thus, this question turns on whether there will be a U.S. published application that claims priority to Horshack’s Canadian filing date. A U.S. patent application will be published promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless the application is no longer pending. See 37 C.F.R. 1.211(a)(1). Because the Horshack U.S. patent application was expressly abandoned, it will not publish. Thus, Horshack will not obtain a U.S. patent and there will be no U.S. publication. Therefore, the Canadian filing date will not be the prior art date. That means the earliest prior art date would be the date of the Canadian publication, making (E) the correct answer.
Jasper Collins filed a patent application on February 15, 2012. He received a Notice of Allowance on January 7, 2014, paid the issue fee on February 5, 2014, and the patent issued April 15, 2014. During the prosecution of his original patent application, he made a substantial improvement. He filed a continuation-in-part application on January 10, 2014, which included disclosure not previously filed and claims drawn to that disclosure, as well as other claims not previously presented but which were previously supported. Because this new improvement was so important and there were significant licensing opportunities, Jasper paid the fee to accelerate the CIP. In the First Office Action on the Merits, which was dated February 28, 2014, the examiner rejected Jasper’s claims based on prior art under AIA 35 U.S.C. 102(a)(1). Surprised that the examiner applied AIA 35 U.S.C. 102(a)(1), Jasper comes to you for help on March 3, 2014. Which of the following represents the best advise to give Jasper?
A Because the CIP contained claims not supported until May 16, 2013, the entire CIP will be treated under AIA.
B Because the issue fee has been paid in the previous nonprovisional application, it is too late to do anything.
C Because the Notice of Allowance has already been received, it is too late to do anything.
D The CIP will be treated under AIA, but since the parent application has not yet issued and remains pending a continuation of the parent could be filed and the claims having support dating back to the parent application will then be treated under pre-AIA.
E Cancel the claims in the CIP that are directed to the matter not presented until the January 10, 2014, filing.
(D) is correct. If an application on filing contains at least one claim having an effective filing date before March 16, 2013, and at least one claim having an effective filing date on or after March 16, 2013, the application will be examined under AIA even if the latter claims are cancelled. Thus (E) is incorrect. However, if a pre-AIA parent application is pending and an applicant inadvertently files a continuing application with claims having an effective filing date on or after March 16, 2013, the applicant could file a continuation from the pre-AIA parent application without any claim to the benefit of the AIA application and without any claim to a claimed invention having an effective filing date on or after March 16, 2013. In this situation, the continuation would be examined as a pre-AIA application under pre-AIA 35 U.S.C. 102 and 103. Based on the facts presented, the parent application has not yet issued, so a continuation can be filed, making (D) the superior answer.
(A) is not correct because it is inferior in comparison to (D). (A) is correct insofar as it goes, but the call of the question asks what advice do you give Jasper. Since there is a way that he can still have pre-AIA apply to at least the parent disclosure this advice, although correct, is incomplete. With a continuation filed relating to the parent application Jasper can still seek additional claims based off the original disclosure of the parent with pre-AIA law being applied.
Samantha Rocks is the inventor of a new musical instrument called “the siren,” which produces enchanting, melodious tones like no other. With the assistance of a patent practitioner, Rocks filed a provisional patent application on January 5, 2014. Unfortunately, Rocks has fallen on hard times and can no longer afford the services of a patent practitioner. Undeterred, Rocks decides to file her own nonprovisional patent application, which was accomplished on January 15, 2015. The nonprovisional patent application was identical to the provisional filing.
Which of the following most accurately reflects the status of the January 15, 2015, nonprovisional patent application?
A The nonprovisional patent application will be considered a substitute application.
B The nonprovisional patent application will be considered timely filed because it was filed within 14 months of the filing of the provisional.
C The failure to preserve priority can be restored if the delay in the filing the nonprovisional patent application was unintentional
D If Rocks files a petition to extend the provisional patent application, she will be able to claim priority to the provisional in the January 15, 2015 filing
E None of the above.
(C) is correct. Thanks to the Patent Law Treaty (PLT), applicants who unintentionally fail to file an application within the 12-month priority period can have that period extended up to an additional 2 months.
(D) is incorrect because a provisional patent application only lasts 12 months and then goes abandoned. Provisional applications cannot be extended.
Sebastian Wilcox files a nonprovisional patent application on December 17, 2013. The application filed contains a specification sufficient to satisfy 35 U.S.C. 112(a), but does not include any claims. In due course, the Patent Office sends a Notice of Incomplete Application, indicating that a filing date has not been awarded. What should Wilcox do?
A Notify the Patent Office that pursuant to the Patent Law Treaty Implementation Act of 2012, a claim is no longer required at the time of filing in order to have a filing date awarded. Specifically request that a filing date of December 17, 2013, be awarded.
B Petition the Commissioner to award a filing date in light of the Patent Law Treaty Implementation Act of 2012.
C Convert the nonprovisional patent application into a provisional patent application because provisional patent applications do not require claims.
D Submit one or more claims in a Preliminary Amendment together with a request to retroactively grant December 17, 2013, as the official filing date.
E It is too late to do anything to fix this and salvage December 17, 2013 as a filing date. therefore, Wilcox should file a substitute application as soon as possible.
(C) is correct. It is true that the Patent Law Treaties Implementation Act of 2012 (“PLT”) changes the law with respect to obtaining a filing date. Specifically, a claim is no longer required in order to have a filing date awarded. However, the provisions of the PLT that make it unnecessary to have a claim in order to obtain a filing date apply only to applications filed on or after December 18, 2013. Because this application was filed on December 17, 2013, a claim was required in order to obtain a filing date.
Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. The procedure for conducting post grant review took effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.
************The post-grant review provisions, however, only apply to patents issued from applications that have an effective filing date on or after March 16, 2013.
inter parte reexamination 2600
Any third party requester, prior to September 16, 2012, can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999);
ex parte reexamination 2200
Through ex parte reexamination, the patent owner or a third party may lodge a request for USPTO examination of an already-granted patent based on patents and printed publications that they bring to the USPTO’s attention. Such a request can be filed at any time during the enforceability of a patent, and the requester must establish that the submitted prior art establishes a substantial and new question of patentability (SNQ), at which point the USPTO will grant the reexamination request and order examination (i.e., reexamination) of the patent in question.
derivation vs interference
A derivation proceeding is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner's application. The procedure for derivation took effect on March 16, 2013.
An interference proceeding, also known as a priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. Until the Leahy-Smith America Invents Act of 2011, it was a unique procedure in the patent law of the United States.
how long after foreign filing must the us one be filed to claim the priority
the Patent Law Treaties Implementation Act (effective on December 18, 2013.) provides an additional two months within which to claim priority. In order to avail yourself of this additional two months to claim priority, the right to claim priority must be restored. The right to claim priority can be restored only if the delay in filing the subsequent application was unintentional.
Patent Law Treaties Implementation Act
effective December 18, 2013.
provides an additional two months within which to claim foreign priority.
filing date as specification received date for non-design
the filing date of a design application is the date on which the USPTO receives the specification as prescribed by 35 U.5.C. 112, which includes at least one claim as prescribed by 35 U.5.C. 112(b), and any required drawings.
2145 Consideration of Applicant’s Rebuttal Arguments
X. ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES
D. References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose
machine or trasformation
The factors include inquiries from the machine-or-transformation test, which remains a useful investigative tool, and inquiries gleaned from Supreme Court precedent. See In re Bilski, 545 F.3d 943, 954, 88 USPQ2d 1385, 1391 (Fed. Cir. 2009) (stating that “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”); and Bilski, 561 U.S. at ___, 130 S. Ct. at 3227, 95 USPQ2d at 1007 (stating, “This Court's precedents establish that the machine- or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’”).
phase II of AIA
on sep 16, 2012
prior to that, only inventor could apply for an app is US
after, legal guardian of the inventor, joint inventor, assignee can also full
inter partes reexam
The standard for challenge is a reasonable likelihood that Avery will prevail. The SNQ standard has been replaced in inter partes reexam requests filed after 9/16/2011.
Inter partes reexam only considers patents and printed publications; inventorship CANNOT be challenged.
The eligibility date for patents to be considered for inter partes reexam is on or after Nov. 29, 1999.
Inter partes reexam has been discontinued as of 9/16/2012.
There is no automatic conversion to inter partes review. Since inter partes reexam ends 9/16/12, the PTO will not accord the submission a filing date.
ex parte reexam
The standard for challenge for ex parte reexam remains unchanged as SNQ. The inventorship issue will not be considered.
*SNQ is a lower threshold of review to initiate a reexam.
The eligibility filing date for patents to be considered for inter partes reexam is on or after Nov. 29, 1999.
708 Order of Examination
708.02(b) Prioritized Examination
may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim.
A request for prioritized exam can now be filed following the filing of an RCE. A new filing is not required.
Have all fees paid at the time of filing, Filed with an oath or declaration at the time of filing.
The application must be a utility or plant nonprovisional application, including a continuing application
The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) Mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination
The request for prioritized examination and any required fees must be submitted upon filing. otherwise dismissed
an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination.
35 U.S.C. 119, 120
200 right of priority
119(e): claim priority of a provisional
120: claim priority of another non-provisional
119(a)-(d) and (f): Right of Priority of Foreign Application
Harold Finch is the inventor of a system and method for performing rapid facial recognition. The invention begins its work when the image-capture device captures a facial image. The feature extraction module extracts features of the facial image to generate a set of feature data that is broadcasted to a response-recognition computing unit. The feature-recognition modules then perform distributed facial recognition for generating recognition results. Finch files a provisional patent application on April 15, 2011. The provisional filing fully describes the invention as it existed at the time of filing, but does not include any claims. The provisional filing is subsequently followed by the filing of a nonprovisional patent application on April 13, 2012. The nonprovisional patent application does not contain any additional disclosure, but is filed with 20 claims, 4 of which are independent claims. On March 15, 2013, a Continuation-in-Part (CIP) is filed, further disclosing a self-servicing automated transaction machine that permits an authorized user to perform transactions therewith based on facial recognition. On March 17, 2013, a continuation of the April 13, 2012, nonprovisional patent application is filed. On September 20, 2014, a First Office Action on the Merits is received in the nonprovisional filing, and an Amendment containing new claims supported by the original filing is presented on November 3, 2014.
Which of the following accurately states which law these applications will be examined under?
The April 13, 2012, nonprovisional will be examined applying AIA because of the addition of claims not presented in the provisional filing.
The April 13, 2012, nonprovisional will be examined applying AIA because of the new claims added by Amendment on November 3, 2014.
The March 15, 2013, CIP will be examined applying AIA.
The March 17, 2013, continuation will be examined applying AIA.
None of the above.
The nonprovisional patent application filed on April 13, 2012, will be examined under pre-AIA because it was filed prior to March 16, 2013. Notice that, because the disclosure of the provisional and nonprovisional filings are identical, the nonprovisional will be entitled to the priority date of the provisional. Adding claims at the time of filing on April 13, 2012, does not change this, nor does adding new claims on November 3, 2014. In each instance, the claims are supported by the original filing.
The CIP will be treated under pre-AIA. Although it contains a new embodiment not found in either the provisional nor the nonprovisional applications, it was filed right before the trigger date for AIA application. Applications filed on or after March 16, 2013, are the first that are potentially open for treatment under the AIA.
The continuation filed on March 17, 2013, will be treated under pre-AIA because, as a continuation, it is identical to the parent, which in this case was filed on April 13, 2012. Thus, even though it was filed on or after March 16, 2013, it is entitled to pre-AIA treatment based on its priority date.
Adam Samuels is the inventor of a video camera for mounting on a weapon, which transmits a video signal to a video display in communicably connected goggles worn by a user. The invention is for the purpose of improving aim in a non-military, game-hunting context. The first patent application for this invention was a provisional patent application filed on Friday, January 18, 2013. The provisional patent application did not include any claims, but did fully and appropriately disclose an embodiment of the invention for use with long guns, such as a rifle. A nonprovisional patent application was subsequently filed on Monday, January 20, 2014. This nonprovisional filing contained a specification in compliance with 35 U.S.C. 112, the proper fee, an Application Data Sheet identifying the full legal name of the inventor and the inventor’s mailing address, and three independent claims. Claim 1 related to a device for use with long guns, such as a rifle. Claim 2 related to a device for use with a pistol. Claim 3 related to a device for use with a machine gun mounted to a vehicle. A Notice of Missing Parts was issued by the Patent Office because the nonprovisional filing did not include an oath or declaration. In response to the Notice of Missing Parts, an oath signed by the inventor was submitted. The Oath did not, however, identify the inventor’s mailing address.
Which of the following is/are correct?
I. Samuels has until May 20, 2014, to notify the Patent Office that the nonprovisional patent application contains matter not previously disclosed in the previously filed provisional patent application.
II. Samuels does not have to notify the Patent Office that the nonprovisional patent application contains matter not found in the previously filed provisional patent application because the nonprovisional patent application is a substitute application not capable of claiming priority from the provisional filing.
III. The oath filed is defective because it did not contain the inventor’s mailing address.
I is correct because the nonprovisional filing is a transition application. Where a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the later of (1) four months from the actual filing date of the later-filed application, (2) four months from the date of entry into the national stage in an international application, (3) 16 months from the filing date of the prior-filed application, or (4) the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application. Here, four months after the filing date is May 20, 2014, which is later than 16 months after the filing date of the provisional application, which would be May 18, 2014. Thus, the answer is the later of these two dates, which is May 20, 2014.