MPEP Chapter 600: Parts, Form, and Content of Application

Question 1

Requirements for Oath/Dec

Answer 1

1. Inventor believes they are an inventor
2. App is being filed with their permission
3. They have reviewed and understand the contents of the application
4. Duty to disclose

Question 1

Oaths and Declarations

Answer 1

Cannot be amended
Don’t need one for filing date
Oath - sworn before notary
Dec - statement with warning
Need not be in English
Don’t need date

Question 2

Supplemental Oath/Dec

Answer 2

Replaces defective oath/dec
Submitted when claims are amended to claim subject matter not hitherto claimed
NO FEE

Question 3

Rule 1.53(b) and (d)

Answer 3

Copy of executed oath for parent can be filed

Question 4

Post-AIA Alteration of Patent Application Before Filing

Answer 4

Executed oath/dec can still be used if the application is adjusted post-execution, if it still covers the revised application

Question 5

Substitute Statement

Answer 5

Can be used to lieu of oath/dec if inventor is dead, incapacitated, etc.

Question 6

Inventors must be identified in

Answer 6

Sub stat/oath/dec and ADS

Question 7

Application Data Sheet

Answer 7

Submitted in a prov, non-prov, or national-stage application
Must be submitted to claim priority
Can be corrected until payment of issue fee

Question 8

Inventorship

Answer 8

In US, begins with inventors
Claim-by-claim basis
Contribute to CONCEPTION

Question 9

Correcting Inventoship

Answer 9

Has to be “in error”
Rule 1.48

Question 10

Rule 1.48

Answer 10

1. Non-Prov
   Signed ADS and fee
2. Prov
   Request and fee
3. Special Circumstances
   Reissue
   Issued patent
   PTAB case
4. Continuing Apps
   Copy of oath/dec
   Inventorship = that in parent

Question 11

Notice of Omitted Items

Answer 11

When an app is filed without a specification page or figure

Question 12

Choice 1 - Notice of Omitted Items

Answer 12

File a petition + fee with omitted items and request later filing date be awarded

Question 13

Choice 2 - Notice of Omitted Items

Answer 13

Let PTO know you are doing nothing, original filing date remains, make preliminary amendment and hope it is not “new matter”

Question 14

Types of Incomplete Applications

Answer 14

1. Notice of Missing Parts - Missing FOT, filing date not in play
2. Notice of Incomplete Application - drawings aren’t good, missing abstract, filing date not in play
3. Notice of Omitted Items - parts of spec/drawings missing, filing date in play, BAD

Question 15

Claims

Answer 15

Assertion of the things to prevent others from using, making, selling, imparting, offering for sale
Right to exclude

Apparatus claim = combo of elements interconnected
Method claim = combo of steps

Question 16

Anticipated/Infringement

Answer 16

Anticipated - in Office Action, must have every element

Infringement - later on, must have every element

Question 17

Comprising

Answer 17

Defines minimum

Question 18

Constisting

Answer 18

Defines exact combination

Question 19

Means Clauses (112(f))

Answer 19

Means plus function, covers elements in specification and equivalents

Question 20

Markush Groups (MPEP 2173.05(h))

Answer 20

Used to define a claim limitation where there is no generic term to describe a group of things

1. “chosen from a group consisting of A, B, and C”
2. “said material is A, B, or C”

Question 21

Jepson Claims

Answer 21

Preamble defining what is old (admitted prior art), transition phrase, body defining what is new

Question 22

Multiple Dependent Claims

Answer 22

Depend from more than 1 claim
1. A mult dep cannot depend from another mult dep
2. Can be alternative only (“or”)
3. Each proper mult dep counts as number of claims from which it depends (improper = counts as 1)

Question 23

Incorporation by Reference - Essential Material

Answer 23

Application may incorporate essential material by reference to issued US patent and published application

Essential = necessary for statutory requirements

Question 24

Non-Essential Material

Answer 24

Typically background material and can be incorporated from pubs and foreign patents

Question 25

Claim for Priority

Answer 25

Can work as incorporation by reference for inadvertently omitted subject matter if it is contained in earlier application (Can help with Notice of Omitted Items if you have priority)

Question 26

Abstract

Answer 26

Part of application, 150 words maximum Info can be amended into spec/claims

Question 27

Substitute Specification

Answer 27

If amendments make it difficult to examine or print 1. Statement of no new matter 2. Marked up copy 3. Clean copy Not allowed in re-issue or re-exam

Question 28

Color Drawings

Answer 28

Accepted in utility apps with petition, fee, 3 sets of drawings, language statement

Question 29

Models or Exhibits

Answer 29

May be required, but left in custody of application for life of patent, take in pictures to PTO instead

Question 30

Information Disclosure Statements

Answer 30

Related to "duty to disclose" Information is material if it would make for a good rejection or refused a position taken at the PTO Duty for EVERYONE involved Preferred way to disclose material info Must be timely filed

Question 31

IDS Timing

Answer 31

CANNOT BE EXTENDED 1. Within 3 months of filing or before first Office Action -FREE 2. Between first Office Action and Final Office Action/NOA - must make statement OR fee 3. After Final Office Action/NOA and before issue fee payment - must make statement AND fee

Question 32

IDS Statement

Answer 32

Must say that each item disclosed was known about for less than 3 months

Question 33

IDS Minimum Content

Answer 33

1. List of individual items submitted 2. Copy of every patent/publication (don't need US copies) 3. Concise explanation of relevance of everything not in English (Don't need translation)

Question 34

Material Prior Art discovered after Allowance and Issue Fee Paid

Answer 34

Withdraw application from issue and file a continuation

Question 35

Requirements for Information - Rule 1.05

Answer 35

Again, duty is for everyone involved PTO may require more information Watch out of request for admission of fact with specific questions

Question 36

Transition date for Patent Term

Answer 36

June 8, 1995 Went to 20 year term