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Terminal Disclaimer

Terminal Disclaimer is NOT effective in overcoming a statutory double patenting to rejection.


Plant Act

Tuber propagated plants are exempted from panting under the Plant Act.



Continued Prosecution Application: Does not allow Continuation-In-Part CPA application. Request for CPA can be filed by fax and processed entirely by the examining group. CPA will have the same file jacket as the prior application. Application number remains the same. For the priority to be granted, CPA does not need to mention prior application in the first paragraph of the specification.


Design Patent claiming priority

U.S. Designed application claiming priority to a foreign application must be filed within six months to properly claim priority.


Double patenting rejection

Is improper when the inventions are independent and patentably distinct. Therefore, patentably obvious type rejection is improper.


Notice of Appeal

From the date the notice of appeal received in the PTO, you have two months to file the appeal brief. This can be extended additional 5 months.

In case of "Notice of Appeal" only, receipt at the PTO will be used for calculating further due dates. For NOA filed on the last day due, using a Certificate of Mailing [June 1], and RECEIVED at PTO on June 4th, the Appeal Brief is due TWO months from June 4, not June 1.


Amendments to Re-issue app

Hand written amendments are not allowed.


Name change

For a pending application, if you need to change the name, you must file a petition with the fee directed to Office of the Assistant Commissioner requesting the change.


Perfect Foreign Priority

A claim for benefit of foreign priority must be filed, with a certify copy of the foreign application, along with English translation of the application.



Cannot add an inventor when you are filing a CPA.

Also cannot be filed until the application is complete. Thus trying to file an CPA when there is missing parts, will result in abandonment of the application.


Notice of Appeal

Need not be signed. However, authorization to charged the deposit account must be signed.


Product by process claim

Patentability of a product-by-process claim is based on the product itself and does not depend on its method of production. In other words, if the product in the product-by-process claim is the same as or obvious from a prior art product, the claim is unpatentable even though the prior art product was made by a different process. As with inherency, once the examiner issues a rejection based on a product appearing to be substantially identical, the burden shifts to the applicant to show a non-obvious difference.


Prior Art

An applicant’s statement in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art. Thus, prosecutors should be careful when labeling subject material as “prior art” because such as admission may be used against the applicant either by the examiner during prosecution or in litigation. It is important to note that merely listing a reference in an information disclosure statement (“IDS”) is not an admission that the reference is prior art against the claims. Remember, the filing of an IDS only means that the applicant believes that the information submitted in the IDS is material to patentability – no inference is drawn as to its applicability as prior art.



Section 102(b) is a statutory bar to the patentability of an invention. In other words, if Section 102(b) properly applies, the applicant cannot overcome the rejection and generally must amend or cancel the rejected claims. In addition to rejections based on printed publication, Section 102(b) sets forth both the “public use” and “on-sale” statutory bars. Both of these bars relate to activity occurring more than one year prior to the effective date of the patent application, and both bars require that the activity occur in the United States (i.e., “in this country”).


Public use bar

A public use will act as a bar if the use was (1) accessible to the public or (2) commercially exploited. Remember that mere knowledge of the invention by the public does not warrant a rejection under Section 102(b).
As long as the invention is used in its natural and intended way and is accessible to the public, a public use has occurred. On the other hand, an inventor’s private use of his invention, for example for his or her own enjoyment, is not a public use because the invention was not accessible to the public.


112 Specification Requirements

Written Description = possession

Enablement = w/o undue experimentation

Best Mode


PCT- International Filing date MPEP 1810

1. Designation of least one contracting state
2. Part of the application which appears to be a claim
3. Application in a language prescribed by the receiving office


Review of New Matter
Objections/ Rejections
MPEP 2163.06

A rejection of claims is reviewable by the Board of Patent Appeals and Interferences, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.


Request for Interview

[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications[,] [a] request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a).”


Re-examination proceeding
MPEP 2258

an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office . . . An ex parte reexamination proceeding terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent . . . was unavoidable in accordance with 37 CFR 1.137(a), or unintentional in accordance with 37 CFR 1.137(b).”

In a reexamination proceeding, requests for extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to 37 CFR § 1.550(c). See MPEP § 2265.


Patent Term Adjustment
MPEP 2730

Applications filed prior to May 29, 2000 are ineligible for PTA.
Only UTILITY patents can get a PTA b/c Design patents are 14 years from the date of issue while, Utility are 20 years from the earliest effective filing date.



Cannot file the contracting state using FAX. It is improper.



All must be in writing, signed by the inventor or his representative, and must address all objections and rejections.
Amendments after a final rejection are usually improper, except: 1. Canceling or complying with instructions from the previous office action; 2. Amendment present rejected claims in a better form for appeal; 3. necessary in a case of re-examination or showing good cause.


Actions after Final Rejection

1. Abandon
2. File RCE -- turns a final rejection into a non-final with appropriate fee.
3. Appeal to Board of Patent Appeals


Swearing Back
MPEP 715/ 37 CFR 1.131

Antedate a reference for prior art 102(a) and 102(e).
Only proper where the prior art is less than 1 year to applicant's effective filing date.
Also inappropriate if the applicant had admitted to relying on that prior art.

If the prior art is a U.S. patent or patent application publication, the reference may not be antedated if it claims the SAME patentable invention -- interference/double patenting may be more appropriate.


Statutory Double Patenting v. Non-Stat Double Patenting

Statutory: occur between an issued patent and one or more applications or between co-pending applications. Applicant attempt to receive multiple patents claiming the same invention. Provisional rejection may be issued, if the applications are pending.

Non-Statutory: where the conflicting claims are not identical, but obvious in light of each other -- can file a terminal disclaimer.


MPEP 602

Communications via fax is allowed to file a declaration or oath or other correspondence. However, filing the copy of the international application of a PCT and the basic national fee is NOT allowed via fax.


Prior Patents/Publications/Re-examinations

MPEP 2258

MPEP § 2258, under the heading “Prior Patents Or Printed Publications,” states “[r]ejections on prior art in reexamination proceedings may only be made on the basis of prior patents or printed publications. Prior art rejections may be based upon the following portions of 35 U.S.C. 102: . . .(e).” MPEP § 2258, under the heading “Matters Other Than Patents or Printed Publications,” states “[r]ejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, fraud, etc. In this regard, see In re Lanham, 1 USPQ2d 1877 (Comm'r Pat. 1986), and Stewart Systems v. Comm'r of Patents and Trademarks, 1 USPQ2d 1879 (E.D. Va. 1986). A rejection on prior public use or sale, insufficiency of disclosure, etc., cannot be made even if it relies on a prior patent or printed publication. Prior patents or printed publications must be applied under an appropriate portion of 35 U.S.C. 102 and/or 103 when making a rejection.” Reexamination is limited to substantially new questions of patentability based on patents and publications.



Can only be made if the prosecution had closed.


Citizenship error

executed 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under 37 CFR 1.67 by inventor B setting forth the correct citizenship even though it appears correctly in the application data sheet.

... If, however, the error is one of residence, no change would be required (37 CFR 1.76(d)(2)).


Separate Verification NOT required

A request to correct inventorship in a pending application.
A petition to make an application special.
A claim for foreign priority.
A substitute specification.


Prima Facie Case of Obviousness

“To establish a prima facie case of obviousness, three basic criteria must be met.

First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.

Second, there must be a reasonable expectation of success.

Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.

The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on applicant’s disclosure.


102(e) Foreign Filing Date

35 U.S.C. § 102(e)(1) provides that a US published application of a national stage of an international application filed on or after November 29, 2000 has a prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, and was filed on or after November 29, 2000, the USPTO published application is entitled to its international filing date of January 5, 2001 for prior art purposes under 35 U.S.C. § 102(e)(1). See Example 4 of MPEP § 706.02(f)(1).


Application Data Sheet v. Oath or Declaration

37 CFR § 1.76(d)(3); MPEP § 601.05. The oath or declaration filed under 37 CFR §§ 1.63 or 1.67.governs any inconsistency with the Application Data Sheet (ADS) when the inconsistency relates to the setting forth the citizenship or naming of the inventor(s) even if the ADS was filed after the filing of the oath or declaration.


Final rejection -premature

Thus, if a petition to vacate a final rejection as premature is filed within 2 months from the date of the final rejection, the period for reply to the final rejection is not extended even if the petition is not reached for decision within that period. However, if the petition is granted and the applicant has filed an otherwise full reply to the rejection within the period for reply, the case is not abandoned.


102(g) rejection

“35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the applicant's invention; and (2) there has been no abandonment, suppression or concealment. See, e.g., Amgen, Inc. v.


Small Entity Status

MPEP 509.02

The refiling of an application as a continuation, divisional, or continuation in part application, including a continued prosecution application under sec. 1.53 or filing of a reissue application requires a NEW ASSERTION as a continued entitlement to small entity status for the continuing or reissue application. Where an assignment of rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.

Paying the small entity price is an assertion. Refunds can be obtained within three months of paying the full fee.


Request for Interview

Section 713.02 states that although “[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications[,] [a] request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a).”


Access to abandoned unpublished app v. unpublished pending apps MPEP 103/104

Unpublished abandoned app - if falls w/in an exception, no petition or fee req, just a WRITTEN request. [Referred in a U.S. patent or publish apple; U.S. app open to public inspection; Referred in a PCT published app which designates the U.S.]

Unpublished pending app- a petition, a petition fee must be filed. The petition must establish SPECIAL CIRCUMSTANCES warranting access.


Access to unpublished application

When a pending app is incorporated in whole or part into an issued U.S. patent or published application, a copy of that specific incorporated part of the prior application, as filed, can be obtain without notice or service to the owner, but not the entire file.


Express Abandonment

Express abandonment to avoid publication under 37 CFR 1.138 may req a petition and need 4 weeks remaining before publication in order to succeed.


Status of parent app

The status of any parent application will also be disclosed if the continuation, CIP, or division qualifies to have its status disclosed.


Correcting inventorship MPEP 602.01(c)

For applications filed prior to September 16, 2012, where the first-filed executed oath or declaration sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration. See 37 CFR 1.41(a)(1).


Correcting Inventorship after Sept. 16, 2012 MPEP 602.01(c)

The change in the order of the names of inventors in a provisional application is not provided for since provisional applications do not become application publications or patents.

As of September 16, 2012, it is no longer necessary to have distinct procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors. 37 CFR 1.48(f) permits an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names) and allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent). 37 CFR 1.48(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order; and (2) the processing fee set forth in 37 CFR 1.17(i). The request should also identify the desired inventor name change.


Correct Inventorship of Issued Patent MPEP 1412.04

Reissue is a proper vehicle for correcting inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims, the reissue application may be filed more than two years after the patent issued.

Provisions of 37 CFR 1.48 are NOT available to correct inventorship in an issued patent.


Claim Limitation

MPEP § 2181 expressly requires that for a claim limitation to be interpreted in accordance with 35 U.S.C. § 112, paragraph 6, that limitation must
October 16, 2002 Examination Morning Session Model Answers
(1) use the phrase “means for”, (2) the “means for” must be modified by functional language, and (3) the “means for” must not be modified by sufficient structure for achieving the specified function.


Abstract MPEP 608.01(b)

Abstract should not compare invention to prior arts or should not refer to purported merits or speculative applications of the invention.
It should be in a separate paper. Its limited to 50-150 words or 15 lines.

The form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.


Assignment MPEP 302.09

Assignments for a patent app or a provisional automatically carry over into continuation and divisional, and replacement utility applications, but not CIPs.

Fax submission of an assignment is possible.

Employees of the Patent Office are forbidden during their period of employment and one year thereafter from applying or acquiring any interest in a patent except by inheritance or bequest.

Assignment must be in writing.


Recording of the Assignment

First buyer has 3 months grace period.

If the second buyer did not have notice and a BFP, assignment was not recorded after three months, first buyer loses the rights.

Recording only applies to the assignments, not for exclusive licenses. If a subsequent BFP purchases the patent rights, they take it subject to the license.

Changes in names of assignees can be recorded.

For a patent to issue with Assignees listed thereon, an assignment must have been recorded or filed in accord with 37 CFR 3.11.

A joint research agreement may also be recorded at the PTO.


Actions where statement must be verified (Oath or Declaration)

Retroactive foreign filing license

Rule 131 - antedating

Rule 132- Secondary considerations, utility, operability

Inventor's oath or declaration (Rule 1.63 & 1.171)

Affidavit to disqualify commonly owned patent as prior art (Rule 1.130)


FAX Communications
MPEP 502.01

Facsimile transmissions are NOT permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(1) Correspondence as specified in § 1.4(e), requiring an original signature;
(2) Certified documents as specified in § 1.4(f);
(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), and (I), § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, or 1.437;
(5) A request for reexamination under § 1.510 or § 1.913;
(6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7) [Reserved]
(8) [Reserved]
(9) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.

OK to do fax- CPA


Email MPEP 502.03

Emailing in an application is possible if the applicant has given [written] authorization to use email.

No office actions or anything else that requires an original signature can be sent via email.


Filing date for an application reqs 3

MPEP 506

1. A specification containing a description

2. At least one claim (for regular non-provisions apps) and;

3. Any required drawings

Fee and oath/declaration can be submitted later. The application need not be filed in English, and a translation and the fee can be submitted later.


Things that do NOT req fees MPEP 509

1.File a protest

2.File a petition to make special based upon illness, the environment, energy or age, (in the environment of a rest home, illness, age, and lack of energy are free)

3. Access issued, published, and certain abandon files

4. File a timely response to an Official Action or Restriction Req

5. Timely file an IDS

6. Conduct an interview

7. Obtain a Certificate of Correction to correct a Patent Office mistake;

8. File a Supplemental Declaration or Supplemental Amendment.

9. File a petition requesting withdrawal of an incorrect holding of abandonment.

10. File comments in response to the Examiner's Reasons for allowance; and

11. File a Citation of Prior Art under 35 U.S.C. 301.


Calculations of Fees MPEP 509.01

1. A fee for filing, searching, and examination; and

2. A surcharge for each independent claim in excess of 3; and

3.A surcharge for each claim (independent or dependent) in excess of 20; and

4. A surcharge if any multiple dependant claims are included; and

5. A surcharge if any multiple dependant claims are included; and

6. An application size fee if spec and drawings together are over 100 pages long (increased thereafter 50 page increments); and


Express Mail and non-provisional applications

A nonprovisional application deposited via Express Mail on Saturday, Feb 6, 2009, received in the PTO on Feb 9, 2009, will be given a Feb 6, 2009 filing date under MPEP 513; 201.04. As such a non provisional application was filed on the last day of pendency of the provisional application so as to claim an effective filing dat of Feb. 6, 2008.



Patent Term- 20 switch - June 8, 1995

NAFTA - Dec. 8, 1993

WTO - Jan. 1, 1996

Patent Term Adjustment - May 29, 2000



1. If filed within 3 mo, of the application filing date or before the 1st office action, only IDS need to be filed. [RCE only the timing of the First Action matters]

2. If filed after the First Office Action [FOA] but before allowance or final action, either a statement or fee must be provided.

3. If filed after Final Action, close of prosecution or allowance, but before payment of issue fee, a statement and a fee are required.

IDS in a reissue should be filed within two months from filing. If an IDS is filed after filing a CPA or RCE, it should be filed immediately, unless a suspension of agin has been requested [1.103(b)].


When material prior art is discovered after the application has been allowed and the issue fee paid, the proper course is to seek withdrawal of the application from issue so that art may be considered in a continuation application.


102(e) MPEP 2136/706.06(a)

1. U.S. Patents or published applications and PCT applications (having an International Application date AFTER NOVEMBER 29, 2000) designating the U.S. which are published in English, all have 102(e) dates once they publish.

2. The prior art date is the earliest effective U.S. filing date or International filing date once the U.S. application or International Application has published.

When there is one common inventor, and two applications, PTO can provisionally reject one application citing other which would be prior art if issued, this can only be overcome by abandoning one application.

IMPORTANT: U.S. patent applications when they issue become prior art under 102(e) as of their U.S. filing date, not their issue date. However, this occurs when they issue; as applications, they are not prior art at all UNLESS they publish.