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1

Chapter 200

Types, Cross-Noting, and Status of Application

2

Things to Know in Chapter 200

1. Inventorship
2. How to correct inventorship
3. The definitions and differences between the various types of Patent Applications
4. The rules of foreign and domestic priority

3

National Application

An Application filed directly in the United States by anyone.

4

National Stage Application

International Application that;

1. Foreign Origin
2. Lists U.S.
3. Preserves Rights

5

Separating Out Inventions in Applications: National Stage Application

Unity of invention

6

Separating Out Inventions in Application: National Applications

Examiner Discretion

7

FOoT Rule

In order to get a filing date, an international application must have:
1. Fee
2. Oath
3. Translation

8

National Application Minimum Parts

1. Specification
2. Claim
3. Drawing

If no FOT rule, Notice of Missing Parts, told you have a filing date but send these in.

9

When does a National Application get a Filing Date?

When the following has been presented:
1. Spec
2. Claim
3. Drawing

10

National-Stage Application Minimum Parts

1. Specification
2. Claim
3. Drawings
4. Fee
5. Oath
6. Translation

11

When does a National-Stage Application get a Filing Date?

When the following has been presented:
1. Specification
2. Claim
3. Drawings
4. Fee
5. Oath
6. Translation

12

Two Stages of Correction of Inventorship

37 CFR 1.48

1. Pre AIA

2. Post AIA (September 16, 2012)

13

Basic Rule behind both Stages of Inventorship

You cannot correct purposeful conduct.

Patent Office can change by adding or subtracting inventors either for an issued Patent or a Pending Application.

14

Basic Rules to Pre AIA Correction of Inventorship

Must State:
1. "Without deceptive intent"
AND

2. "With the written consent of the assignee"

15

Basic Rules to Post AIA Correction of Inventorship (September 16, 2012)

Only consent of the assignee has to be obtained and is sometimes not required.

A signed ADS:
- inventors, address, signatures

Fee

**Get oath or sub statement on file if they wont sign

16

What is Inventorship?

The exact combination of individuals listed as inventors.

17

Correction of Inventorship: Post AIA the New Section 1.48

Available for all applications:
1. Whether filed before, on or after September 16. 2012.
AND

2. Whether there is a filing date somewhere in the chain post-September 16, 2012.

18

How to Establish Inventorship?

1. By submitting a complete signed Application Data Sheet (ADS),
2. Signed oath
OR
3. A substitute statement.

19

What must a request to correct or change Inventorship of a Non-Provisional Patent Applications contain?

1. A signed ADS in accordance to 1.76 that identifies each inventor by name and address
AND
2. The required fee.

**New Inventor must comply with establishing Inventorship

20

What must a request to correct or change Inventorship of a Provisional Patent Applications contain?

1. A request, signed by a party set forth in Section 1.33(b), to correct the Inventorship that identifies each inventor by his or her legal name;
AND
2. The required fee.

21

NOTE ABOUT TEST

The Test typically tests over Correction of Inventorship on Pending Patent Applications

22

What does Rule 1.48 not apply to?

- Re-Issues,
- Issued Patent
- Case before the Patent Trial and Appeal Board

23

Correcting Inventorship in Continuing Applications

A newly executed/ substituted statement not required provided:

1. An Oath/Declaration (O/D 1.63), Sub Statment (1.64) was executed by or with respect to such inventor;
AND

2. An O/D, SS was filed in the earlier-filed application;
AND

3. An copy of such O/D, SS is submitted in the continuing application.

24

Inventorship of a Continuing Application filed under 111(a)

Established in Inventor/Joint Inventorship are specified in ADS.

If not, the Inventor/Joint Inventorship is set forth in the copy of the Oath or Declaration from the earlier-filed application UNLESS YOU FILE A SIGNED STATEMENT.

25

Miscellaneous Oath/Declaration Facts

1. Any new inventor or JI, must provide Oath/Declaration.

2. An assignment may serve as Oath/Dec IF:
- Includes info and statements required by 1.63 (a, b)
- Includes a copy of the assignment is recorded.

3. Any reference to an Oath/Dec includes an assignment.

4. Oath/Dec MUST be signed/executed according to;
- 1.66
- Acknowledge willful false statement is punishable under 18 USC 1001.

5. A supplemental O/Dec would be filed but may not be read by the Patent Office.

6. Any request for correction of the named inventorship must comply with 1.48 in an application and 1.334 in a patent.

26

Provisional Applications: Facts Likely Tested

1. Information Disclosure Statements (IDS) are NOT permitted.

2. Regular applications can be converted to provisional applications within the first year of filing.

3. Provisional Application can be treated as a regular application upon request.

27

Definition of Provisional Applications

1. Claimless, un-examined, and temporary.

2. Must satisfy 112 (a) (specification) & drawing requirements.

3. Not Examined.

4. IDS not permitted.

5. Simply placeholders to be used later to claim priority.

6. COVER SHEET.

7. FEE

28

Elements of a Provisional Application

1. A cover sheet or signed application data sheet (ADS).
-directly identifying later card.

2. A specification as prescribed by 112.

3. Drawings (later if needed) 99.9% of time needed but NO NEW MATTER CAN BE ADDED

4. Filing Fee.

29

Minimum Requirements of a Provisional Application

1. Specification

2. Drawings

3. Cover and Fee (Through Notice of Missing Parts)

**Now it's come to anything with a Cover sheet.

30

What must a Cover Sheet identify for a Provisional Application?

1. The application as a provisional application;

2. The names or name of the inventor(s);

3. The residence of each named inventor;

4. The title of the invention;

5. The name and registration number of the agent or attorney, if any;

6. The docket number of the filer, if any;
AND

7. The correspondence address.