150 150 Tony Guo

Parts of a Utility Patent; §112


  • Drawings


      1. Drawings necessary to understand invention: f/d is when drawing is submitted to PTO
      2. Drawings helpful to understand invention: may be added later w/o affecting f/d
      3. Later submitted drawings: no new matter
      4. Drawings must show all of the claimed elements


  • Specification: §112¶1 [key idea: full disclosure of invention]:


      1. Written description
        1. Test: PHOSITA sees inventor in possession of invention
        2. Inventor may be his own lexicographer, exception: repugnant use of terminology
        3. Presumed to be adequate
      2. Enablement
        1. Test: PHOSITA makes and uses invention without undue experimentation
        2. Factors relevant in evaluating description and enablement: breath of claims, nature of invention, state of prior art, level of ordinary skill, level of predictability in the art, etc. see MPEP2164
      3. Best mode
        1. Mode considered the best subjectively by the inventor, not other people
        2. Best mode at f/d (best mode need not and cannot be updated)
        3. Must be disclosed but need not be identified (PTO does not challenge best mode)
      4. Important: failure of any written description-enablement-best mode will result in objection to application, not rejection
        1. Still OK: written description-enablement-best mode may not be fully disclosed in specification but fully disclosed in the claim – examiner may object but not reject


  • Claims: defines boundary of invention


    1. Preamble: identifies category of invention, may recite intended use/purpose
      1. Generally not limiting: elements in the body of the claim stand alone
      2. Limiting if preamble “breaths life and meaning into the claim”: body of the claim refers back to terminology in the preamble, or Jepson-type claim preamble
    2. Transitional phrase: connects preamble to body
      1. 3 types of transitions
        1. Open-ended: comprising (also: including, containing, characterized by)
        2. Closed: consisting of (also: composed of, having, being w/ interpretation)
        3. Partially closed: consisting essentially of (includes additional elements that do not materially affect the characteristics of the claimed invention, such as impurities)
      2. Reading a claim on prior art/infringing device/etc:
        1. “comprising elements ABC” reads on prior art with elements ABCD (open invention: each element is found in prior art)
        2. “consisting of elements ABC” does not read on prior art with elements ABCD (closed invention has to match prior art exactly)
        3. “consisting essentially of ABC” may read on prior art with elements ABCD if D does not affect the characteristics of said prior art (which makes prior art same as ABC)
    3. Body: list of elements and limitations
      1. Antecedent basis – §112¶2: “particularly point out and distinctly claiming”
        1. First appearance of element: a, an
        2. Further appearance of this element: the, said
      2. Only 2 ways to narrow a claim
        1. Add element: “further comprising”
        2. Add limitation (that modifies or qualifies the element): “wherein”
      3. Dependent claims – §112¶3, §112¶4
        1. Must be dependent on a preceding claim
        2. Must be narrower than that preceding claim
      4. Multiple dependent claims – §112¶3, §112¶5
        1. In the alternative only: or, one of, any of, any one of
        2. May not serve as basis for another mdc
        3. May serve as basis for another non-mdc dependent claim
      5. Two types of dominant-subservient claim relationships
        1. Subcombination (broad) – combination (narrow)
        2. Genus – species
          1. Genus must contain at least 2 species
          2. Species in a genus must be mutually exclusive
          3. Disclosure must describe species
      6. Means-plus-function clauses – §112¶6
        1. Construed to cover corresponding structure or its equivalent in the specification (link must be clear), §112¶2; but it does not cover all structures for performing recited function.
        2. Impermissible: a claiming reciting only a single means-plus-function clause (no other elements) – violation of §112¶1
        3. Permissible: two or more clauses may all be mean-plus-function: first means, second means…
        4. Must use “means (…) for”, or will not be treated as means-plus-function
        5. “Means for” phrase must not be modified by recitation of structure, or it will not be treated as means-plus-function.
      7. Process claims: method of making or using a product – relates to step-plus-function clause; also in §112¶6
        1. Permissible: a single step method claim
        2. Order of steps is not limiting unless specified
      8. Step-plus-function clauses; also in §112¶6
        1. Step for performing a specified function, 
        2. Construed to cover corresponding acts in the specification section or their equivalents, §112¶2
        3. Forms the last part of a process/method claim: the result of the act, not the act itself
    4. Notable issues on claims
      1. Not permitted: claim and prior art differ only in functional recitation that is inherently performed by the prior art (reason: no novelty)
      2. Range in a claim (such as between 100 to 200)
        1. Reads on any number within the range (such as 101, 200)
        2. Dependent claim cannot broaden the range of an independent claim; violation of §112¶4
        3. Not permitted: range within a range in a claim (reason: indefinite)
      3. Negative limitations of a claim
        1. Proper if the scope of the claim is clear
        2. Not proper: absence of structure (such as a hole) is claimed as a structural element
      4. Approximate terminology allowed?: use the PHOSITA test
      5. Exemplary terminology (for example, such as): not allowed in a claim
    5. Special claim type – Markush group: creates a genus
      1. Two forms:
        1. “wherein R is selected from a group consisting of A, B, C and D”
        2. “wherein R is A, B, C or D”
      2. Prior art with even one member of the group anticipates the claim
      3. Adding members broadens the claim (reason: more species in the genus)
    6. Special claim type – Jepson-type claim (improvement of prior art): implies admission that preamble is prior art
      1. Preamble defines a prior art, and is limiting
      2. Transitional phrase: “wherein the improvement comprises”
      3. Body: add or modify element
    7. Product-by-process claim: claims a product, not a process
      1. Form: “A product is made by the process comprising steps 1, 2, 3…”
      2. Patentability depends on the product itself, not the method to make the product
      3. Reads on prior art that is the same product made by a different process
    8. Miscellaneous issues
      1. Claim must be only one sentence
      2. 4 classes of claims: machine, manufacture, composition, method
        1. Improper: mixed claim elements (method claim with structural recitation, or apparatus claim with step element)
        2. Proper: mixed limitations


Novelty and Loss of Right; §102


  • §102(a): prior art must be by another; default date of current invention (DOI) is the effective f/d; may be overcome by Rule 1.131 or Rule 1.132 declaration depending on the situation.


      1. General elements: conception, reduction to practice(RTP), reasonable due diligence
        1. Actual RTP: testing is not required
        2. Constructive RTP: filing patent application; DOI = f/d
        3. Reasonable due diligence: until RTP, before prior art date
      2. Four §102(a) prior art events that anticipate a claim before the date of invention (not f/d)
        1. Public knowledge inside US: known to others
          1. Not deliberately concealed
          2. Classified material’s public knowledge date = printing date (but not yet made public!)
        2. Used by others inside US
          1. Not deliberately concealed
        3. Patented anywhere in the world: patent date = patent publication date
          1. Both claims and specification in earlier patent are prior art.
          2. In US: patent date = patent publication date = patent enforcement date
          3. In a jurisdiction where patent right is attached before patent is published: patent date = patent publication date
          4. In a jurisdiction where patent right is attached after patent is published: patent date = patent publication date
        4. Printed publication anywhere in the world: key is public open-access and dissemination
          1. Printed prior art must enable
          2. Library housed publication: must be catalogued/indexed by subject, or otherwise sufficiently accessible to the public.
          3. Magazine or journal disseminated by mail: received by at least one member of the public
          4. Internet posting: considered printed publication
          5. Classified material’s printed publication date = release date (made public, later than its public knowledge date)
          6. Oral presentation: considered printed if written copies distributed without restriction to an open audience
          7. Earlier publication when applicant is one of multiple authors: is prior art
      3. Overcoming §102(a) rejection
        1. Submit Rule 1.131 declaration antedating applicant’s invention
        2. Submit Rule 1.132 declaration showing that the prior art of another actually describes the current applicant’s invention.


  • §102(e): secret prior art; may be either a published application (§102(e)(1)) or a US patent (§102(e)(2)); prior art must be by another (= prior inventive entity not completely identical to current entity); prior art date is a US date (not foreign priority date); prior art patent must be enabling; may be overcome by a Rule 1.131 or Rule 1.132 declaration.


      1. Published domestic application §102(e)(1)
        1. Prior art date is the earliest US f/d (provisional f/d, nonprovisional f/d, or domestic priority date) of an earlier US application.
        2. Foreign priority date is not a prior art date: Hilmer doctrine
          1. An applicant’s foreign priority date may be used as a “shield” to protect his own patent application.
          2. A reference inventor’s foreign priority date may not be used as a “sword” to defeat another inventor’s patent application.
      2. PCT application published by WIPO in English §102(e)(1)
        1. Prior art date is the PCT f/d if the PCT application also:
          1. Was filed on or after 2000-11-29 (AIPA)
          2. Designated the US
          3. Was published by WIPO in English (after PCT f/d)
        2. If the PCT application does not satisfy the above 3 conditions, then its prior art date is only its publication date, thus only serving as §102(a) and/or §102(b) prior art.
        3. This prior art date may be pushed even further if this PCT application
          1. Claims priority to an even earlier US application (provisional or nonprovisional), but not foreign application!
          2. Still satisfies the above 3 conditions
        4. This reference published PCT application does not need to enter US national stage.
      3. PCT application following US national stage entry, published by PTO in English §102(e)(1)
        1. Prior art date is the PCT f/d if the PCT application also:
          1. Was filed on or after 2000-11-29 (AIPA)
          2. Designated the US
          3. Was published by WIPO in English (after PCT f/d)
        2. If the PCT application does not satisfy the above 3 conditions, then its prior art date is only its publication date, thus only serving as §102(a) and/or §102(b) prior art.
      4. US patent issuing from a domestic application §102(e)(2)
        1. Prior art date is the earliest US f/d (but not foreign priority date) of an earlier US patent.
      5. US patent issuing from a PCT application following national stage entry §102(e)(2)
        1. PCT application filed on or after 2000-11-29 (post-AIPA)
          1. Prior art date is either the PCT f/d or an earlier effective US f/d, if the PCT application:
            1. Was filed on or after 2000-11-29 (AIPA)
            2. Designated the US
            3. Was published by WIPO in English (after PCT f/d)
          2. If the PCT application does not satisfy the above 3 conditions, then its prior art date is only its issue/publication date, thus only serving as §102(a) and/or §102(b) prior art.
        2. PCT application filed before 2000-11-29 (pre-AIPA)
          1. Prior art date is the US national stage entry date, thus the applicant must have done the following:
            1. Paid the requisite national fee
            2. Filed a copy of the PCT application and English translation (if necessary)
            3. Filed the requisite oath or declaration
          2. Not necessary: WIPO published the PCT application in English (reason: such publication is a product of AIPA)


  • §102(g)(2): comparing two DOIs by different inventors inside US


      1. Prior art must be by another
      2. Prior art date is before the current applicant’s DOI
      3. Another’s invention was not abandoned, suppressed or concealed: even without public access
      4. Prior art must be inside US
      5. Prior art invention must have been reduced to practice, actually or constructively


  • §102(b): statutory time bar; prior art date more than a year prior to current f/d


      1. General elements
        1. Compare prior art date with the critical date (one year before current US f/d)
        2. If one-year anniversary of prior art date falls on a weekend or federal holiday, then filing on the next PTO business day is timely.
        3. §102(b) time bar may be created by current applicant’s own prior art.
        4. Current invention claim must read on prior art (every element and limitation of current claim must be present in the prior art).
      2. Four prior art events that anticipate the critical date (one year before f/d) of current claim
        1. In public use inside US: even single, unobservable event qualifies
          1. Not intentionally concealed
          2. Public use in violation of confidentiality agreement is nonetheless public use.
          3. Experimental use in public (to demonstrate feasibility) is not public use.
            1. Public testing necessary
            2. Must be technical in nature
            3. Experiment kept confidential
            4. Profit only incidental to use
          4. Market testing is considered public use.
        2. On sale inside US: commercial sale or offer for sale; invention must be “ready for patenting” (= ARTP or enabling)
          1. Profit is irrelevant.
          2. Sale or offer for salt to or from US, even when the offer was rejected by or was not received by the offeree, even when the sale was never consummated.
          3. Assignment of patent rights is not an on sale event.
          4. Same as public use: experimental use is not on sale, but market testing is on sale.
          5. Published abstract that is non-enabling may establish on sale event.
        3. Patented anywhere in the world: same as §102(a)
        4. Printed publication anywhere in the world: same as §102(a)
      3. A §102(b) statutory time bar cannot be overcome by any means.


  • §102(d): pertains to foreign prior art patent only; similar to §102(b) time bar; cannot be overcome by any means


      1. Foreign patent must be filed more than 12 months (6 months for designs) before the US f/d.
      2. Foreign patent must issue before the US f/d.
      3. Foreign must have been filed by the same inventor, his legal representative or assigns (such as company, employer, etc.)
      4. The same invention must be involved, but not necessarily claimed in the US application and foreign patent.


  • §102(c): applicant has abandoned the invention; abandonment requires intent (expressed or implied) by the inventor


      1. Intent to abandon type one: unreasonably long delay in applying for US patent, coupled with other evidence of intent to abandon (such as being spurred on by another’s commercialization of the invention)
      2. Intent to abandon type two: obtaining a US patent disclosing but not claiming a distinct embodiment of the invention: presumed to dedicate to public; may be overcome by a later application within a year from publication or by recapture through broadening reissue within two years from issue.
      3. Mere abandonment of application is not abandonment of invention
        1. May revive application if unintentionally or unavoidably abandoned the application
        2. May reacquire application if expressly abandoned application, but loses original f/d


  • §102(f): applicant derived the invention from another (did not conceive the invention)


      1. Geography is irrelevant to derivation


  • Special forms of §102 prior art


      1. Abandoned applications: unpublished application; MPEP901.02, MPEP2127
        1. If an issued patent refers to an abandoned application, the contents of the abandoned application becomes §102(a), (b) prior art as of the patent’s issue date.
        2. If an issued patent incorporates by reference an abandoned application, the contents becomes prior art under §102(e)(2) prior art as of the patent’s filing date.
      2. Material cancelled from an application during prosecution: becomes §102(a), (b) prior art when the patent issues.
        1. Reason: prosecution history becomes public when the patent issues.
        2. Not §102(e)(2) prior art because it is not disclosed in the patent itself.
      3. Incipient §102(e) references: later filed application may be provisionally rejected over an earlier application under §102(e)
        1. If the two applications have a common inventor or assignee MPEP2136.01
        2. If different inventor or assignee, then PTO cannot break confidence and disclose.
      4. Statutory Invention Registration (SIR): treated as §102(e)(2) prior art as of f/d.
      5. Doctrine of forfeiture: from case law, similar to §102(b)
        1. Commercial, purposely hidden use of a process or machine more than a year before f/d, coupled with secret sale of offer to sale: precludes the applicant from obtaining patent.
        2. But the hidden use and sale does not preclude a later, third-party inventor from obtaining patent of the same invention.


  • Noted points


      1. Anticipation, inherency, enablement
        1. Current invention claim must read on prior art: every element and limitation of current claim must be present, expressly or inherently (evidenced by a second reference), in the prior art.
        2. Anticipation requires enablement by PHOSITA, but such enablement may be evidenced by a second reference.
        3. The second reference only demonstrates, but does not supplement.


  • DOI outside US: §104


    1. Prior to 1993-12-08: DOI outside US invalid unless
      1. Applicant domiciled in US but outside US serving US government business
      2. Filing PCT or foreign application
    2. On or after 1993-12-08 but before 1996-01-01: pursuant to NAFTA
      1. DOI in Canada and Mexico allowed
    3. On or after 1996-01-01: pursuant to WTO
      1. DOI in almost all civilized countries allowed


Nonobviousness; §103


  • Most common §103 rejection: §103(a)
  • Prior art under §103


        1. All §102 events MPEP2141.01
        2. Admissions made by the applicant MPEP2129
          1. Labeling drawing as prior art even though the subject is not prior art
          2. Written admission during prosecution even when later recanted
          3. Jepson-type claim’s preamble: implied prior art, but may be overcome


  • Factual inquiries to determine the obviousness of the subject matter as a whole.  The four Graham factors are: MPEP2141


        1. Determine the scope and content of the prior art
        2. Ascertain the differences between the prior art and the current claim
        3. Resolve the level of PHOSITA in the pertinent art
        4. Evaluate secondary considerations – objective indicia of unobviousness
          1. Commercial success
          2. Long felt but unresolved needs
          3. Recognition of problem solved
          4. Failure of others to solve the problem
          5. Competitor’s prompt copying
          6. Licensing of patent to industry
          7. Teaching away from prior art
          8. Unexpected results
          9. Disbelief and incredulity of others


  • Typical §103 rejections


        1. Combining references: claim is rejected under §103 over Reference A in view of Reference B
        2. Modifying a reference: claim is rejected under §103 over Reference A because it is well known in the art and therefore obvious to make the modification recited in the claim.
          1. Examiner asserts “well known” or “common knowledge” in the art: applicant may challenge and examiner must respond with reference for support
          2. Examiner asserts personal knowledge: applicant may challenge and examiner must respond with affidavit for support


  • Prima facie obviousness; MPEP2142


        1. Purpose for establishing prima facie upon §103 rejection: to protect against using hindsight when the applicant discloses his invention; only facts from prior art may be used (no hindsight).
        2. Prima facie obviousness is established when: PHOSITA combine or modify prior art teachings to produce current invention, with 3 criteria  listed in the following MPEP2143
          1. First, there must be suggestion or motivation in the prior art itself or in PHOSITA’s knowledge to modify or combine MPEP2142.01
            1. Mere “can be modified or combined” won’t do; must have motivation
            2. Combination or modification cannot destroy the intended function, or change the operation principle of the prior art
            3. Combination or modification cannot teach away from prior art
            4. Applicant’s discovery of the problem or the source of the problem may defeat prima facie obviousness.
          2. Second, there must be reasonable expectation of success MPEP2143.02
            1. There must be reasonable, not absolute degree of predictability.
            2. Predictability is evaluated at the time the invention was made (no hindsight).
          3. Finally, all claim limitations must be taught or suggested by the prior art in order to establish prima facie obviousness (basic idea: current claim reads on prior art).  MPEP2143.03
          4. Important: it is not necessary that the prior art suggest the same advantage or result accomplished by the invention (i.e., prior art may have a different motivation)!  Motivation in the prior art to combine and modify may be implicit!
          5. Modified or combined prior art must be analogous to the current invention: same field as current invention, or pertinent to the current problem addressed
          6. Circumstances supporting an obviousness rejection MPEP2144.04
            1. Changing size, shape, or sequence of adding ingredients
            2. Reversing, duplicating, or rearranging parts
            3. Making portable, integral, separable, adjustable or continuous
            4. Omitting an element and its function
          7. To rely on equivalence as a rationale to support a §103 obviousness rejection, the equivalents must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are equivalents.
        3. Procedure of PTO prima facie obviousness rejection:
          1. Examiner bears the initial burden to factually support the prima facie obviousness rejection.
          2. If the examiner fails to produce a prima facie case, applicant may ignore.
          3. If the examiner succeeds in producing a prima facie case, then the burden shifts to the applicant.
          4. Applicant may counter the prima facie obviousness rejection by submitting additional evidence, such as commercial success, unexpected result, etc. (see Graham factors: objective indicia)
        4. Rebutting a prima facie obviousness rejection: uses secondary, objective indicia; must be based on facts; argument alone will not suffice
          1. Commercial success MPEP716.03: must be due to relevant advantages of the invention and not because of promotion or advertising
            1. Increase market share : strong evidence
            2. Increased sales due to relevant advantages of the invention: increased sales alone is insufficient.
            3. Mere conclusory statements or naked opinions are insufficient.
          2. Evidence of unexpected results as compared with prior art


  • §103(b) rejection: biotechnology process


      1. Never relied on in practice because Federal Circuit overruled it.
      2. A known process that makes novel product(s): the process is patentable under §103(b) but was overruled in court.
      3. A known process that uses novel material(s): the process is patentable under §103(b) but was overruled in court.


  • §103(c) rejection: to foster team/joint invention


      1. For applications filed on or after 1999-11-29 (post-AIPA)
      2. Reference subject matter developed by another, that qualifies as prior art only under §102(e),(f),(g) [secret prior art, interference, derivation] shall not preclude patentability under obviousness rejection if at the time of the invention:
        1. The invention was owned by or assigned to the same entity
        2. Inventors were under joint research agreement and were disclosed as such


  • Noted points


    1. Claim interpretation (for §102 and §103 rejections)
      1. During examination, claims are given their broadest reasonable interpretation in light of the specification, so that they may read on by prior art.  MPEP2111
        1. Reading a claim in light of the specification is not the same as reading the limitations of the specification into the claim.
      2. Claim terminology is interpreted by PHOSITA, unless otherwise defined in specification.  MPEP2111.01
      3. Limitations not recited in a claim must not be imported into a claim, unless in a mean-plus-function claim.
      4. Preamble is generally not limiting, unless
        1. In a Jepson-type claim
        2. Essential to understanding the claim
        3. Argued during prosecution to distinguish from prior art
    2. Emphasis: It is not necessary that the prior art
      1. Suggest the same advantage or result as accomplished by the current invention.  MPEP2144
      2. Expressly suggest the modification or combination; implicit suggestion is allowed.  MPEP2144.01
    3. Non-enabling reference may qualify as §103(a) prior art, but non-enabling reference may not qualify as §102 prior art: obviousness (§103) and anticipation (§102) are different issues.


Nonprovisional Application – Parts, Form and Content


  • Filing date requirements


      1. Required parts to obtain filing date:
        1. Specification
        2. At least one claim
        3. Drawing if necessary to understand the invention
      2. Required parts to maintain a filing date:
        1. Oath or declaration
        2. Filing fee


  • Method of transmitting patent application


      1. USPS express mail to addressee: f/d = received by USPS (date stamp) MPEP513
        1. Should retain mailing label number to facilitate proof if lost
        2. Petition to correct USPS express mail error: copy of mailing label, copy of express-mailed paper showing mailing label number, PTO-returned postcard, declaration/affidavit if label is faulty
        3. Use drop box at own risk
        4. Express mail to post office does not count!
      2. Regular US mail: f/d = actually received by PTO
      3. Hand delivery: f/d = actually received by PTO
      4. Electronic filing
      5. No fax!


  • Specification: format, requirement


      1. Parts


  • Title


        1. Cross reference to related applications (such as continuation, divisional, CIP, etc.)
        2. Statement re federally sponsored research
        3. Parties to joint research agreement (avoid obviousness rejection)
        4. Reference to sequence listing
        5. Background of invention
        6. Brief summary of invention


  • Brief description of views of the drawing
  • Detailed description of the invention
  • Claim(s)
  • Abstract of the disclosure


        1. Sequence listing, if on paper
      1. Specification requirements
        1. Specification must support all claims; §112¶1
        2. Must not contain drawings or flow diagrams (should be in the drawings), but chemical and mathematical formulas are allowed
        3. Actual work in past tense, non-actual work (simulated, predicted) in present tense
        4. Non-English application is permitted, but with a translation and fee
        5. Trademarks allowed; hyperlinks not allowed
      2. Incorporation by reference MPEP608.01(p)
        1. Incorporate by reference only essential material including only:
          1. Issued US patent
          2. Pending US application commonly owned with the current application
        2. Priority claim ≠ incorporation by reference, but may claim priority and incorporate by reference in one sentence (this application claims priority to and hereby incorporate by reference …)
        3. Improper incorporation by reference: may later file amendment with a statement that the added material includes no new matter.
        4. Continuing application often frequently incorporate by reference the parent application or patent.
      3. Deposit of biological material
        1. Must be finished no later than 3 months after the notice of allowance
        2. No new matter
      4. Nucleotide and amino acid sequence: no new matter


  • Claim: numbering, arrangement, multiple dependent claim (MDC)


      1. Claim numbering
        1. Preserved throughout the prosecution, even when old claims are cancelled
        2. Renumbered after prosecution closes and before publication
      2. Claim arrangement
        1. Dependent claim follows immediately the claim it depends on
        2. No line crossing, but claim addition or deletion during prosecution may disrupt this
      3. Multiple dependent claim wording MPEP608.01(n)
        1. Only refers to preceding claim(s)
        2. Only in the alternative
        3. Must not depend on another multiple dependent claim, even indirectly!
      4. Multiple dependent claim fee calculation MPEP608.01(n)
        1. MDC fee = number of claims that the MDC directly depends on
        2. Claim that depends on an MDC: fee = same as that mdp
        3. Improper MDC and subsequent claims it spawns: treated as single dependent claims only


  • Drawings


      1. Drawings necessary for understanding the invention: required to obtain f/d
      2. Drawings only helpful for understanding the invention: not required to obtain f/d, may be submitted later


  • Oath or declaration


      1. Must identify application and inventor(s)
      2. Must state that invention is original and first
      3. Must acknowledge duty to disclose
      4. If foreign priority is claimed, then must identify the priority foreign application(s) and all earlier-filed related foreign application, unless these applications are identified in application data sheet (ADS)
      5. CIP: acknowledge duty to disclose


  • Abstract of the disclosure MPEP608.01(b): purpose is to facilitate searching


      1. Required to complete the application, but not for f/d
      2. Word limit: 150


  • Small entity status


    1. Small entity includes
      1. Independent inventor or other individual (e.g., assignee)
      2. Small business with 500 or fewer employees, including all affiliates
      3. Non-profit organization that has not sold the rights to a non-small entity
    2. Some (but not all) fees are reduced to 50%
    3. Status may be asserted with a written statement of entitlement, signed by inventor/assignee/agent
    4. New determination of status will be done upon patent issue and for maintenance fees.

Nonprovisional Application Examination (Substantive)


  • Order of examination


      1. Normal order
        1. Based on the order of US f/d, not foreign priority date
        2. May be made special to be examined earlier
          1. Director’s order to expedite
          2. Government request for immediate action
          3. Applicant’s petition to make special (see below)
      2. Petition to make special (no fee) MPEP708.02
        1. Health of the applicant: to facilitate applicant’s assistance to PTO; medical certificate required
        2. Age of the applicant: 65 or older; birth certificate required
        3. Environmental quality: materially enhances the quality of the environment; explanation required
        4. Energy: materially contributes to energy utilization and conservation; explanation required
        5. Superconductivity: involves superconductivity; explanation required
        6. Counter-terrorism: explanation required
      3. Petition to make special (fee required) MPEP708.02
        1. For the asking: application not yet examined; search already made; discussion on patentability
        2. Biotechnology application of small entity: application is a major asset
        3. Recombinant DNA research: explanation required
        4. HIV/AIDS and cancer: explanation required
        5. Prospective manufacturing: must show proof; search already made
        6. Actual infringement: infringement already in action; search already made
      4. Suspension and deferral of action MPEP709
        1. Suspension of examination by PTO: avoided if possible
          1. Maximum 6 months
          2. Possible reason: a reference will soon be available
        2. Suspension at applicant’s request
          1. For good cause: must not have outstanding OA
            1. Petition + fee
            2. 6 months maximum
          2. In application with RCE (utility patents) or CPA (design patents)
            1. Request must be filed with RCE or CPA
            2. Fee required
            3. 3 months maximum
            4. Possible reason: waiting for expert testimony or experimental results
          3. Deferral of examination for published application
            1. 3 years maximum, from the earliest effective f/d


  • Statutory subject matter; §101


      1. Four categories: process, machine, manufacture and composition of matter, including improvements MPEP706.03
        1. Not statutory subject matter: scientific principle divorced from tangible structure
        2. Not statutory subject matter: naturally occurring products, expect purified or genetically engineered
        3. Not statutory subject matter: printed matter that does not cooperate with some structure
      2. Must have utility: lawful use that provides public benefit MPEP2107.01
        1. Not patentable: incredible inventions (e.g., perpetual motion machine)


  • Not patentable: solely useful in utilizing nuclear energy or material in an atomic weapon MPEP706.03(b)
  • Third party protest: basic idea = to minimize harassment to the applicant MPEP1900


      1. Must identify application
      2. Filed before publication of application or mailing of notice of allowance (If application is published, then protest is not allowed)
      3. Served upon applicant, or filed in duplicate in PTO if service is not possible
      4. Protester has no further right of participation
      5. Applicant need not respond unless requested to do so by PTO
      6. Protest based on patents, publications or other information: considered by PTO while application is still pending; protest must include:
        1. List of patents, publications or other information
        2. Concise explanation of relevancy
        3. Copy of each relevant item
        4. Translation of non-English documents
      7. Protest raising fraud or other inequitable conduct: entered by PTO but not investigated


  • Claim rejection: basis
  • Claim interpretation


        1. Given the broadest reasonable interpretation
        2. In light of the specification’s disclosure
        3. Viewed from the perspective of PHOSITA


  • Rejection under §102/103; MPEP2144.03


        1. Ordinarily, §102 and §102/103 rejections must be based on §102 events and/or applicant’s own admission
        2. In rare circumstances, the examiner may reject under §103 based on “common knowledge”, “well known prior art” or “official notice”, but only when:
          1. The facts can be unquestionably demonstrated
          2. Some form of knowledge on record
          3. If applicant traverses the examiner’s assertion, the examiner must provide supporting documentary evidence
          4. If the examiner is relying on personal knowledge, he must provide an affidavit


  • Rejection under §112


        1. §112¶1 based rejection: specification lacks
          1. Written description of the claimed invention
          2. Enablement of making or using the claimed invention
          3. Disclosure of the best mode contemplated by the inventor
        2. §112¶2 based rejection
          1. Claim is indefinite (e.g., no antecedent basis)
          2. Claim fails to claim “the subject matter which the applicant regards as his invention”: rejection is based on statements outside the application as filed (e.g., admission)


  • Rejection based on res judicata: no second bite at the apple


        1. BPAI or a court has finally held a claim to be unpatentable, with no possibility for further review
        2. Unless new evidence is presented
        3. Pertains to the same claim or its equivalent


  • Claim rejection: action


      1. Office action must set forth: MPEP707.07
        1. Status of every claim
        2. For allowed claims:
          1. Reasons for allowance
          2. Allowable claims except as to matter of form: indicate form defect (objection, not rejection)
        3. For rejected claims:
          1. Reasons for rejection, including statutory basis
          2. Indicate multiple rejection grounds if applicable (reason: economy)
        4. Citation of references whether a claim is rejected or not
      2. Examiner may request information from applicant regarding database to search, relevant publications, patents, applications, etc.  Applicant’s reply must address each request.


  • Final rejection: MPEP706.07, 706.07(a), 706.07(b)


    1. Rejection is generally made final upon the second OA when
      1. The same rejection is being repeated, whether or not the claims were amended
      2. A new rejection (i.e., based on new ground) is being made of new or amended claims
    2. But it is improper to make a rejection final upon the second OA when
      1. A new rejection is being made of the same claims
    3. Rejection is generally not made final upon the first OA
      1. In general
      2. Application is a continuing or substitute application that was denied entry in the earlier application as including new matter.
      3. Application is a CIP that includes new matter.
    4. But it is proper to make a rejection final upon the first OA when
      1. The application is a continuing or substitute application and
      2. Contains the same invention claimed in the earlier application and
      3. Would have been properly finally rejected in the earlier application.


Amendments and Replies to Office Actions


  • Methods of transmitting submissions (not applications) to PTO


      1. USPS express mail to addressee: f/d = date-in; use express mail drop box at own risk MPEP513
      2. Regular US mail with a certificate of mailing: must be inside US (certificate of mailing is not acceptable from a foreign country!) and include a signed certificate with date of deposit MPEP512, 609(B)(1), 706.07(h), 1206
        1. When effective: f/d = date of deposit
        2. Effective for
          1. required submissions such as replies to OA and appeal briefs
          2. RCE
          3. IDS
        3. Not effective for new application, certain interference filings and other non-required submissions
      3. Fax: may be outside US (fax is also acceptable from a foreign country!) but must have a certificate of transmission
        1. When effective: f/d = date when transmission is sent
        2. Effective for
          1. required submissions such as replies to OA and appeal briefs
          2. RCE
          3. IDS
        3. Not effective for
          1. New applications
          2. Reexamination requests
          3. Drawings
          4. Original signature
          5. Certified documents
          6. Secrecy order correspondence
          7. Certain interference submissions
      4. Hand delivery, mail without certificate of deposit, fax without certificate of transmission, private courier: f/d = date of actual PTO receipt
      5. Internet communication: good for certain kinds of communication MPEP502.03
        1. Not effective for OA on merits or replies
        2. Must have applicant’s authorization, which may be withdrawn
        3. Must show sender’s capacity such as registration number


  • Replies to OA: types


      1. Reply to OIPE’s notice to file missing parts
        1. Where the missing part is necessary to obtain f/d: must submit the missing part to obtain f/d
        2. Certificate of mailing and transmission are not effective to obtain f/d
        3. Examples of missing part: Rule 63 oath or declaration, filing fee, inventor’s names, etc.
      2. Reply to OA on merits (i.e., amendment for request for reconsideration): applicant must
        1. Make a bona fide attempt to advance the application
        2. Address every rejection and objection by argument and/or amendment
        3. Remarks explaining amendments are required
        4. If applicant is not fully responsive
          1. Unintentionally: examiner may point out deficiency and set new reply time period
          2. Intentionally: application will be abandoned when statutory period expires
      3. Notice of appeal after the second or final OA (see outline on petition and appeal)


  • Amendments as reply to OA


      1. Four types
        1. Preliminary amendment: before first OA
          1. Amendments filed after but still on the same day as the application
            1. On or after 2004-09-21: treated as part of the original disclosure (thus allowed to contain new matter)
            2. Before 2004-09-21: treated as part of the original disclosure if a Rule 63 oath refers to the preliminary amendment
          2. Amendment filed after the application’s f/d: not part of the original disclosure (thus not allowed to introduce new matter)
          3. Amendment filed more than 3 months after the application’s f/d: may not be entered if it interferes with the preparation of an OA
          4. A preliminary amendment that cancels claims should be filed with the application
        2. Formal reply to a non-final OA
        3. Supplemental amendment: after first OA: further reply filed after a fully responsive previous reply; may or may not be entered by the examiner
          1. A first supplemental reply will be entered if received by PTO before an action to the first reply has been mailed to the applicant, but
          2. A second supplemental reply will not be entered if it unduly interferes with the OA that is being prepared.
        4. Amendment after final rejection MPEP714.12, 714.13
          1. Will be entered as a matter of right if it:
            1. Cancels rejected claims
            2. Complies with formal requirements
            3. Places the application in better form for appeal
          2. A reply that only touches the merits may be entered upon good and sufficient showing of
            1. Why the amendments are necessary
            2. Why such amendments were not earlier presented
          3. The filing of amendment or request for reconsideration after the final rejection
            1. Does not stop the statutory clock!
            2. To stop the statutory clock: applicant must file NOA, RCE or take other actions
          4. Even when an amendment after final OA is not entered, it is still retained in the file
            1. So any added claims in the amendment will use up the claim numbers re subsequent additional claims (such as in an RCE)


  • Proper forms of a reply to OA


        1. Must be signed by either applicant(s), assignee(s) or representative
        2. In English, in print, on A4 or 8 ½ X 11 paper


  • How to amend


        1. Amendment to specification
          1. Substitute the entire specification; must include
            1. An instruction to replace the specification
            2. A statement that the replacement specification contains no new matter
            3. A marked-up substitute specification showing deletions by strike-throughs or double brackets and additions by underlining
            4. A clean version of the substitute specification
          2. Replacement paragraph or section; must include
            1. An instruction to replace
            2. The replacement text, marked to show deletions by strike-throughs and additions by underlining
            3. Short deletions of up to 5 characters or not easily perceived deletions: may use double bracket
          3. Deletion or addition of a paragraph
            1. Explicit instruction to delete or add target paragraphs
            2. Full text of added paragraphs without underlining
        2. Amendment to claims
          1. Must contain a complete list of all claims with a status identifier: original, currently amended, new, previous presented, withdrawn, canceled, not entered
          2. Must contain full text of any pending or withdrawn (but not canceled) claims
          3. Currently amended claims must show deletions by strike-throughs and additions by underlining; short or not easily perceived deletions may use double brackets
          4. Original or previously presented claims (i.e., not currently being amended): presented in clean form
          5. Canceled claims, not entered claims: no text
          6. Newly added claims
            1. Identify with new status
            2. Use the next claim number
            3. No underlining
        3. Amendment to drawings
          1. Include a page indicating the figure(s) to be revised
          2. Attach replacement sheet(s) of revised drawings, but without makings to highlight the changes
          3. Explain the changes to the drawings either in the indicating page or in the remarks section of the reply, and request approval.
          4. Annotated sheet showing changes in the drawings: voluntarily submitted but must be submitted if the examiner requests it


  • Interview with PTO; MPEP713


      1. Not permitted before first OA, except in a continuing or substitute application (reason: already has OA)
      2. Not granted
        1. As a matter of right after final rejection
        2. After appeal has been filed
        3. After allowance
        4. During interference
        5. For sounding out the examiner (i.e., pure discussion without authority to reach agreement)
      3. Permitted: to demonstrate model or show videotape
      4. Record keeping
        1. Examiner must always file a summary in the record, regardless of who initiated the interview
        2. If the applicant initiated the interview
          1. The applicant must keep record of the interview
          2. But must also reply to the OA in writing despite the interview
      5. May be attended by
        1. The applicant
        2. Representative of record
        3. Representative not of record but either
          1. Known to be a local representative of the representative of record, or
          2. Produces authorization and has the application file in possession
      6. Interviews must be conducted at PTO; not permitted off PTO premise without Director’s permission.


  • Due dates and time extension: a game against the clock


      1. Start the clock: time to reply to OA is calculated from PTO’s mailing date
      2. Duration of the clock
        1. Statutory maximum: 6 months; 35 USC §133
        2. Shortened statutory period (SSP): routinely used by PTO; must be at least 30 days; 35 USC §133; examples include
          1. OA on merits: 3 months
          2. Restriction requirement: 1 month
          3. Ex parte Quayle action (all claims allowed, merit prosecution closed): 2 months
        3. Non-statutory due dates: no maximum due date but PTO still often sets time to reply; examples include
          1. OIPE notice to file missing parts
      3. Extending the clock: buy time up to statutory maximum
        1. Rule 136(a) type extension: applicant is entitled to automatic, retroactive extension
          1. How to purchase extension
            1. File petition for an extension: may be waived
            2. Pay the requisite fee or an authorization to charge to deposit account: treated as a constructive petition for extension, thus actual petition is waived


  • Must still fully reply to OA


            1. Extension cannot go beyond the statutory 6 month maximum
          1. Rule 136(a) extension is not available for:
            1. When PTO says no extension
            2. In reexamination proceedings
            3. Filing reply brief (not appeal brief)
            4. Responding to or appealing BPAI decisions
            5. Filing requests for oral hearings on appeal
            6. In interference proceedings
        1. Rule 136(b) type extension: only when Rule 136(a) type extension is not available
          1. Must be obtained prospectively, no retroactivity
          2. May be obtained for cause
          3. May not exceed the statutory 6 month maximum
        2. Non-statutory due date extension: up to 5 months according to Rule 136(a); automatic and retroactive; examples include
          1. Notice to file missing parts
          2. Applicant’s brief on appeal
      1. During the extension: you can do anything: reply to OA, file NOA, file RCE and other continuations
      2. Expiration of the clock: when does the clock run out?
        1. If the OA reply due date falls on Saturday, Sunday or a federal holiday (July 4, December 25, January1): then the next PTO business day is the due date, even though this may go beyond the statutory 6 month maximum.
        2. Extended due date is always calculated from the original mailing date.
        3. If the due date does not exist in that month (such as February), then it is the last day of the month: you just have to swallow those few missing days.
      3. Stopping the clock: non-final OA or final OA?
        1. Stopping a non-final OA clock: a full response to the non-final OA stops the clock
        2. Stopping a final OA clock
          1. Even a full response to a final rejection does not stop the clock!
          2. Only a proper RCE or NOA will stop the response to OA clock!
            1. Filing RCE or NOA stops the clock while keeping the application pending: applicant may even file continuation after RCE or NOA
      4. When the clock runs out: abandonment results!
        1. Failure to properly respond and pay all required fees by the statutory maximum due date will result in abandonment as of the original SSP date, or the properly extended due date.
        2. Improper extension request (such as not paying the requisite fee timely) is ineffective.
      5. PTO special rule re final rejection clock: PTO rewards applicant’s diligence MPEP706.07(f)
        1. PTO mails final rejection setting due date to reply (such as a 3 month SSP)
        2. Applicant replies within 2 months
        3. But PTO does not mail an Advisory Action until after the due date
        4. Now: the due date is reset and shifted automatically to the Advisory Action mailing date
        5. But: under no circumstances may the due date go beyond the statutory 6 month maximum!
      6. When the applicant cannot purchase time extension: because PTO wants to expedite patent publication MPEP711.03(c), 203.07
        1. To file formal drawings (3 month non-extendable period from notice of allowance)
        2. To pay the issue fee (3 month non-extendable period from notice of allowance)


  • Statutory Invention Registration (SIR): waives the right to receive patent on the claims; MPEP1100


      1. Converted from a nonprovisional application
      2. Must satisfy §112 requirements and has formal drawings
      3. Must be filed while the application is still pending
      4. May be withdrawn
        1. Before the notice of intent to publish
        2. Thereafter must petition to withdraw
      5. SIR is prior art as of the nonprovisional application’s f/d.
      6. A fee is required


  • Abandonment


    1. Express abandonment
      1. Must be signed by
        1. Representative of record
        2. Assignee of the entire interest
        3. All applicants where there is no assignee
        4. A combination of all applicants and partial assignees
      2. Not effective after issue fee has been paid, unless there is time to pull the application from issue
    2. Unavoidable abandonment: revival MPEP711.03(c)
      1. Full reply to OA or a continuing application
      2. A showing that the delay was unavoidable: very hard to establish
      3. Relatively small fee
      4. Applicant must file terminal disclaimer to give up the abandoned patent term for the following:
        1. Design application
        2. Utility or plant application filed before 1995-06-08
        3. Utility or plant application filed between 1995-06-08 and 2000-05-20 (AIPA) and abandoned during appeal, interference or secrecy order
    3. Unintentional abandonment: revival MPEP711.03(c)
      1. Full reply to OA or a continuing application
      2. A simple statement that the entire delay was unintended
      3. Relatively large fee
      4. Applicant must file terminal disclaimer to give up the abandoned patent term for certain application types:
        1. Design application
        2. Utility or plant application filed before 1995-06-08
        3. Utility or plant application filed between 1995-06-08 and 2000-05-20 (AIPA) and abandoned during appeal, interference or secrecy order
    4. Failure to timely pay maintenance fee: revival
      1. Unavoidable failure to pay: requires
        1. A showing of unavoidable delay + a petition
        2. Payment of maintenance fee + a relatively small surcharge
      2. Unintentional failure to pay – only effective within 24 months after the grace period: requires
        1. A statement that the delay was unintentional
        2. Payment of maintenance fee + a relatively large surcharge

Petition and Appeal


  • What triggers petition or appeal?


      1. What triggers a petition: an objection or a formal/procedural requirement, such as:
        1. A new matter objection to specification
        2. A restriction requirement
      2. What triggers an appeal: a rejection of claims on any ground


  • Petition to overcome objections: MPEP1000


      1. General aspects of a petition
        1. Petition to the Director or his delegate
        2. Does not automatically stop the reply clock!  This is not like a Notice of Appeal!
        3. Time to file petitions


  • Time to file ex parte petitions: 2 months


          1. Inter partes, interferences: 14 days
        1. Fee or no fee: often tested on the exam
      1. Frequently tested petition types
        1. Petition for PTO to withdraw holding an application abandoned MPEP711.03(c)
          1. Not the same as petition to revive an abandoned application
          2. No fee
        2. Petition to obtain a filing date
          1. When PTO did not give a f/d
          2. When PTO gave a late f/d (may be appealable)
          3. No fee
        3. Petition from restriction requirement MPEP818.03(c)
          1. Inter-claim restriction requirement (two or more groups of claims): petition is proper
          2. Intra-claim restriction requirement (within a single claim, such as Markush): appeal is proper
          3. May defer until after final OA or claim allowance, but no later than appeal
          4. Must allow the examiner to reconsider before filing the petition
          5. No fee
        4. Petition from non-appealable decision by an examiner
          1. Petition is proper when
            1. Examiner refuses to enter an amendment, terminal disclaimer or Rule 132 declaration
            2. Examiner makes an action final upon the first OA
            3. Examiner requires the cancellation of alleged new matter from specification
          2. No fee
        5. Petition for waiving a rule not required by a statute
          1. Director can waive a PTO rule, but not a statutory requirement
          2. Decided on merit
          3. Fee required: no small entity discount!
        6. Petition concerning situations not specifically provided for
          1. Decided on merit
          2. Fee required: no small entity discount!


  • Appeal to overcome rejections; MPEP1200


      1. Milestones = NOA, appeal brief, examiner’s answer, (optional oral hearing), reply brief (if elected), Board decision, rehearing request (if elected), further review of Board decisions (if necessary or elected)
      2. Initiating an appeal: filing a Notice of Appeal (NOA)
        1. Time to file NOA
          1. Proper: after final rejection or second rejection (even if not final)
          2. Within the PTO-set time to reply to OA (usually the 3-month SSP)
            1. Extendable automatically and retroactively per Rule 136(a)


  • May not exceed the statutory 6 month maximum


      1. Certificate of mailing is valid for filing NOA
      2. No need to sign the NOA
      3. Fees: small entity discount available
        1. First fee on filing the appeal
        2. Second fee on submitting the opening brief
        3. Third fee on request for oral hearing if needed
    1. Following the NOA: may add amendments MPEP1206
      1. Amendment/affidavit filed before filing the appeal brief; admitted by the examiner if it (makes the examiner’s job easier)
        1. Cancels claims
        2. Complies with the examiner’s request
        3. Presents the claim in a better form for appeal
        4. Clearly places the application in condition for allowance and gives sufficient reason why the amendment/affidavit is submitted now and not earlier
      2. Amendment/affidavit filed after filing the appeal brief; admitted by the examiner if it
        1. Cancels claims
        2. Rewrite dependent claims into independent form
      3. If the examiner chooses not to enter any post-NOA claims or amendments, the applicant may
        1. Petition (not another appeal!)
        2. File an RCE or continuing application: takes the disputed claims out of the appeals process and puts them back into prosecution
    2. Appeal brief: giving substance to the appeal MPEP1205
      1. Time to file: 
        1. Within 2 months from the date of appeal, defined as
          1. In case of USPS express mail: date-in on the mailing label
          2. In case of certificate of mailing: PTO’s actual date of receipt, not the date on the certificate of mailing
        2. Extendable up to 5 months upon payment (hence maximum time to file the appeal brief is 7 months); the statutory 6 month maximum does not apply (reason: this is not a statutory matter)
        3. Failure to file the appeal brief abandons the appeal, but not the application (rejected claims go back to the examiner).  MPEP1215.01
      2. Parts of the appeal brief
        1. The argument itself; must not contain new evidence (e.g., new affidavits or declaration)
        2. Status of claims (rejected, allowed, withdrawn, etc), amendments (entered or not entered)
        3. Summary of claimed subject matter
        4. Grounds of rejection
        5. Real party in interest (e.g., assignee)
        6. Other parts
      3. Rejected claims in the appeal brief stand or fall together, unless the appellant
        1. States that the claims do not stand or fall together, and
        2. Argues the claims separately.
        3. Examiner has no say on the grouping of claims.
      4. Any rejection ground not argued by the appellant is summarily upheld by BPAI.  Lesson: the appellant should argue every rejection ground. MPEP1205.02
    3. Examiner’s answer to the appeal brief MPEP1207
      1. Time constraint: 2 months from the filing of the appeal brief
      2. Examiner may include new ground of rejection, but must have approval from the Tech Center.
      3. Examiner is not permitted to
        1. Reject a previously allowed or merely objected-to claim: too late to reject now; examiner must reopen prosecution MPEP1207.03(II)
        2. Respond to an argument previously made by the applicant but not responded to by the examiner: too late to respond now MPEP1207.03(II)
      4. In response to examiner’s new ground of rejection, the applicant may introduce new evidence by
        1. Contest this new ground by a timely petition; if not timely petition, then the rights to contest is lost
        2. Filing a reply brief
        3. Requesting the reopening of prosecution
    4. Optional request by the applicant for oral hearing
      1. Due 2 months from the date of the examiner’s answer
      2. Extension of time only available under Rule 136(b) and not Rule 136(a): applicant must provide reason for extension
      3. Oral hearing may delay BPAI’s decision.
    5. Reply brief by the applicant: applicant may choose to put in the last word MPEP1208
      1. Applicant’s automatic right to file
      2. Due 2 months from the examiner’s answer
      3. Extension of time only available under Rule 136(b) and not Rule 136(a): applicant must provide reason for extension
      4. Additional evidence and amendments submitted with the reply brief will only be admitted upon showing good and sufficient reason.
    6. Decision by the Board MPEP1213
      1. The decision closes the prosecution on the rejected claims.
      2. If BPAI finds a claim allowed or allowable, then the claim is sent to allowance or can be amended to place it for allowance.
        1. The examiner is bound by the Board’s statement of allowance
          1. If the Board affirms the rejection of an otherwise allowable dependent claim: the examiner must obey the Board and cancel this dependent claim
          2. If the Board reverses the rejection of an otherwise allowable dependent claim: the examiner must obey the Board and either convert this dependent claim into independent form, or give the applicant one month to rewrite the claim with no time extension whatsoever.
        2. Unless the examiner raises new ground of rejection (e.g., a newly discovered prior art)
      3. The Board may decline to back the examiner, but still reject the claim on new ground.
      4. For any rejection based on new ground, the appellant may
        1. Request for rehearing, or
        2. Request to reopen prosecution, or
        3. If the above requests fail, seek court review (i.e., give PTO a chance first)
    7. Request for rehearing
      1. Time constraint: 2 months from Board’s decision
      2. Extension only for cause (i.e., Rule 16(b)); no fee
    8. Further review of Board decisions: judicial review
      1. Time constraint: 2 months from Board’s final decision; extendable with explanation but no fee
      2. Two routes of court review
        1. Directly appeal to the Federal Circuit: may not add new evidence
        2. Commence quasi de novo civil action in the DC district court
          1. Not available for patents being reexamined where application f/d is on or after 1999-11-29.
          2. May add new evidence
          3. Appealable to the Federal Circuit


Correction of Patents


  • Overview


      1. Vehicles for correcting patents
        1. Certificate of Correction (C of C): for clerical errors, typos, etc.
          1. PTO’s mistake
          2. Applicant’s mistake
        2. Reissue application
          1. Broadening claim scope: within 2 years from issue
          2. Narrowing claim scope: during the term of the patent
        3. Reexamination of patent
          1. Ex parte reexamination: between applicant and PTO
          2. Inter partes reexamination: involves third party
      2. Common characteristics
        1. Only available to correct good faith errors: cannot correct mistakes due to inequitable conduct
        2. Cannot insert new matter into the patent
        3. Available for correcting all types of patents: utility, design, and plant


  • Certificate of Correction (C of C)


      1. General aspects:
        1. Only for non-substantive errors, such as clerical errors, typos, etc.
        2. No requirement for diligence: may correct even after the patent expires
        3. Corrective effect is retroactive
      2. C of C to correct PTO’s error
        1. Any error correctable (e.g., failure to correctly print claims, specifications, priority claims, drawings, etc.)
        2. No fee
      3. C of C to correct applicant’s error
        1. Error must be minor and clerical or typographical in nature (i.e., not requiring substantive examination)
        2. Fee required: no small entity discount!
      4. C of C to correct inventorship
        1. May correct: misjoinder, non-joinder and totally erroneous inventorship
        2. Requirements
          1. Statement from each added inventor that the error was without deception on his part
          2. Statement from remaining inventors agreeing (or not disagreeing) to the change
          3. Statement from all assignees agreeing to the change
          4. Assignment from newly named inventors (if applicable)
        3. Fee required: no small entity discount!


  • Reissue application


      1. Reissue: overview
        1. Reissue may correct any defects that make the patent inoperative or invalid, including (comprehensive corrective power):
          1. Too narrow or too broad claim scope
          2. Inventorship
          3. Specification
          4. Drawing
          5. Domestic or foreign priority claim
          6. May even be used to provoke interference (i.e., adding new claims to exclude latecomers from making similar claims)
        2. Patentee assumes risk when filing reissue application:
          1. Original patent is no longer presumed to be valid during the reissue examination.
          2. Reissue application is subject to full examination (i.e., examined like an original application).
          3. Originally allowed claims may be rejected on any ground, including ground withdrawn by the examiner during the original prosecution.
          4. Application file is open to the public (since the original patent already issued).
        3. Patentee still retains some rights:
          1. Original patent’s f/d controls re prior art.
          2. Examiner cannot require restriction involving only the claims in the original patent, but may require restriction involving newly added claims.
          3. Applicant may file divisionals to divide original claims, but is subject to double-patenting rejections.
        4. Expedited examination: reissue examination is automatically made special. 
      2. Reissue narrowing claim scope
        1. Can be filed by assignee(s) of the entire interest, even without permission from inventors
        2. Can be filed at any time during the term of the patent
      3. Reissue broadening claim scope
        1. Requires consent of all parties – assignee(s) and inventor(s)
        2. Must be filed within 2 years from original issue
          1. Once filed within 2 years, subsequent broadening is allowed even beyond 2 years
        3. May claim subject matter originally disclosed but not claimed, but always: no new matter
        4. May not claim subject matter that was subject to restriction requirement during original prosecution but was not elected, i.e., failure to timely file a divisional application then cannot be corrected by reissue now (reason: the patentee already had his chance to file a divisional application but chose not to do so) MPEP1412.01
        5. Recapture estoppel: may not claim identical subject matter surrendered (canceled) during original prosecution MPEP1412.02
          1. May capture claims of intermediate scope (e.g., canceled claim has elements ABC, issued claim has elements ABCDE, reissued claim may have elements ABCD)
        6. Adding domestic or foreign priority claim is not broadening.
      4. Reissue application: parts and form
        1. Upon reissue application, parts must include:
          1. Reissue oath or declaration MPEP1414
            1. States that the patent is wholly or partially inoperative
            2. States at least one error as the basis of reissue (e.g., misunderstanding of the law or of the scope of the prior art)
            3. States that the error was made without deceptive intention
          2. Body (form) of the reissue application
            1. Copy of printed patent printed only on one side, with new claims starting with the next number above the original highest number
            2. Amendments made in the same manner as during original prosecution
            3. Separate pages showing the current status of each claim, along with the support for any claim change
          3. Other documents
            1. Offer to surrender the original patent: surrender takes effect upon reissue; during examination the original patent is still in effect
            2. Assent of the assignee
            3. Copies of drawings from the printed patent (may not simply as PTO to transfer from the original patent file)
            4. If necessary: IDS, priority claims
          4. Fee: small entity discount available!
        2. Important points re reissue application
          1. Foreign priority claim of the original patent does not carry forward!  Applicant must request such foreign priority during reissue application.
          2. As reissue prosecution concludes, before allowance, supplemental oath is required if (important: oath and error have to match) MPEP1414.01
            1. Prior reissue oath failed to state an error corrected during reissue prosecution
            2. Prior reissue oath improperly stated an error
            3. Errors stated in the prior reissue oath are no longer being corrected


  • Reexamination of patent


    1. Reexamination: overview
      1. Two stages of reexamination
        1. Substantial new question of patentability
        2. The actual examination
      2. Two types of reexamination
        1. Ex parte reexamination: may be requested by the patentee or a third party, but third party participation is limited to the first stage
        2. Inter partes reexamination: permits a third party to participate in all stages, including subsequent Board and court appeals
      3. Claims may only be narrowed but not broadened; may amend specification but no new matter.
      4. Expired patent may be reexamined without amending any claims (reason: infringement suit may last beyond patent expiration).
      5. No withdrawal permitted once reexamination is requested.
      6. No continuation from the reexamined patent is permitted.
      7. Prosecution file is open to public.
      8. Reexamination proceeding is conducted with special dispatch (i.e., not in queue).
    2. Ex parte reexamination
      1. Request for ex parte reexamination
        1. Who may request: any party
        2. Time limit: period of enforceability = up to 6 years after patent term expiration MPEP2211
        3. Basis of request: patents, publications and admissions only!
          1. Most common: prior art (less common: double patenting)
          2. May also base on §102(f) derivation or §102(g) prior making, as long as such prior art is disclosed in patent, publication or admission.  MPEP2217
        4. Request for ex parte reexamination: parts
          1. Copy of the complete patent in double column format (including any disclaimer, C of C, previous reexamination certificate, etc.)
          2. Comparison of prior art to claims under question
          3. Fee
          4. English translation if necessary
        5. Request for ex parte reexamination: procedure
          1. If filed by a third party
            1. Identity of real party in interest need not be disclosed (i.e., third party may hire an agent to request reexamination)
            2. Must serve on the patentee
            3. Patentee may not respond prior to PTO’s grant of reexamination
          2. If filed by the patentee: may include proposed amendment
      2. Ex parte reexamination: pre-reexamination
        1. PTO’s examination of request for reexamination
          1. PTO will decide in 3 months
          2. Dispositive issue considered by PTO:
            1. Whether the request raises a substantial new question of patentability
            2. Not whether the patent’s claim is prima facie invalid (that was already decided by PTO in the prior examination)
          3. Determination is made by an examiner other than the original examiner (except in unusual circumstances)
        2. Upon PTO granting the request for reexamination:
          1. Patentee may file (optional) preliminary statement/amendment within 2 months from the mailing date of the PTO order granting the request.
          2. Only in response to patentee’s preliminary statement/amendment, the third party may reply
            1. Within 2 months from the serving date of the patentee’s statement/amendment, without time extension
            2. May include citation of further prior art in response to the patentee’s statement/amendment
        3. Third party requester has no further right to participate in the ex parte reexamination proceeding; even judicial review is not available to third party here!
      3. Ex parte reexamination: actual reexamination
        1. Reexamination is conducted with urgency: with special dispatch; time extension is rare and is only allowed with showing of good cause according to Rule 550(c)
        2. Rejection is based only on patents, publications and admissions: matters such as public use, for sale, lack of utility, incorrect inventorship, fraud, etc. are merely noted by the examiner (prompting patentee to file a future reissue application)
        3. No presumption of claim validity (just like reissue examination); claims are given the broadest reasonable interpretation (just like a regular examination)
        4. Examiner may use prior art cited in the request, and also use prior art in:
          1. Cited in the patentee’s preliminary statement/amendment and/or the third party requester’s reply
          2. Record from earlier examination
          3. Discovered by the examiner
          4. Cited by the patentee in IDS under duty to disclose
          5. Cited by additional third party requesters
        5. No oath required
        6. Original claims are not examined for compliance with §112 or §132 (notice of rejection; reexamination), but new and amended claims are.
      4. Office action
      5. Interviews
        1. No interview on merits prior to the first OA (just like a regular examination)
        2. Interview summary: must always be filed by the patentee, within 30 days from interview
        3. Third party may not participate.  (Reason: third party participation stops before the actual ex parte reexamination)
      6. Appeals
        1. Conducted with special dispatch
        2. Third party may not appeal or be involved in any other way.
    3. Inter partes reexamination
      1. Request for inter partes reexamination: by third party only!
        1. Same as ex parte, and
        2. Real party identity
        3. Certification providing:
          1. Requester will not file another reexamination request before the current reexamination is concluded
          2. The current request is not on an issue that the requester lost (or could have raised) in a prior inter partes reexamination or court action; basically, no second bite at the apple. 
      2. Inter partes reexamination: pre-reexamination
        1. Patentee’s response
        2. Third party requester’s response
      3. Inter parties reexamination: actual reexamination procedure limits back-and-forth responses between patentee and third party
        1. PTO issues OA on merits
        2. Patentee’s response to OA on merits
          1. No amendments to enlarge claim scope
          2. No interviews
          3. 50 page limit, excluding amendments, appendices of claims and prior art references
        3. Third party requester’s response to patentee’s response: only one response allowed.
          1. Within 30 days from service of patentee’s response; no time extension
          2. Comments limited to issues raised by OA or patentee’s response
          3. Citation of additional prior art allowed only when necessary
          4. 50 page limit, excluding reference materials
        4. PTO issues right of appeal notice: similar to final OA
          1. One month for either party to appeal to Board
      4. Inter partes appeal
        1. Appellant’s brief: within 2 months, 30 page limit, no time extension
        2. Respondent’s (cross appeal) brief: one month, 15 page limit, no time extension (reason: expedite!)
        3. Examiner’s answer
        4. Appellant’s rebuttal to examiner’s answer: one month, no time extension
        5. Oral hearing
      5. Board decision
        1. May affirm, reverse, or remand
        2. Board can raise new ground of rejection
        3. If Board sides with the third party, the patentee has one month (extendable) to:
          1. Submit amendment or showing of facts (third party then has one month to reply), or
          2. Request rehearing
      6. Court review of inter partes reexamination
        1. May be sought by either party
        2. May only file in the Federal Circuit
    4. Comparison between ex parte reexamination and inter partes reexamination
      1. Similarities between ex parte reexamination and inter partes reexamination
        1. Same basis for requesting reexamination: patents, publications and admissions
        2. Same determination to grant reexamination: substantial new question of patentability
        3. No continuing application may be filed
        4. No restriction by the examiner (pertaining to the reexamined claims)
      2. Inter partes reexamination is different from ex parte reexamination in the following:
        1. Available only for patents filed on or after 1999-11-29 (AIPA)
        2. Can only be filed by third party!
        3. Real requester must be identified.
        4. If request is denied by PTO, third party may petition to Director within one month.
        5. If request is granted, first OA on merits is ordinarily mailed with the order to grant request.
        6. Third party may appeal to Board and participate afterwards.
        7. No interviews
        8. Fee is about 4 times that of the ex parte
        9. After reexamination closes, third party is estopped from challenging any claim validity on any basis that could have been raised during reexamination (reason: no second bite at the apple). 
    5. Reexamination certificate
      1. Indicates states of all claims
      2. Always issues at the conclusion of the proceedings



  • Overview


      1. Basics of PCT
        1. A multilateral treaty between 130 contracting states, entered into force in 1978.
        2. Administered by International Bureau (IB) of the World Intellectual Property Organization (WIPO)
        3. Permits a national/resident of any contracting state to file one patent application that will have effect in multiple states
        4. Gives applicant up to 30 months to evaluate and pursue further patent application
      2. Three stages of PCT: overview
        1. Chapter I Processing: filing, search and publication
          1. Applicant files an International Application (IA) in the Receiving Office (RO) or IB.
          2. Claimed invention is searched by an applicant-selected International Search Authority (ISA).
          3. ISA issues an International Search Report (ISR) and a written opinion (WO) and mails them to the applicant.
          4. IB publishes IA and ISR (but not WO).
        2. Chapter II (optional) processing: preliminary examination
          1. Applicant may elect for preliminary examination or skip this stage.
          2. International Preliminary Examination (IPE) is conducted by the applicant-selected International Preliminary Examining Authority (IPEA).
          3. IPEA issues an International Preliminary Report on Patentability (IPRP) [aka International Preliminary Examination Report (IPER)].
        3. National Stage: must enter or PCT application expires
          1. PCT application undergoes examination in each national or regional patent office and is nationalized by the applicant.
          2. Without entering national stage, the PCT application expires.


  • Chapter I: IA and ISR


      1. International Application (IA) MPEP1810
        1. Elements required to receive a f/d: if defective, RO will invite applicant to correct, but f/d will be the date when the correction is received.
          1. Indication that at least one applicant is a national or resident of a PCT contracting state: if IA is filed in wrong RO, it will be forwarded to IB without affecting the f/d.
          2. IA must be in the prescribed language (i.e., Arabic, Chinese, English, French, German, Japanese, Russian and Spanish): if IA is not filed in English to US/RO, it will be forwarded to IB without affection the f/d.
          3. An indication that the application is an IA
          4. Before 2004-01-01: designation of a contracting state; after 2004-01-01: automatic designation
          5.  Name of the applicant (applicant may be other than the inventor)
          6. A description
          7. One or more claims
        2. Other required elements, but not necessary to establish a f/d: may be submitted later
          1. Request that IA be processed, including:
            1. Title of the invention
            2. Identity of the applicant and the agent (if any): for US, the applicant must be the inventor!
            3. Priority claim (if any)
            4. Applicant’s choice of ISA
            5. Signature of applicant or agent
            6. For US: declaration of inventorship
          2. Abstract
          3. Drawings (if required)
          4. Fee: may pay within 30 days; RO will notify if fee is not paid
          5. Translation (if necessary)
      2. International search for prior art
        1. If the invention lacks unity of invention, then applicant will pay additional search fee: similar to restriction requirement in US application.  MPEP1850
        2. ISA conducts international search: in US, either PTO or EPO may search
          1. Prior art’s broad encompassment: everything made public anywhere in the world
          2. Reference date: IA’s f/d (not DOI)
          3. Patentability criteria: novelty, inventive step (nonobviousness) and industrial applicability (utility)
          4. No search if IA is too defective to preclude meaningful search
        3. ISA issues ISR
          1. Mailed to applicant 16 months from IA f/d or the earliest priority date
          2. Only for identifying prior art
          3. Records results of search, such as citation of relevant documents
          4. Does not contain opinion, reasoning, argument or explanation
          5. Indicates examiner’s approval or amendments of title or text of abstract, and selection of representative drawings
        4. ISA issues WO: mailed to applicant with ISR MPEP1845
          1. Contains opinions and reasons re the invention’s novelty, inventive step and industrial applicability
          2. Invites applicant to reply and amend
        5. Applicant may elect to amend the claims only MPEP1853
          1. Within 2 months from ISR mailing date
          2. Only once during Chapter I processing
          3. Timely received amendments are published along with IA/ISR
        6. IB publishes IA and ISA (but not WO), along with timely received amendments MPEP1857
          1. 18 months from IA f/d or earliest priority date, or earlier at the applicant’s request
          2. Publication may be delayed by withdrawing priority claim
          3. To avoid publication, applicant may withdraw IA or priority claim within 17.5 months from IA f/d or earliest priority date.
          4. WO is not available to public until after 30 months from IA f/d or priority date.
      3. If the US is the only contracting/designated state in a PCT application, the IA will not be published automatically by IB at 18 months.  (reason: some US applications are not published under applicant’s non-publication request)


  • Chapter II: IPE


      1. Applicant demands for IPE
        1. Timeline:
          1. Within 3 months from ISR/WO date or “no search” declaration (by ISA due to too many IA defects), whichever is later, or
          2. 22 months from priority date
        2. Demand made to desired IPEA: in US, demand in English to
          1. PTO: may serve as IPEA for US nationals/residents and other countries listed in MPEP1865 (e.g., Brazil, India, Israel, etc.)
          2. EPO if EPO did the international search
        3. Applicant pays IPE fee
          1. Within prescribed time, before IPEA sends “invitation” to pay examination fee MPEP1867
          2. Untimely payment will incur late fee
          3. If invention lacks unity of invention, then additional fee is required (similar to restriction)
        4. Applicant has one more chance to amend before IPE begins
          1. Timeline: within 2 months from WO
          2. May amend description and drawings besides claims
          3. May also include explanation (e.g., how amendments counters an inventive step issue raised in ISA’s WO)
          4. No new matter is allowed.
        5. IPEA conducts IPE MPEP1878, 1879
          1. US IPEA considers ISA’s WO to be IPEA’s first written opinion.
            1. No further written opinion is issued unless applicant files persuasive argument against ISA’s negative opinion
            2. If US IPEA issues further written opinion, applicant may reply with amendments and/or arguments within 2 months, but reply must not contain new matter.
          2. Applicant may request interview with IPEA
            1. Once as a matter of right, additional interviews at examiner’s discretion
            2. Request made between date of WO and IPRP
            3. Interview must be made of record
        6. IPEA issues IPRP (aka IPER)
          1. Timeline (for IA filed on or after 2004-01-01): the later of
            1. 28 months from IA f/d or priority date, or
            2. 6 months from start of IPE, or
            3. 6 months from receipt of necessary translation.
          2. Content:
            1. For each claim, state whether novelty, inventive step and industrial applicability is satisfied:
              1. Cite any relevant documents
              2. Identify all entered amendments
              3. Give reasons for non-satisfaction (similar to objection and rejection)
            2. Remarks on unity of invention if necessary
            3. Must not give any opinion re patentability according to any national law (since PCT standard may be different from countries)


  • National Stage


      1. Not extendable: must enter national stage within 30 months from IA f/d or priority date (effective for any PCT application entering national stage after 2002-4-1, regardless of its PCT filing date)
        1. Abandoned IA may be revived for unavoidable or unintentional abandonment.
      2. Parts required to establish entry:
        1. Payment of national fee
        2. Copy of IA, unless previously sent to or originally filed in PTO
        3. Not effective: fax, certificate of mailing
      3. May be filed later: oath or declaration, necessary translation, preliminary amendment (if desired)
      4. Unity of invention criteria: carried through to national stage examination, unless and until
        1. RCE, continuation or divisional application is filed, then criteria shifts to US restriction practice


  • Additional points:


    1. Priority date: may claim up to 12 months before IA f/d
    2. Method of filing IA in US/RO
      1. USPS express mail
      2. Hand-carry
      3. PCT-Safe (electronic)
      4. Fax is unacceptable!
    3. IA: parts to US/RO
      1. Transmittal letter
      2. “Request”
        1. Must identify all applicants/inventors (US requires applicant = inventor), but signature from only one applicant/inventor is sufficient for execution
        2. Country designation: automatic after 2004-01-01
        3. Optional: may include US-acceptable declaration
      3. Fee calculation: pay within 30 days, or RO will send notice of insufficient fee
      4. Power of attorney: this form/requirement is waived by US
      5. Description, claim, necessary drawings and abstract: A4 size paper for all sheets
    4. IPE demand to US IPEA method: fax is acceptable!
    5. IPE demand: parts to US IPEA
      1. “Demand”
        1. Country election: automatic after 2004-01-01
      2. Later: voluntary amendment
        1. Without voluntary amendment ISA’s WO will be “repurposed” as IPRP
    6. US nationalization method to PTO: fax is unacceptable!
    7. US nationalization: parts to PTO
      1. Transmittal letter
    8. To withdraw IA:
      1. As of 2004-01-01: must be signed by all applicants (or agents)
    9. Even if applicant does not choose Chapter II IPE, IB still “established” WO (along with any “informal comment”) as IPRP at the end of month 28 from IA f/d or priority date, but this information is made public only after expiration of month 30.


Other Subjects

Continuing Applications (continuation/RCE, divisional, CIP)


  • General requirements


      1. Continuity of disclosure: §112¶1 support in the parent application
      2. Continuity of prosecution: copending with the parent application
      3. Continuity of inventorship: one or more common inventors
      4. Also: must have priority reference


  • Continuing prosecution: continuation application and request for continued examination (RCE)


      1. Continuation application
      2. RCE: an alternative mechanism of continuation: effective 2000-5-29
        1. Only available for utility and plant applications
        2. Required parts:
          1. Request for RCE
          2. Submission! (e.g., amendment, argument, new evidence, IDS) [reason: final OA is still outstanding, so applicant must parlay by filing a submission]
          3. Fee: must be filed with the request


  • Divisional
  • Continuation-in-Part (CIP): may include new matter



Foreign Priority and Provisional Application Priority


  • Foreign priority


      1. Requirements
        1. Within 12 months from US f/d
        2. Foreign application provides §112¶1 support for US application
        3. US application must refer to foreign application (or defer to later time)
      2. Hilmer doctrine: foreign priority is a “shield” but not a “sword”
      3. Comparison between continuing application and foreign priority


  • Provisional application: a domestic priority


    1. Overview and attributes
      1. Nonprovisional application filed within 12 months may claim priority to the provisional application
      2. The term of the nonprovisional patent starts from the nonprovisional f/d
      3. Provisional application may not claim an earlier priority.
    2. Provisional application: parts
      1. Required to obtain a f/d
        1. Specification complying with §112¶1
        2. Drawings if necessary
      2. Required to maintain the f/d
        1. Filing fee
        2. Cover sheet including:
          1. Identification as a provisional application
          2. Inventor’s names
        3. Not required: claims, oath or declaration
    3. Comparison between foreign priority and provisional priority
    4. Conversion between provisional and nonprovisional
      1. Converting nonprovisional application to provisional application: maintains f/d
      2. Converting provisional application to nonprovisional application: shortens patent term


New Matter


  • What does not constitute new matter


      1. Amending specification to conform to claims or drawings
      2. Subject matter previously incorporated by reference


  • What constitutes new matter
  • How PTO responds to new matter


    1. New matter in the specification: PTO objects under §132 and requires cancellation.
    2. New matter in any claim: PTO rejects the claim under §112¶1.
    3. New matter in a claim in a reissue application: PTO rejects the claim on two grounds – §112¶1 and §251.
    4. Rejections can be appealed to BPAI; objections can be petitioned to the Director.


Overcoming Rejections with Affidavits (Oath) or Declarations


  • Overview


      1. Reason, purpose
      2. Types of declarations
        1. Rule 131: to “swear back of” or “antedate” a reference in order to overcome §102(a)(e), but not §102(g)
        2. Rule 132: to overcome rejection or objection on other grounds
        3. Rule 130 declaration: seldom used


  • Rule 131 declaration


      1. Purpose
      2. Required to show: must provide supporting evidence
      3. R131 declaration cannot be used to overcome
        1. Reference that constitutes statutory bar: §102(b), §102(d)
        2. Reference that is a US patent of another claiming the same invention: proper route is interference proceedings
        3. Reference is the applicant’s prior US patent claiming the same invention or its equivalent: proper route is double patenting proceedings
        4. Reference that is a subject matter admitted by applicant to be prior art: no way to overcome admission
        5. §102(g) [interference]
        6. §102(f) [derivation]


  • Rule 132 declaration


    1. Purpose: catch-all situations besides Rule 131; most common uses are to
      1. Remove a reference
      2. Refute the rationale underlying a rejection or an objection (such as a §103 or §112 rejection)
    2. How to use Rule 132 declaration
      1. To remove a reference
      2. To rebut a rejection or an objection


Double Patenting (not often on the exam)


  • Overview
  • Statutory or “same invention” double patenting: cannot be overcome by terminal disclaimer
  • Nonstatutory, obviousness-type double patenting: can be overcome by terminal disclaimer
  • Terminal disclaimer


    1. Applies to all claims
    2. Requires common ownership
    3. Requires the second patent to expire with the first patent, except if the first patent
      1.  Expires for failure to pay a maintenance fee
      2. Is held invalid or unenforceable
      3. Is canceled in a reissue or reexamination proceeding
    4. Terminal disclaimer is not an admission that the application claim is obvious over the prior patent claim.


Restriction Requirement and Election of Species (not often on the exam)


  • Overview


      1. Reason for restriction
      2. Prerequisite for restriction


  • Two types of inventions to be restricted


      1. Independent and unrelated inventions
      2. Distinct but related inventions


  • Important procedural points (important)


      1. Applicant must elect and can’t argue with examiner’s restriction requirement.
        1. Applicant must elect a group
        2. Applicant may also traverse the restriction requirement by specifically giving reasons of the examiner’s error, thus preserving further right to petition.
      2. Non-elected claims are withdrawn from prosecution, but still stay in the application until those claims are canceled when the application is ready for issue.
      3. Applicant may petition (but not appeal) a restriction requirement.


Publication of Patent Applications and Pre-Issuance Royalties


  • Overview


      1. Statute on publication §122
      2. Applications subject to publication
      3. Exceptions to 18-month publication


  • Request for nonpublication


      1. Requirements for nonpublication: promise not to file abroad
      2. Consequence for applicant breaking his promise and file abroad: timely notify PTO (within 45 days of foreign filing) or risk abandonment.  Merely rescinding the nonpublication request will not satisfy PTO (applicant must notify PTO of the foreign filing).


  • Public access to published applications


      1. A copy of the entire file wrapper may be obtained by the public upon written request and fee.
      2. But the actual application file is not available to the public (reason: not to disrupt examination).
      3. If the US application contains more than the foreign application, then the US application is redacted.
      4. To reduce third party harassment after application publication:
        1. Third party may not protest or oppose the application
        2. Third party may, within 2 months from application publication, and with a fee, submit to PTO patents and printed publications only, but without any discussion, explanation, highlights, etc.


  • Other issues



Interference Practice (very rare on the exam)




  • The importance of naming the true inventor(s)


      1. Who is a true inventor?
        1. The person conceived the claimed inventions
        2. The person who merely reduced the invention to practice is not an inventor
        3. Corporation or the inventor’s assignee is not an inventor
      2. All inventors must sign the oath or declaration of a nonprovisional application.
        1. Joint inventors may sign for an inventor who refuses to sign or who cannot be found
        2. Assignee or other person showing a sufficient proprietary interest may sign if all inventors refuse to sign or cannot be found
        3. A legal representative may sign for a deceased or incapacitated inventor
      3. The oath or declaration of a nonprovisional application must identify: inventive entity, his citizenship and his residence.
        1. Oath always controls inventive entity and citizenship, regardless of the application data sheet (ADS)
        2. If ADS is filed (with or after the oath), then ADS controls the residence information
        3. If oath is filed after ADS, then oath controls everything


  • Joint inventor: “the 1% claim rule”
  • Error correction in inventorship


    1. Overview
    2. In a nonprovisional application
      1. Correcting inventorship (add and delete) due to error
      2. Deleting inventors due to claim change
      3. Adding inventors due to claim change
    3. In a provisional application
      1. Adding inventors due to error
      2. Deleting inventors due to error
    4. Correcting inventorship by filing Rule 63 oath or declaration
    5. Correcting inventorship by filing continuing application
    6. Correcting inventorship in an issued patent


Ownership, Assignment, Secrecy and Access


  • Ownership and joint ownership


      1. Owners
      2. Joint owners
      3. PTO employee may not own a patent until after one year from leaving his employment.


  • Assignment and license


      1. Definitions
      2. Recording assignment
        1. Recorded assignment of an ancestral application is effective for subsequent divisionals and continuations, but not to CIP.


  • Secrecy of patent applications


      1. Confidentiality requirements
      2. Exceptions to confidentiality requirements


  • Access


      1. Permitted access
      2. No access items
      3. Authorization to access unpublished application


  • Secrecy orders
  • Petition for license to file abroad


    1. How to obtain
    2. Consequence for violation
    3. Retroactive license


Representing the Inventor or Owner


  • Qualification


      1. To sign oath or declaration
      2. To prosecute an application


  • Power of attorney


      1. How to obtain
      2. PTO employees may not
        1. Assist in the prosecution of any application in which he participated as a PTO employee
        2. Assist in the prosecution of any application that was pending under his supervision until after two years from his leaving PTO employment
      3. Revocation of power of attorney
      4. Withdrawal of appointed attorney/agent
        1. Requires approval by Director
        2. Must give reasons
        3. Must be submitted at least 30 days prior to the latest deadline


  • Practitioner not of record
  • Dead, incompetent, or incapacitated inventor
  • PTO mailing hierarchy



Allowance, Issue Maintenance, and Extension


  • Ex Parte Quayle action


      1. Closes prosecution on merits
      2. Permits correction of formal matters (e.g., abstract, type)
      3. Amendments after Quayle action: treated “similar to” amendments after final OA


  • Notice of allowance


      1. Formally informs applicant of allowance and issue fee
      2. Amendments after notice of allowance
        1. By examiner
        2. By applicant: requires examiner’s approval
      3. Supplemental oath is not an “amendment”.


  • Withdrawal from issue


      1. Before payment of issue fee
        1. By examiner
        2. By applicant
      2. After payment of issue fee
        1. By examiner
        2. By applicant (by petition with fee)


  • Issue fee


    1. 3 months to pay
    2. No extension
    3. If issue fee is not paid within 3 months, then 
      1. The application goes abandoned
      2. But may be revived upon showing that the delay is unavoidable or unintentional
    4. Small entity at the time of payment is entitled to fee reduction
    5. Issuance may be deferred for up to one month by petition showing good reason, and fee.
    6. Patent issues to applicant (inventor) unless assignee’s name appears on Fee Transmittal Form.


Design Patents and Plant Patents


  • Design patents


      1. 14-year term from grant
      2. No maintenance fee
      3. One claim
      4. Purely ornamental = visual look, not functional
      5. Test for patentability: similarity to prior art in overall appearance
      6. Designer of ordinary skill
      7. Not entitled to provisional priority
      8. 6-month foreign priority


  • Plant patents: asexually producing, non-tuber propagating, cultivated plants


    1. 20-year term from earliest US f/d
    2. No maintenance fee
    3. One claim
    4. Printed publication is not prior art (reason: not enabling)
    5. If color is necessary, file application with two copies of color drawings or color photographs, along with black and white photocopy.


Ethics, Inequitable Conduct, and Fraud in Prosecution: Exam Highlights

  1. Patent agents may not practice outside prosecution.
  2. Billing clients
    1. Contingent fees (such as ownership) are permissible.
    2. Fees advanced must be deposited and may not be invested.
    3. Practitioner may not accept fee from one other than the client without the client’s consent.
  3. Practitioner may not neglect a matter entrusted to him.
    1. Not permitted: stops working for client if client did not pay.
    2. Permitted: withdraws from representation if client did not pay.
  4. Practitioner may not partner with a non-practitioner and use such partnership to practice before PTO.
  5. Practitioner may not take on another client with conflict of interest with the current client, unless the current client gives informed consent.
  6. Practitioner may not limit liability to a client for his malpractice.
  7. Practitioner may refuse his client’s unlawful request.
  8. PTO rule: practitioner must blow the whistle if client refuses to rectify his fraud; reality: practitioner decides on the best option (maybe: withdraw?)
  9. Inter parte reexamination: practitioner may not discuss merits with examiner without the other party’s participation or permission.
  10. Practitioner may not knowingly withhold from PTO controlling legal authority, even if such information is adverse to his client.  The ethical way is to present the information and argue against it.
  11. When PTO asks practitioner if he wishes to stay registered, no reply from the practitioner prompts PTO to presume that the practitioner has either retied or deceased, and remove the practitioner from registry.


Patent Term Duration


  • Overview of patent terms


      1. Application filed prior to 1995-6-8 (URAA): 17 years from issue
      2. Application pending or patent in force on 1995-6-8: 17 years from issue or 20 years from f/d, whichever is greater.
      3. Application filed between 1995-6-8 and 2000-5-28 (AIPA): 20 years from f/d with up to 5 years extension to make up delays
      4. Application filed on or after2000-5-29: 20 years from f/d with non-capped patent term adjustment (PTA)


  • Patent term adjustment (PTA = GAB – RRB)


      1. Guaranteed Adjustment Bases (GAB)
      2. Required Reduction Bases (RRB)
      3. PTO’s notice of PTA


  • Immutable laws of patent term determination under all past and current statutes


    1. Patent term always begins from issue.
    2. Terminal disclaimer always ends patent term.
    3. Failure to pay maintenance fee ends patent term.
    4. Term extension beyond statutory period can be obtained through:
      1. Private congressional extension legislation (very rare), and
      2. Regulatory delay which prevents commercialization during part of regular patent term.
    5. If the term measuring period is 20 years from filing, i.e., under URAA and AIPA:
      1. Ancestral f/d of any continuation, divisional and CIP: starts the 20-year clock
      2. A legitimate but unclaimed priority date: does not start the 20-year clock
      3. Provisional priority date, foreign priority date: does not start the 20-year clock
      4. Design patents: still 14-year term from issue