MPEP 700 Flashcards
Examination of Applicaitons (25 cards)
Rejections
law is basis
indicates that a claim does not satisfy a specific statutory requirement of patentability and why
Objections
Rule of USPTO
can be petitioned
may or may not satisfy the statutory requirements BUT does not satisfy a requirement of the patent office
OAR Rule
Object
Allow
Reject
Prior Art
set of circumstances set forth in 102 and nothing more
may be an act or document
act- offer for safe, use and/or prior invention that is in the public domain
document- prior foreign patent or publication or US patent
103 Basis
precludes patentability if the invention would have been obvious to one of ordinary skill in the art (PRE-AIA) at the time the invention was made or. (POST-AIA) at the time application was filed
Basis of Old 102 (a) and (e)
keyed to the date of invention
uses the effective filing date of application as the presumptive date of invention.
Anticipation
claim is taken as a whole
reference or set of facts which teaches every aspect of the claimed invention directly or indirectly
Argument for Anticipation
- alleged prior art is not in fact prior art because the claim is entitled to an earlier date than the reference (earlier filing date); or
- the examiner is wrong that the prior art does not teach each and every element and limitation of the invention (something is missing)
- Add limitations
NOTE: 102 rejection can also be overcome by amending the claims to distinguish the claimed invention from prior art (must be non-trivial aka no NEW MATTER)
7 Circumstances of Unpatentability
- prior publication;
- prior patent;
- an abandonment of the invention (pre-AIA)
- prior sale or offer for sale;
- prior use;
- prior public and general knowledge (i.e in the public domain); or
- a prior invention
NOTE: some of these circumstances will not count for old 102 unless they occurred in US
Infringement
when someone takes what is in at least 1 claim and practice it
(later)
102 (g)
Basis of infringement “first to file”
can be used in cases when AIA 102 applies in the case of transitional cases
- Prior invention must not have been abandoned, suppressed or concealed (ASC)
Note: you must submit a statement for the USPTO claiming for treatment
NAFTA and WTO
old law and transitional cases
Considers Mexico & Canada as equivalent to US in proving date of invention
NEED to file application in US i your invention was publicly disclosed in a NAFTA country in order for your date of invention to be prior art (AKA must be known in US)
Rule 131
Applies to PRE-AIA
filing of affidavit to prove/predate prior art
NAFTA Date
December 8, 1993
WTO Date
January 01, 1996
OLD 102 (a)
The following must occur prior to your invention by OTHER
Publications and Patent Obtained - ANYWHERE
Public Knowledge and Use by others - US only
Old 102 (b)
More than one year before filing by acts of inventor OR another
Patent Obtained and Publication - Anywhere
Public Use and On Sale - In this Country
Old 102 (b) “On Sale”
offer for sale
can be prior art if the sale never actually took place
Note: Does not have to be public and the embodiment of the invention must be on sale not rights
Old 102 (a) and 102 (b) Contrasted
102 (a) - referenced against the date of invention
102(b) - referenced against the date of U.S filing (not effective filing)
How to determine if 102 applies (3 steps)
- Determine the date of the act or document as prior art
(publication- 102(a) or other date 102(b) OR earliest effective U.S filing date 102(e) OR invention date 102(g))
- Determine reference date of your application
- invention date for 102 (a) 102(e) and 102(g) OR filing date for 102 (b) - See which one is earlier and proceed accordingly
Old 102 (c)
Basis of Abandonment
Old 102 (d)
gave warning to foreign applications to file 1 year to file in the U.S with your foreign filing date
Old 102 (e)
You were not first
Proof: effective filing date of another in U.S or of its equivalent
- US patents or published applicaiton and PCT applications designating U.S as its receiving office (having IA date after 11/29/2000 and in english)
- Prior art date is the earliest effective U.S filing or International filing date once the US app or IA has been published
Provisional Rejection
when two applications are commonly owned or have a common inventor
can provisionally reject one application citing the other which would BECOME prior art if it issued
how to solve: overcome by abandoning one application
NOTE: if no common inventor or assignee USPTO cannot make a provisional rejection since that would violate maintaining confidence (MPEP 100). In this case an interference would be proper.
