MPEP 200

Question 1

Types of U.S Patent Applications

Answer 1

(1) national application - filed directly at the Patent Office
(2) PCT application - which has entered the national stage

Question 2

National Application

Answer 2

Where is it filed - USPTO
Filing date- gets a filing date with or without oath or declaration. can be given an data with a NOA
Examiner Discretion - applies in restrictions for separating out inventions

Question 3

What is needed for a national application

Answer 3

specifications
clams
drawings
(this is your filing date)

Question 4

PCT National Stage Application

Answer 4

Unity of invention practice applies in restrictions

Question 5

What is needed for a National Stage Application to receive a filing date

Answer 5

FOT (need FOT to step onto stage)
Fee
Oath
Translation
(need all to receive a filing date)

Question 6

Unity of Invention

Answer 6

all claims must similarly relate to the same content then there is unity (NOT examiners discretion)

Question 7

Inventorship Requirements

Answer 7

must contribute to conception of at least one thing
ensure all inventors are correctly listed (corrections may influence the basis of priority)

Question 8

Requirements for Earlier Filing Date (inventor ship)

Answer 8

at least one common inventor between the two applications must be present
(applies for domestic and foreign)

Question 9

How is inventorship established

Answer 9

submitting a complete signed 1. ADS
2. Signed oath/declaration
3. Substitute Statement

Question 10

Who owns inventions?

Answer 10

inventors, even if they ar obligated to assign/transfer the rights in any invention made
an assignment can be filed to transfer the invention to the “true owners”

Question 11

What can owners do?

Answer 11

1. actively control prosecution
2. remove inventors from participating

Question 12

37 CFR Rule 1.48

Answer 12

Submission of Correct Application Data Sheet
1. listing of correct inventors
2. Fee
3. Submission of oath by added inventors

Question 13

AIA

Answer 13

American Invents Act
PRE- First to Invent
POST- First to file

Question 14

AIA Inventor Correction

Answer 14

only consent of assignee is needed. NOT required
there must have been an error (no deceitful intent)

Question 15

Correction of Inventorship - NON Provisional Apps

Answer 15

signed ADS
Identifies each inventor by legal name, address info
Required Fee

Question 16

Correction of Inventorship - Provisional Apps

Answer 16

Signed request
Legal names
Required fee
(needed once cover sheet is filed)

Question 17

Correction of Inventorship - Special Circumstances

Answer 17

1. Reissue
2. Issued Patents
   2a. Statement from ALL signees, statements and FEE
3. Case before PTAB (request in app must be in form of a motion)

Question 18

Correction of Inventorship - Continuing Apps

Answer 18

1. NEW Oath/Declaration or Substitute Statement is not required that claims benefit of an earlier app (provided that an O/D/Sub statement was executed by or w respect to such inventor in earlier-filed app)
2. Inventorship of continuing app is the inventors specified in the ADS filed before or concurrently with copy of Inventors O/D from earlier app
   (if inventorship was not filed that way, then the inventorship is the inventorship set in the copy unless it is accompanied by a statement signed w each inventor in the continuing app)

Question 19

Correction of Inventorship - Miscellanies Oath/Declaration Facts

Answer 19

1. Any new joint inventor named in continuing app must provide an oath or declaration in compliance with the section
2. Assignment may serve as an oath or declaration of the assignment as executed if
   - it includes information and statements required AND a copy of assignment is recorded

Question 20

7 No’s to Provisionals

Answer 20

No IDS
No Claims
No Examination or Amendment
No Oath or Declaration
No Design Apps
No Priority from Other Apps
No Priority from Design Apps

Question 21

Required Parts of a Provisional

Answer 21

1. Cover sheet specifying : type of application (application), names of inventors, residence of inventors, title of invention, name and registration number of agent/attorney, docket number of filer, correspondence address
2. Filing Fee
3. Specifications (35 USC 112)
4. Drawings (if any)

Question 22

Purpose of Provisional

Answer 22

placeholder to be used to claim priority (but must have overlapping information with the other application)

Question 23

Revival (Provisional)

Answer 23

only possible within its 12 month pendency
(unintentional)
extended to 14 months + a big fee

Question 24

Rule 1.53 (c)

Answer 24

Minimum requirements for a provisional to receive a filing date
1. specifications
2. drawings
(Note it must support understanding of invention under 35 USC 112(a) and 113)

Question 25

Notice of Missing Parts (Prov)

Answer 25

if something is missing from the cover sheet- have a 2 month period to respond (note the effective filing date of provisional may be shifted to the date missing parts are submitted)

Question 26

Utility Applications (NON-Provisionals)

Answer 26

filed WITHIN (1) year post provisional application. Can take priority date of provisional (only if overlapping information) NOTE: after 1 year period provisional is abandoned

Question 27

Criteria for Priority

Answer 27

at least (1) inventor from provisional has to be in utility

Question 28

Conversion NON-Provisional to Provisional

Answer 28

MPEP 601.01 (c) file a petition with a FEE must be filed within 1st year

Question 29

Conversion Provisional to NON

Answer 29

upon request shortens term

Question 30

Continuation Applications

Answer 30

1. CO-Pending 2. second... n-th etc. application by SAME applicant for SAME invention claimed in a PRIOR 3. NON-Provisional Application, and filed BEFRE the original (parent) application becomes abandoned or issued

Question 31

When to file and elements of Continuation

Answer 31

1. Serve as a fresh start with prosecution after a FINAL rejection rather than taking an appeal or filing for RCE 2. Can be in form of fresh set of papers with new Oath or copy of the oath in parent (NO new oath is required)

Question 32

Alternatives to Continuation

Answer 32

1. RCE 2. Appeal

Question 33

Continuation in Part (CIP)

Answer 33

1. continue with the same invention + new matter 2. second applicaiton by the SAME applicant for the SAME invention claimed in a prior non-provisional application 3. CO-Pendent 4. Filed under Rule 1.53 (b) OVERALL repeats some substantial portion of the earlier application and ADDS matter not disclosed in the earlier application NOTE: multiple filing dates depending when subject matter arrived at the USPTO

Question 34

Divisional Application

Answer 34

1. Divides the parent app into separate inventions claims subject matter 2. disclosed in the earlier parent application 3. CO-Pending

Question 35

Substitute Application

Answer 35

1. NOT A CONTINUATION 2. must have the same disclosure as the earlier application (by mistake or on purpose) are NOT co-pending with parent 3. NO benefit from earlier application

Question 36

Timing of Continuing Applications

Answer 36

1. Filed at any time during prosecution or appeal as long as parent is alive to claim benefit 2. should contain a sentence incorporating the prior application by reference

Question 37

35 USC 111 - Filing of Applications

Answer 37

ALL apps must be filed under Rule 1.53 1.53 (b) can be used to file ANY app or any form of continuation thereof Note: copy of original app and oath with suffice for continuations and divisions

Question 38

Request for Continued Examination (RCE)

Answer 38

filed with a request, fee and a submission of something for the examiner to consider. NOT a new application filing

Question 39

Rule 1.53

Answer 39

1.53 (b) - Continuation filing (begin or begin again) 1.53 (c) - Provisional Filing 1.53 (d)- Design (for filing divisional and continuations) Naming of Inventors is not necessary to get a filing date

Question 40

37 CFR 1.53 (d) Continued Prosecution Applications (CPAs)

Answer 40

1. Design Patents only 2. file of the parent in continued while the parent itself is abandoned 3. Same serial number as its parent with no reference of parent 4. Cannot be filed unless parent is dead 5. Everything from parent carries over (small entity statement, claims for foreign priority, etc)

Question 41

Reference Filig

Answer 41

when an application has previously been filed and applicant needs to submit an ADS that references the previous file application by country serial number and filing date certified copy of reference app must be completed within the 16 months of the original reference filing date

Question 42

When is a translation of required for foreign applications

Answer 42

to overcome a rejection based upon an intervening reference a reference which has a date as prior art BETWEEN the U.S filing date and the earlier priority date

Question 43

Requirements to secure prioirty

Answer 43

1. Prior application must satisfy 112 (a) 2. a proper claim for priority must be made in the subsequent application (2nd application)

Question 44

35 USC 120

Answer 44

Domestic Priority US CO-pending application or earlier application that can be traced along a chain of other CO-Pending Apps

Question 45

35 USC 112(a)

Answer 45

must be enabling have proper description disclose best mode

Question 46

35 USC 119

Answer 46

Foreign and Provisional Priority

Question 47

Priority Claim

Answer 47

claim is made within 16 months from the filing data of the earliest-filed application or 4 months from the filing of the later-filed patent application different claims can have different effective filing dates

Question 48

Effective Filing Date

Answer 48

when an application is entitled to domestic priority because it is a proper continuation, CIP, or divisional, then the effective filing date is the earlier date the parent was filed Note: a claim is entitle to the filing date of the earliest patent application

Question 49

Foreign Prioirty

Answer 49

1. earlier filing fate granted within a year of the first filing date 2. CANNOT re-establish 1 year time period (you must withdraw and refile within the same country to restart) 3. pushes back date of invention 4. can create a prior art date under 102(a) as. its effective filing date if it becomes the basis for a published or issues U.S WIPO (PCT) app NOTE: if a publication is made after first filing (foreign) but before the 2nd filing (U.S) it cannot be considered prior art if US claims priority

Question 50

Prior Art Date

Answer 50

Date which publication/disclosure was made prior art date of a reference under PRE-AIA 35 USC 102(e) may be the International filing date

Question 51

35 USC 120 and 121

Answer 51

Domestic Priority under a NON provisional counts in both post and pre AIA (bc must prove made in US and also filing date)

Question 52

Restoration of Rights

Answer 52

If failure to file the license (foreign) was unintentional a US application may be filled up to 14 months following a foreign filing and have priority reissued under PLTIA Hefty FEE

Question 53

Proper

Answer 53

paper has everything necessary

Question 54

PRE- AIA

Answer 54

102(e) first to invent system inventors can rely on their earlier works and experimental results to establish novelty (conception and reduction) A U.S application hen published or issued can be used as prior art as its filing date does NOT pertain to foreign because it only matters if the invention was made in US

Question 55

POST AIA

Answer 55

first to file system

Question 56

Requirements for Obtaining Foreign Priority

Answer 56

1. file a claim for priority (ask to benefit of foreign filing in a ADS) 2. file a certified copy of original foreign application

Question 57

Application Data Sheet (ADS)

Answer 57

bibliographical information lists name of inventor and any priority the applicant beleives they are entitled to Signed ADA is the only way to insert entitlement of ANY benefit of a prior filed application (US or Foreign)