MPEP 600

Question 1

Oath

Answer 1

sworn statement

Question 2

Elements of Inventor Oath/Declaration
(POST AIA)

Answer 2

1. Rule now permit a person to whom the inventor has assigned, or is under an obligation to assign, an invention to file and prosecute an application for patent as the applicant
2. Application may postpone filing an oath/declaration until the application is otherwise in condition for allowance, even up to the payment of the issue fee.
3. Substitute statement now allowed in lieu of oath/declaration for lost, dead, hostile inventor

Question 3

Declaration

Answer 3

signed sworn statement accourding to pentalties of perjery

Question 4

When would a new oath be needed

Answer 4

change of inventorship

addition of new matter

Question 5

What if application is filled by a person other than the inventor

36 USC 111

Answer 5

contain a signed ADS Rule 1.76
- identifying assignee or person who otherwise shows sufficient proprietary interest.

Question 6

Rule 1.43

Answer 6

Deceased inventor

Question 7

Rule 1.45

Answer 7

Joint Inventor

Question 8

Rule 1.46

Answer 8

assignee or otherwise having proprietary interest

Question 9

Substitute Statement
37 CFR 1.64

Answer 9

applicant under rule 1.43,1.45,1.46 must submit in lieu of oath or declaration

Note: identification of inventor required in ADS if not supplied in sub statement

Question 10

Supplemental Oath

Answer 10

Rule 1.67

Submitted to replace a Oath or Declaration that is defective

Notes:

1. No Fee is required (matters of right)
2. Supplemental oath may may be waived for a lost or hostile inventor, but not for a original declaration or oath

Question 11

ADS

Answer 11

Rule 1.76
MPEP 601.05

must be submitted in provisional non provisional or national stage

and to claim priority or the benefit of a prior filed application

can be submitted in lieu of oath to get filing receipt. not needed until issue fee

Question 12

Rule 1.48

Answer 12

correction of inventorship

new signed ADS
signed oath/ substitute statement
fee

only for pending applications and correcting inventorship

Question 13

35 USC 112

Answer 13

descriptive and enabling

Question 14

Notice of Omitted Items

Answer 14

1. If the page of the specification or drawing is required to meet 112, then the application is fatally defective and without submitting the missing items no patent will issue
2. If missing items are submitted then the filing date will be the date of the submission of the items, not the original filing date.

Question 15

Choices to respond to Notice of Omitted Items

Answer 15

1. File a petition and fee, copy of the notice, a supplemental oath or declaration requesting that the later filing date be awarded
2. Do nothing in response, original filing date of the application will be maintained. The applicant is now required to amend the specification, preferably by preliminary amendment but no new matter may added.

Question 16

Notice of Omitted Items extended time period

Answer 16

2 month period to file papers

Question 17

Claim

Answer 17

Define right you are trying to protect

preamble, transition phrase, element

Question 18

comprising

Answer 18

defines the minimum for infringement
basically stating you are claiming at least what follows

ex: claim A,B,C anything A,B,C,D will infringe

Question 19

Consisting of

Answer 19

exclusive
more definite
all must be present to infringe

Question 20

How are elements seperated in a claim

Answer 20

( ; ) or ( , )

and after the second to last (;) element

Question 21

Method Claims

Answer 21

combinations of steps to get to your preamble

Question 22

Dependent Claims

Answer 22

Refer to one claim and adds something to combination of the earlier

Question 23

Magic Words in a Markush Groups

Answer 23

MPEP 608.01 (n)

The language is most likely either:

1. “Chosen from the group consisting of… A,B,C, and D,” or
2. “Wherein R is A, B, C, or D.”

Question 24

Jepson Claims

Answer 24

basically admit prior art
not that good of practice

“improvement of”

Question 25

Multiple Dependent Claim

Answer 25

MPEP 608.01 depend from more than one claim cannot depend from another multiple depended claim can depend from more than 1 previous claim in alternative only proper claims count as the number of claims from which it depends improper claims are counted as a singular claim cannot combine process and product claims

Question 26

Claim Counting Format

Answer 26

Independent claims count as one Claim 2 dependent on 1 is a dependent claim 3 dependent on 2 (dependent) and 1 (independent ) is a proper multiple dependent claim claim 4 dependent on (3) is dependent claim claim 6 depended on 2 (dependent) and 3 (multiple dependent) is NOT proper

Question 27

Incorporating By Reference

Answer 27

An application may incorporation "essential" material by reference to: 1. An issued patent; or 2. Published application Essential Material Cannot be incorporated from: 1. A foreign patent or application; 2. A publication; 3. A U.S patent which itself incorporates by reference essential material from another patent

Question 28

Completeness of Specification

Answer 28

need claims drawings oath and declaration whole list MPEP 608.01 (a) Rule 1.77

Question 29

Abstract

Answer 29

Part of application 35 USC 112 can be amended into specs or claims without violating new matter "means" and "said" not allowed 150 words

Question 30

Substitute Specification

Answer 30

Rule 1.125 An Applicant may file a substitute specification at any time before the issue fee is paid, excluding claims, IF accompanied by: 1. A statement that the substitute spec contains no new matter; 2. A marked-up copy of the substitute specification showing the additions and deletions NOTE: no sub is permitted in reissue or reexamination

Question 31

Information Disclosure Statement

Answer 31

MPEP 2000 MPEP 609 discharge any material that would make for a good rejection

Question 32

File Timing of IDS

Answer 32

Rule 1.97 (b) (c) and (d) 1. 3 months from application filing or before first action (no statement or fee) 2. after first office action but before allowance or FOA (statement or fee) 3. after final action or allowance but before issue fee (statement and fee) NOTE: Timing of IDS cannot be extended

Question 33

Statement requirements

Answer 33

Rule 1.97 item disclosed was cited for the first time less than 3 months before the date of IDS no item was cited in a communication from foreign office and no item was known to anyone having a duty to disclose 3 months before the date of IDS

Question 34

Basic Requirement of Oat/Declaration (Pre-AIA)

Answer 34

Each app. must include oath/declaration by inventor that: 1. They believe themselves to be the true, original and first inventor; 2. They have reviewed and understand the content of the application; 3. They acknowledge their duty to disclose all information known to be material to patentability of the application

Question 35

Alteration of Application Before Filing

Answer 35

Pre-AIA: Prior to execution an inventor may alter the application by hand provided that each interlineation and deletion is initialed by all inventors. AIA: An executed oath or declaration can still e used where the application papers are adjusted post-execution, but only if the executed oath stilled covers the revised application.

Question 36

What is considered Material Information (with regards to incorporation by reference)

Answer 36

Material is "essential" if it is required to comply with the statutory requirements of disclosure it is non essential if it is not so required

Question 37

ADS USES

Answer 37

Assert Priority Delay the submission of an oath/declaration, and is essential for any correction of ownership

Question 38

Minimum Contents of IDS

Answer 38

Every IDS must have the following minimum content: 1. A list of individuals items submitted with patents identified by patentee, number and issue date; and publication identified by author title, relevant pages(s), date and place of publication 2. A copy of every patent publication or other information begin submitted 3. At least a concise explanation of relevance of anything not in english THINK: List it, Copy it, but DON'T translate it