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Chapter 200

Types, Cross-Noting, and Status of Application


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


National Application

An Application filed directly in the United States by anyone.


National Stage Application

International Application that;

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


Separating Out Inventions in Applications: National Stage Application

Unity of invention


Separating Out Inventions in Application: National Applications

Examiner Discretion


FOoT Rule

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


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.


When does a National Application get a Filing Date?

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


National-Stage Application Minimum Parts

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


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


Two Stages of Correction of Inventorship

37 CFR 1.48

1. Pre AIA

2. Post AIA (September 16, 2012)


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.


Basic Rules to Pre AIA Correction of Inventorship

Must State:
1. "Without deceptive intent"

2. "With the written consent of the assignee"


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


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


What is Inventorship?

The exact combination of individuals listed as inventors.


Correction of Inventorship: Post AIA the New Section 1.48

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

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


How to Establish Inventorship?

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


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
2. The required fee.

**New Inventor must comply with establishing Inventorship


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;
2. The required fee.



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


What does Rule 1.48 not apply to?

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


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;

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

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


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.


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.


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.


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.


7. FEE


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.


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.


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;

7. The correspondence address.


Elements of going from Provisional to Utility Applications

1. Must be within 1 year

2. One of the inventors named in the provisional must also be named in the Utility Patent to obtain priority.


Other Facts about Provisional Applications

1. Is abandoned after 12 months after Filing Date.

2. Provisional time does not take away from 20 years.

3. You can file for a 2 month extension for $1700.
-Restoration of Priority

4. Amendments are not permitted.

5. Provisional cannot claim priority.

6. Cannot file provisional for Design Patent.

7. Cannot be used in an interference.`


The Seven No's of Provisional Applications

1. No Claims

2. No Oath or Declaration

3. No Examination or Amendment

4. No Design Applications.

5. No possible claim for priority from other applications.

6. No IDS.

7. No basis for priority for a Design Application.


Quick Differences between Substitutes, Divisions, Continuations, & CIPs

1. Substitute applications are not co-pending with earlier applications.
2. Divisional, Continuations, and CIPs are co-pending.


Varieties of Applications

1. Regular Utility Applications
2. Continuation
3. Continuation in Part (CIPs)
4. Divisional
5. Substitute


Regular Utility Patent Application

Set of paper, presented to Patent Office for examination that MUST become, in due course, either abandoned or issued.

Inventors own until they assign.


Continuation Application

Second or third application by same applications for non-provisional patent.

-Filed before abandoned or patented
-Way to start fresh
-No new oath required.


Continuation-in-Part Application

Repeats some but adds matter not disclosed in earlier applications.

Multiple filing dates are awarded.


Divisional Application

Later application carving our DISTINCT and INDIVIDUAL parts of a pending application and claiming only subject matter.

Cancel claims for Application 1 and file Application 2 for cancelled claims.


Substitute Application

Same disclosure but the old one contained MISTAKE or PURPOSEFUL ABANDONMENT.


Continuing Application

1. Continuation Application

2. Continuation-in-Part Application

3. Divisional Application


Timing of Continuing Applications

- can be done at anytime during
1. prosecution
2. appeal

- parent MUST be pending

- Cannot merely delay

- Should contain incorporating language of prior application.


Filing of Continuing Applications

Must be filed under Rule 1.53.

1.53(b) for any non-provisional application or any form of continuation.
-Begin and Begin Again

1.53(c) is for provisional applications.

1.53(d) for Continued Prosecution Application (CPA).
-Death of the Parent
-Design Only

**RCEs are not considered a new application filing.


Request for Continued Examination (RCE)

- 37 CFR 1.114- Utility or Plant application can be examined again UPON
1. Request
2. Fee Paid
3. A submission of something for the examiner to consider.


Continued Prosecution Application (CPA)

- Death and Design

- for Design Patents only

- has same serial number as Parent

- Parent must be abandoned.

- All papers carry over (but can be taken out by CPA division)

- Inventors can be taken out

- Filing Fee

- Can file a CPA for a CPA


Naming of Inventors

No longer required to obtain filing date.

No Oath/Dec under Rule 1.63


Example: You have 1-5 accepted, 6-10 rejected. What do you do for your client?

get issuance of the 1-5

file a continuation with 6-10



Prior Filed US Application

Within a year of Foreign Filing

Acted before Prior Application has been abandoned.


Types of Priority




A filing which is withdrawn, abandoned or otherwise disposed of doesn't preclude priority based upon a subsequently filed application under 119(c) under what THREE conditions?

1. The withdrawn foreign application not having been laid open to public inspection;

2. Not serve as a basis for claiming a right of priority;

3. The subsequent application was filed in the same country as the withdrawn application.


Restoration of Rights

A U.S. application may be filed up to 14 months following provisional and foreign filing WITH:
1. Hefty Fee,
2. Unintentional explanation for missing.


Formal Requirement for Obtaining Foreign Priority

1. File a claim for the priority in an ADS;

2. File a certified copy of the original foreign application.
- within 4 months of Filing or 16 months of Priority date. FEE IF LATE


National-Stage PCT Applications and Rule 53 Applications differ in what two ways?

1. Restriction

2. In Pre AIA, applicant is not able to get Foreign Filing Date. 102(e) date is date of FOoT Rule.


What does 37 CFR 1.48 allow?

Change of inventorship while the application is still pending.


What is the difference between a provisional and non-provisional application filing?

1. Oath
2. Declaration


What sections of Rule 48 require a fresh declaration?

All if there is an added inventor


What is the circumstance when a continuation cannot be filed to correct inventorship?

When there is no common inventor in the continuation and the patent.


A substitute is ___________.

An application that would otherwise be considered a continuation had it been filed while parent was still pending.


_____________ applications can be filed under Rule 1.53(b), but only ________ and ________ of Design applications can be filed under Rule 1.53(d).

1. All

2. Continuations

3. Divisions


A Rule 1.53(d) application is called a ___________.

CPA (Continued Prosecution Application)

Can be filed on itself.


To perfect foreign priority, an applicant must make a ________, and submit ________.

1. A Claim

2. Certified Copy of Application.