Go directly to the Patent Research Engineer's home page.
Rev August 12, 1998
***THE USEFUL INFORMATION IN THIS FILE IS IN ASCII TEXT FORMAT
USE ANY WORD PROCESSOR IN ASCII MODE, PRINT.COM (Comes with
DOS), LIST.COM, EDIT.COM, ETC, OR MOST FILE BROWSERS TO
PRINT THIS FILE.
***THIS FILE HAS A 1/2 INCH LEFT MARGIN FOR HOLE PUNCHING.
***THIS FILE HAS OVER LENGTH LINES WRAPPED, READY FOR PRINTING.
***THE INDEX PORTION OF THIS FILE IS BEST PRINTED AT 12 PITCH
(ELITE TYPE), OR 15 PITCH, WHICH LEAVES ROOM FOR NOTES.
THE NOTES PRINT ADEQUATELY IN 10 PITCH (PICA TYPE) BUT
SMALLER IS USEFUL.
------
SOMETIMES, THESE AND OTHER FILES DOWNLOAD WITH A MYSTERIOUS EXTRA
CARRIAGE RETURN, EFFECTIVELY DOUBLE SPACING THE FILE. THE SOURCE OF
THIS FILE CORRUPTING CARRIAGE RETURN IS UNKNOWN, BUT CAN BE REMOVED BY
SOME WORD PROCESSORS OR MY PROGRAM "FIXOLA.BAS" OR "FIXOLA.EXE" .
DOWNLOAD IT FROM WHERE YOU RETRIEVED THIS FILE.
=======================================================================
PATENT RESEARCH ENGINEERS NOTES:
years. Many are not well organized, and some are erroneous due to poor
interpretation of source documents.
I am working up an indexed study outline and exam notes for myself based
on the very little information in the PTO announcement.
Disclaimer:
authors are not responsible for any incidental or consequential loss
associated USC, CFR. Verify that the 6th edition does not differ in
Use:
As a study guide. Verify what is in here in the MPEP, CFR, USC.
In test:
[] = authors' commentary or source of information. Not part of facts
depicted.
When the notes indicate something is from a PTO document, it usually
means the fact was part of an old bar exam or the description of
why some answer was right or wrong.
Hewlett Packard printer control code for 12 pitch = (s12H
Hewlett Packard printer control code for 15 pitch = (s15H
15 pitch leaves room for notes.
Epson printer control code for 12 pitch = M
IBM printer control code for 12 pitch = :
The mere presence of these lines may be enough to set your printer.
======================================================================
| August 11, 1998
|
| INDEX -- PATENT RESEARCH ENGINEERS NOTES
.REF | SUMMARY CROSS REF
| FIRST ITEM IN LIST
*44.2* | 1.136 FEES, issue fee. (c)=Terminal Disclaimer required
{ A
*21* | ABANDONMENT 711.04a, 1.135
*13* | ACCELERATED EXAMINATION 708.02, CFR 1.102
*32.2* | AMENDED TWICE, FORMS 714.22, C1.121
*32.9* | AMENDMENT AFTER APPEAL BOARD DECISION 1214.01, 1214.06
*32.10* | AMENDMENT AFTER FINAL REJECTION OR ACTION 714.12, 714.13 C1.116
*65* | AMENDMENT AFTER ISSUE, CERTIFICATES OF CORRECTION m1480, 81
*32.8* | AMENDMENT AFTER NOTICE OF ALLOWANCE 1.312 M714.14 M1303.01
*32.2* | AMENDMENT FORMS. IN CLAIMS [ brackets delete ]. underline adds amended claims (not renumbered) must have the word "(amended)" inserted by number. () not to be used !! 714.22
*20.2* | AMENDMENT FORMS. IN RE-EXAMINATIONS.
*20.1* | AMENDMENT FORMS. IN RE-ISSUES Different rules for Re-issues. 1.121e,f
*20* | AMENDMENT FORMS. IN REISSUES AND REEXAMINATIONS. Different Rules.
*32.3* | AMENDMENT FORMS. IN SPEC -- adds between dashes -- "identify place of insertion or deletion between quoties"
*32* | AMENDMENT FORMS:
*32.6* | AMENDMENT OF THE DRAWINGS 608.02 entered. (10) (11)
*32.3* | AMENDMENT OF THE SPECIFICATION: -- adds between dashes -- "identify place of insertion or deletion between quoties"
*20* | AMENDMENTS, DIFFERENT RULES FOR REISSUES. 1.121e,f
*29* | ANTEDATING AFFIDAVITS U 102a, U102e, MPEP 715, CFR 1.131a, Pressman 3-4 (swearing behind)
*58* | APPEAL / PETITION / REQUEST, DISTINCTIONS BETWEEN
*32.9* | APPEAL BOARD DECISION, AMENDMENT AFTER 1214.01, 1214.06
*17* | APPEAL BRIEF, CONTENTS, SEQUENCE OF EVENTS 1206, 1.192
*17* | APPEALS CFR 1.191, CFR 1.192, CFR 1.193, mpep 1206, 2273 reX, USC 306
*12* | APPLICATION ORDER AND ELEMENTS CFR 1.77
* 9.2* | APPLICATION, PROVISIONAL U111
*10* | ARRANGEMENT AND CONTENTS OF SPECIFICATION. MPEP 601 pg 600-2
*49* | ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE CFR 3---
{ B
* 2* | blank
* 4* | blank
*16* | blank
*28* | blank
*59* | blank
*63* | blank
*14* | BOX # IDENTIFICATION, MAILING CFR 1.1
*17* | BRIEF, APPEAL, CONTENTS AND SEQUENCE 1206. 1.192
{ C
*65* | CERTIFICATES OF CORRECTION
*22* | CERTIFICATES OF MAILING.
*33.4* | CIP, RULE 62, NEW MATTER OK M201.08
* 3* | CLAIM COUNT FOR FEE PURPOSES. 608.01(n)
* 3* | CLAIM COUNT, MULTIPLE DEPENDENT CLAIMS.
* 1.5* | CLAIM, JEPSON FORM OF CLAIM. CFR 1.75e
* 1.3* | CLAIM, MULTIPLE DEPENDENT 608.01(n), No MD from MD. MD claims in "alternative only" (or) form. 608.01n for form. Multiples construed to incorporate by reference all limitations to claim to which it refers.
* 1.3* | CLAIMS per 112 MULTIPLE DEPENDENT RULES. alternative only no multiple from multiple multiples construed to incorporate by reference all limitations to claim to which it refers.
* 1* | CLAIMS -- Describe as a structure, not as a functionality!
*32.2* | CLAIMS, AMENDMENT TO THE CLAIMS: [brackets delete] underline adds. amended claims (not renumbered) must have the word "(amended)" inserted by number. () not to be used !! 714.22
* 1.9* | CLAIMS, OTHER LANGUAGE
*57.3* | COMBINED REFERENCES:
*11* | COMPLETE APPLICATION IS THE SPECIFICATION PLUS
*33.1* | CONTINUATIONS, RULE 60, NO NEW MATTER C1.16 M201.07
*24* | CORRECTION OF INVENTORSHIP. CFR 1.48, MPEP 201.03
* 7* | CORRESPONDENCE IDENTIFICATION CFR 1.5a 502 pg 500-3
*14* | CORRESPONDENCE, BOX # IDENT CFR 1.1 PTO BOX IDENT SEE *14*
*51* | CORRESPONDENCE. MPEP 403
{ D
* 8* | DECLARATIONS, SAME AS OATH
* 8* | DEFECTIVE OATH, FIXING OF
*99* | DEFINITIONS OF WORDS.
* 1.2* | DEPENDENT CLAIMS, FORM OF. MPEP pg 600-39 (608.01(n) DC must FOLLOW its parent claim.
* 1.2.1* | DEPENDENT CLAIMS, GROUPING OF DEPENDENT CLAIMS: c1.75(g)
* 1.2* | DEPENDENT CLAIMS. No dependent claim may specify a SUBSTITUTE part for the parent claim.
*44* | DEPOSIT ACCOUNTS. CFR 1.25 (for list), 1.51 mpep pg 600-2
*54* | DESIGN PATENTS. MPEP 1500
*40* | DIVISION RULES, REQUIREMENTS. 802, USC 121, CFR 1.141, 1.42
*40* | DIVISION, EXAMINER REQUIRES. 802, USC 121, CFR 1.141, 1.42
*33.2* | DIVISIONAL APPLICATIONS, RULE 60, NO NEW MATTER M201.06 a 1.60 USC 121
*32.6* | DRAWINGS, AMENDMENT OF DRAWINGS 608.02
{ E
*40* | ELECTION / RESTRICTION, EXAMINER REQUIRES. 802, USC 121, CFR 1.141, 1.42
*99* | ESSENTIAL MATERIAL == SEE ESSENTIAL MATTER IN DEFINITIONS BELOW.
*47* | ETHICS, PRACTICE CFR 10--
*64* | EX-PARTE QUAYLE, DEFINITION m714.14 only formal matters allowed. no more on merits
*15.1* | Extensions of time to respond, list of ok/not ok
{ F
*44.2* | FEES REQUIRED / NOT REQUIRED, PARTIAL LIST OF, c1.136
*44.2* | FEES, for petitions and things. fee/nofee list.
*33.3* | FILE WRAPPER CONTINUATION, RULE 62, NEW MATTER OK M201.06 b 1.62
* 9* | FILING DATE, MINIMUM INFO FOR OBTAINING A FILING DATE: M 506 PG 500-5 CFR 1.53b
* 9.1* | FILING DATE, TO OBTAIN AN EFFECTIVE [durable] FILING DATE:
*33* | FILING DATES, CONTINUITY, AFFORDING DATES OF EARLIER APPLICS cfr 1.53, mpep 506, 201.06
* 8* | FILING OF OATH, DEFECTIVE OATH. 601.01 pg 600-5
* 8* | FILING OF OATH. 601.01 pg 600-5
*18* | FINAL REJECTION 706.07 CFR 1.113, 1.116
*32.10* | FINAL REJECTION OR ACTION, AMENDMENT AFTER 714.12, 714.13 C1.116
*32.10* | FINAL REJECTION OR ACTION, RIGHT TO AMEND 714.12, 714.13 C1.116
*41* | FOREIGN PRIORITY, ESTABLISHING. USC 119 , MPEP 201.13,-14,-15, CFR 1.55
*33.3* | FWC CONTINUATION, RULE 62, NEW MATTER OK M201.06 b 1.62
{ G
*57.1* | GRAHAM VS JOHN DEERE CRITERIA: M 706,
* 1.2.1* | GROUPING OF DEPENDENT CLAIMS: c1.75(g)
*46* | GVT REGISTER OF INTEREST (MOSTLY FOR IMPOSING SECRECY ORDERS) CFR 7.XX
{ H
{ I
*40.1* | IMPROPER REQUIREMENT FOR RESTRICTION
* 9* | INCOMPLETE SPECIFICATION
*31* | INTERLINEATION, ALTERATION. 605.04 pg 600-21 CFR 1.52c Revision by interlineation must be made before oath is signed. Each change is initialed and dated BY APPLICANT (before date of oath). See Preliminary Amendment L 11 2 L 15 7
*61* | INTERNATIONAL PROCESSING. CFR 1.4XX US RECEIVING OFFICE US RESIDENTS ONLY. 1.412, 1.421
*56.1* | INVENTIONS MADE ABROAD / NAFTA/WTO USC 104 .
*26* | INVENTOR REFUSES TO SIGN. CFR 1.47 m409.03i
*25* | INVENTOR UNAVAILABLE. CFR 1.47 m409.03b
{ J
* 1.5* | JEPSON, definition and form C1.75(e)
*52* | JOINT INVENTORS USC 262
{ K
{ L
* 1.9* | LANGUAGE IN CLAIMS
*60* | LICENSE FOR FOREIGN FILING. USC 184 NOT NEEDED 6 months AFTER filing in U.S. EXCEPT when under secrecy orders.
{ M
*22* | MAILING CERTIFICATES
* 5* | MAINTENANCE FEES CFR 1.21
*13* | MAKE SPECIAL. 708.02, CFR 1.102
* 1.4* | MARKUSH GROUP AND FORMS 2173.05(h) 803.02
* 1.4.1* | MARKUSH PHRASING 2173.05(h) Use Consisting of, comprised of, NEVER comprising.
* 1.8* | MEANS PLUS FUNCTION
* 1.6* | METHOD CLAIMS
* 9* | MINIMUM FOR APPLICATION. 506 PG 500-5 CFR 1.53b
* 9* | MINIMUM INFO FOR OBTAINING A FILING DATE: M 506 PG 500-5 CFR 1.53b
* 1.3* | MULTIPLE DEPENDENT CLAIM 608.01(n), No MD from MD. MD claims in "alternative only" (or) form. 608.01n for form.
* 3* | MULTIPLE DEPENDENT CLAIM COUNTING FOR FEES.
{ N
*56.1* | NAFTA/WTO USC 104 INVENTIONS MADE ABROAD. minimum. m605.04b
*23* | NAMES. Two Full names required 605b first, int. last + inventors' address
*30* | NEW MATTER. CFR 1.118 MPEP 608.04, 608.04c, 608.01o, rule 60 201.06e, rule 62 201.06b 706.03o
*32.8* | NOTICE OF ALLOWANCE, AMENDMENT AFTER, 1.312 M714.14 M1303.01
*44.1* | NOTICE OF ALLOWANCE, ISSUE FEES. 3 Months to pay up. no extension cfr 1.87 Extensions allowed for submission of formal drawings, with ext fee.
*56* | NOVELTY AND BARS , USC 102
{ O
*14.1* | OATH 602.++ Cannot be amended. 602.01 Substitute for original 602.02
* 8* | OATH OR DECLARATION
* 8* | OATH, FILING or DEFECTIVE 602.++ Cannot be amended. 602.01 Substitute for original 602.02 pg 600-5
*58* | OBJECTIONS VS REJECTIONS m706.01
*57* | OBVIOUSNESS Functional equivalents not necessarily obvious in view of one-another. pg 700-9 USC 103
*57.2* | OBVIOUSNESS, SECONDARY CONSIDERATIONS TO REBUT: U103 mpep 716
*32.7* | OFFICE ACTION, RESPONSE BY APPLICANT TO, (REMARKS SECTION) CFR 1.111
{ P
*52* | PATENT AS PERSONAL PROPERTY
*62* | PCT stuff Section 18 Basic Principles 1801 Receiving Office CFR 1.4xx for US, 1815 (who) application, contents 1815, details, 1820 -- W 26 7,8
*58* | PETITION / APPEAL / REQUEST, DISTINCTIONS BETWEEN
*44.2* | PETITIONS, normal period to file, FEES REQUIRED / NOT REQUIRED
*7.1* | POSTCARD RECEIPT 503
*31* | PRELIMINARY AMENDMENT. 506, 714.10, 717.04, 608.04b New Matter. 608.04b must be made before oath signed. refer to pre amend in oath when it is finally signed.
* 1.7* | PRODUCT BY PROCESS 706.03(e) 805.05 e, f, & g
*52* | PROPERTY, A PATENT AS PERSONAL PROPERTY
* 9.2* | PROVISIONAL APPLICATION: U111
*57.4* | PROVISIONAL REJECTION: USC 102(e)/103 mpep 706.02. pg 700-8, 700-9
*53* | PUBLIC ACCESS TO RECORDS. OPEN/CLOSED LIST.
{ Q
*64* | QUAYLE DEFINITION m714.14 only formal matters left. no more on merits
{ R
*20.2* | RE-EXAMINATIONS 2265, 2209, [2215,2233(fees, list)] RE-EXAMINATION is not an "application" thus 1.136 does not apply (2265)
*20* | RE-ISSUE & RE-EXAMINATION. AMENDMENTS, DIFFERENT RULES FOR THEM. USC 251, 1401, 1416, 1.171-1.179
*7.1* | RECEIPT, RETURN POSTCARD 503
*20.2* | REEXAMINATIONS, AMENDMENT FORMS FOR.
*57.3* | REFERENCES, COMBINED, OBVIOUSNESS, 103:
*20* | REISSUES & REEXAMINATIONS, DIFFERENT RULES FOR AMENDMENT, 1.121e,f
*20.1* | REISSUES, AMENDMENT FORMS.
*57.4* | REJECTION, PROVISIONAL: USC 102(e)/103 mpep 706.02. pg 700-8, 700-9
*58* | REJECTIONS VS OBJECTIONS m706.01
*32.7* | REMARKS SECTION, RESPONSE BY APPLICANT TO OFFICE ACTION CFR 1.111
*50* | REPRESENTATION MPEP SECTION 4
*58* | REQUEST / PETITION / APPEAL, DISTINCTIONS BETWEEN
*40.1* | REQUIREMENT FOR RESTRICTION, IMPROPER
*40* | REQUIREMENT TO DIVIDE, BY EXAMINER. 802, USC 121, CFR 1.141, 1.42
*32.2* | RESPONSE BY APPLICANT TO OFFICE ACTION (REMARKS SECTION) CFR 1.111
*32.7* | RESPONSE BY APPLICANT TO OFFICE ACTION (REMARKS SECTION) CFR 1.111
*40* | RESTRICTION / ELECTION, EXAMINER REQUIRES. 802, USC 121, CFR 1.141, 1.42
*40.1* | RESTRICTION, IMPROPER REQUIREMENT FOR RESTRICTION
*19* | RESTRICTIONS. MPEP SECTION 8
*7.1* | RETURN POSTCARD RECEIPT 503
*32.10* | RIGHT TO AMEND AFTER FINAL REJECTION OR ACTION 714.12, 714.13 C1.116
*33.1* | RULE 60 CONTINUATIONS, NO NEW MATTER C1.16 M201.07
*33.2* | RULE 60 DIVISIONAL APPLICATIONS, NO NEW MATTER M201.06 a 1.60 USC 121
*33.4* | RULE 62 CIP, NEW MATTER OK M201.08
*33.3* | RULE 62 FWC CONTINUATION, NEW MATTER OK M201.06 b 1.62
{ S
*57.2* | SECONDARY CONSIDERATIONS TO REBUT 103 OBVIOUSNESS: mpep 716
*45* | SECRECY ORDERS CFR 5-- MPEP 120 u182
* 6* | SMALL ENTITY. 509.02 pg 500-10 CFR 1.9d
*13* | SPECIAL HANDLING 708.02, CFR 1.102
* 9.1.1* | SPECIFICATION USC 112
*32.3* | SPECIFICATION, AMENDMENT OF: -- adds between dashes -- "identify place of insertion or deletion between quoties"
* 9* | SPECIFICATION, INCOMPLETE
*32.4* | SPECIFICATION, SUBSTITUTE, 608.01q, c1.125 use
*55* | STATUTORY CLASSES USC 101
*32.4* | SUBSTITUTE SPECIFICATION 608.01q, c1.125
{ T
*27* | TERMINAL DISCLAIMERS mpep 1490 1.78d 1.321b
*15* | TIME TO RESPOND, EXTENSIONS OF TIME, list of reasons.
* 9.1* | TO OBTAIN AN EFFECTIVE [durable] FILING DATE:
*32.2* | TO THE CLAIMS:
*32.3* | TO THE SPECIFICATION: -- adds between dashes -- "identify place of insertion or deletion between quoties"
*48* | TRADEMARKS CFR 2-- Not for Agents to represent
*32.2* | TWICE AMENDED , FORMS 714.22, c1.121 bar to your application.
{ U
*56* | USC 102 STATUTE AND EFFECTS OF,
{ V
{ W
*56.1* | WTO/NAFTA USC 104 INVENTIONS MADE ABROAD.
{ X
{ Y
{ Z
*~* END | ~
----------------------------- end index of * # * notes ----------------
. :00 NOTES:
. :01 Sort this file in various ways to emphasize the
. :02 information in various ways.
. :03 Sort on left end for grouping by reference.
. :04 Sort on 13th character (:) to order by date.
. :05 sort on 25th character to order by summary.
. :06
. :07 A sort program for big files like this one is
. :08 available at http://www.seanet.com/~bross/sortbig.bas
. :080
. :081 Or write a program separating the file into two parts
. :082 then sort the parts with SORT.COM and rejoin the
. :083 sorted parts.
. :09
. :70 REFS: m= MPEP, c= 37CFR, u= 35USC,
. :71 pct= Patent Co-operation Treaty, pr= PCT rules.
. :72 --- = spacers and deleted questions
. :73
. :74 Entries without question date and numbers are either
. :75 cross indexed or entries considered so important
. :76 that their study is recommended, and the probability
. :77 of them appearing on a future test is quite high.
. :78
. :79 The numbers after the month are the numbers of the
. :790 Exam question. NOT a day date.!!
. :80
. :81 ------------------------------------------------
. :81 ---------------------------------------------------
. :88 TEST QUESTIONS, 1991 - 1995; MPEP 5TH EDITION
. :88 TEST QUESTIONS, 1996 ; MPEP 6TH EDITION, Rev 0 or Rev 1
. :880 TEST QUESTIONS, 1997 ; most likely Rev 0 and Rev 1,
. :881 ; possibly Rev 2 also.
:882
:891
=====================================================================
----------------------------- end index of * # * notes ----------------
.
NOTES ABOUT PATENT LAW:
* 1* CLAIMS -- Describe as a structure, not as a functionality!
ie. not as an advantage, function, or result.
Use word "means" often. 706.03(c)
Use "said" and "the" only when the element has been introduced by an "a"
Each claim has a unique number, sequential and in Arabic numerals.
c1.75(f)
Each claim starts with a Capital letter and ends with a period,
and there are no other capitals or periods. 608.01(m)
CLAIMS per 112
multiple dependent rules
alternative only
no multiple from multiple
multiples construed to incorporate by reference all limitations
to claim to which it refers.
combo claim
may be expressed as a means or step
for performing a specified function without
recital of structure, material, or acts in support thereof,
and such claim shall be construed to cover the corresponding
as described in specification and equivalents thereof.
* 1.1* INDEPENDENT. Do not forget the preamble. Use Comprising,
not comprised or comprised of.
* 1.2* DEPENDENT 608.01(n)
Depends from an independent or another dependent claim
Includes all previous claims in chain by reference
Must further limit previous claims in chain or add
another element.
Example:
The gadget of claim 1 further comprising ...
No dependent claim may specify a SUBSTITUTE part for the parent
claim. DC may only add a part or narrow the definition of a
part. 608.01n 1.75c requires that a dependent
claim further limit the parent claim. (Except in product by
process claims)
Examples:
OK -- Parent = A, B, and C. Dep = claim 1 and D.
OK -- " " " where C is xxxxxx
NOT Ok " " " C is replaced by D
* 1.2.1* Grouping of dependent claims: c1.75(g)
Dependent claim should be placed as closely as logically
possible to the claim from which it depends.
* 1.3* MULTIPLE DEPENDENT 608.01(n).
Must depend from two or more independent or dependent claims.
Must NOT depend from another MD claim.
Must be in the alternative ie, "or" NOT "and".
Example:
Claim 5. A gadget according to claims 3 or 4, further
comprising ...
See 608.01 n for more examples of acceptable and not acceptable
forms.
* 1.4* MARKUSH FORMS 2173.05(h) 803.02
A list (Markush group) of elements having a common characteristic,
from which one may be selected.
The materials set forth in a Markush group ordinarily must belong
to a recognized physical or chemical class or to an art-recognized
class. In reciting a process or a combination, it is sufficient
if the members of the group are disclosed in the specification to
possess at least one property in common which is mainly
responsible for their function in the claimed relationship, and
.... [quoted from 2173.05(h)] [Markush was originally applied to
chemical patents, but may be used in others as well]
It is improper to use the term "comprising" instead of "consisting
of" 2173.05(h)
* 1.4.1* MARKUSH PHRASING 2173.05(h)
Two styles of wording:
Example 1:
"wherein R is a material selected from the group consisting of
A, B, C, and D"
Example 2:
"wherein R is A, B, C, or D"
At least one old exams use "comprised of" for markush
heading. So "comprised of" equivalent to "consisting of".
* 1.5* JEPSON form C1.75(e) Pressman 9-4, 9-20 , m609.01(m), m2129
1.75 e is the JEPSON format for improvements known stuff.
Known stuff recited in the preamble.
For improvement type claims.
Independent (Jepson type) claim should contain in the following
order, (1) a preamble comprising a general description of
all the elements or steps of the claimed combination which
are conventional or known, (2) a phrase such as "wherein
the improvement comprises", and (3) those elements, steps
and/or relationships which constitute that portion of the
claimed combination which the applicant considers new or
improved portions.
* 1.6* METHOD CLAIMS
Format: I Claim: 1. A METHOD of preparing xxxxxx for yyyy,
using zzzz, comprising:
The claims may have the steps start with a particular step
that may need prior steps to get to the steps to be
claimed. What to do? Recite the setup or other
conditions in the Preamble. Be sure the word "method"
is included.
Note that " ... , WHICH COMPRISES THE FOLLOWING STEPS:"
has been acceptable to the PTO.
Method step wording = Use the gerund (ing) form not the
present, future, other conjugations, or infinitive forms.
ie turnING on switches a, b, and c ---
catchING the pescados -----
mpep2173.05(p) =
"A single claim which claims both an apparatus and the method
steps of using the apparatus is indefinite under u112."
"Also rejectable under 101 as directed to neither a process
or a machine." 101 does not allow both simultaneously.
* 1.7* PRODUCT BY PROCESS 706.03(e) 805.05 e, f, & g m2113, m2173.05(p)
No previous test ( afternoon sessions before 1997) have required product by
process claims. However, only the last two have required method
claims (in 3 of 6 options). There have been two morning
session questions on product by process.
Just in case, review Product by Process forms. Also MPEP 706.03 e
and 805.05 e, f, & g. Also in Patent Practice by Irving
Kayton, Chapter 10.
While an ordinary claim may contain a detail that is in fact a
product by process activity, it would be expected that a test
question would require a preamble distinctly identifying the
claim as a product by process type.
Example: An article of manufacture prepared by a process
comprising the steps of: (derived from Kayton, 5th edition,
10-44)
Note the similarity to Method Claims.
(MPEP 2113) = "Product by process claims are not limited to
the manipulations of the recited steps, only the structure
implied by the steps."
Old products produced by a new process are unpatentable.
The new process is.
(MPEP 2107.05(P)) = "Product by process claim, is a product
claim that the claimed product in terms of the process by
which it is made." ..." a claim may contain a reference
to the process which is intended to be used ... so long as
it is clear that the claim is directed to the product
and not the processes."
"A single claim which claims both an apparatus and the method
steps of using the apparatus is indefinite under u112."
"Also rejectable under 101 as directed to neither a process
or a machine." 101 does not allow both simultaneously.
* 1.8* MEANS PLUS FUNCTION form
"MEANS" requires two elements in an independent claim.
MPEP 706.03(c)(2), USC 112
A claim must be a structure, not a function. use MEANS format
for functions. 706.03(c) (1)
Recite an element as a "MEANS" plus function. ie "means for
conveying rotational energy" which describes a gear, belt,
shaft, etc.
"Amplifying means" is an amplifier of any design.
* 1.9* MISCELLANEOUS CLAIM LANGUAGE:
add "WHEREBY" phrases for descriptive usages. to describe usage
or function, etc. does not limit or distinguish.
706.03(c) (2)(2)
"SAID" is for reference using SAME WORDS to identify a
previously described element. SAID requires a proper
antecedent.
"A", "AN" is used to introduce each part.+
"THE", is for different or implicitly, but clearly equivalent,
descriptors of elements previously introduced (by "A").
Avoid negative limitations and alternatives. May be used if
meaning unambiguous. "a hole", "a channel", "a cavity", etc
is ok as they describe a "nothing" something.
No mistaking what is meant.
Preferred is "a plate having a hole"706.03(d)
Use "INCLUDE" or "COMPRISING" as these words are open ended
and imply that there may or can be more.
Do not use "CONSISTING OF", "CONSISTS", or "HAVING ONLY"
as these words define a closed set.
* 2* Reserved
* 3* CLAIM COUNT FOR FEE PURPOSES. 608.01(n)
ordinary claims -- simple count, one each.
Filing fee covers -- 3 independent, 20 total.
multiple dependent claims -- path count. 608.01n
For each path leading to it, each MD counts each claim back to the
independent claim as 1 count. ie an MD dependent on two other
dependent claims, counts 1 each for each dependent, and one each
for each claim upon which the dependent claim depends.
See examples in 608.01n
PLUS ----- there is an [outrageously large] extra fee [fine] for
submitting at least one MD claim.
[cynical note -- The PTO clearly discourages the use of MD
claims. They are rarely, if ever, used in practice.
Yet, the PTO likes to include them in the bar exam.]
* 4* reserved
* 5* MAINTENANCE FEES CFR 1.21 U41b
Application on or after Dec 12, 1980 for original or reissue
None for Design or Plant Patents
Computed from Issue Date. See "time for action" for schedule
Certificate of mailing works
Payment due 3 to 3 1/2, 7 to 7 1/2, 11 to 11 1/2 years from issue
date.
Payment accepted between 3 1/2 to 4, 7 1/2 to 8, 11 1/2 to 12
years after date with late fee. (Grace period) 1.362(e)
Supergrace, unavoidable, with BIG surcharge, fee, petition of
claiming unavoidable, 1.378(a)
Supergrace, unintentional, (24 mo) with BIG BIG surcharge,
fee, petition of claiming unintentional. 1.378(c)
Send fee with Patent Num, Applic Num.
* 6* SMALL ENTITY: 509.02 pg 500-10 CFR 1.9d
Annual average of all pay periods for:
full-time employees
part-time employees
temporary employees
500 max
includes affiliates which are associate companies
or companies held by a common entity.
* 7* CORRESPONDENCE IDENTIFICATION CFR 1.5a 502 pg 500-3
"No correspondence relating to an application should be filed
prior to when notification of the application number is
received from the Patent and Trademark Office."
Mandatory: c1.5(a)
" ... on the top page in a conspicuous location, the ..."
* Application Number
* Filing date
"or the ..."
* Serial Number
* Filing date
" assigned to that application by the PTO"
"or the ..."
* International Application Number of international applications.
Preferred:
"... should also state the": ref: near end of c1.5(a)
* Application #
* Name of applicant,
* Title of Invention,
* Filing Date,
and if known:
* Group Art # or other PTO unit,
* Examiner or person to which the communication has been assigned.
Prior to the rule changes of October 24, 1994,
(OG 1192, Nov. 26, 1996)
the words "PATENT APPLICATION" were also on the "should state"
list. The MPEP, as of Rev 2, has not been revised to include
this announcement.
About Patents:
except for maintenance fee "... should state the": c1.5(b)
* Patent #
* Date of issue
* Name of patentee
* Patent Title
Reexamination papers:
"... should identify it as such by": c1.5(d)
* Patent # of Patent undergoing reexamination
* Reexamination control number
and if known:
* Art group
* (re)Examiner
Interference papers:
"... it should state the": c1.5(e)
* Names of Parties
* Number of the interference
* Examiner - Chief assigned
* Name of party filing the paper should appear
conspicuously on the first page of the paper.
* 7.1* RETURN RECEIPT POSTCARD 503
A return receipt post card identifying the application and
the contents of the papers may be included.
It will be returned as a receipt from the examining clerk.
This is not the same as the Post Office Notice of delivery card
used in registered and express mailing. (which incidentally,
should also contain some ID (notes in the margin) to correlate
with the contents of the package. ).
[Cynical comment - The Post Office is pretty good at delivering
mail to the PTO and returning the green PO delivery receipt.
However, the PTO seems to lose stuff after collecting it from
Postman. The Postcard is filled out when the inside clerk
opens the envelope (maybe, It sometimes takes weeks to
re-appear in your office). Some Examiners will tell you,
"include the postcard with everything"]
* 8* FILING OF. INCOMPLETE FILING, ETC.
OATH 602.++
Cannot be amended. 602.01
Can Substitute for original 602.02
Completion of inadequate oath can be delayed until something
is allowable. 602.03 form 6.47
FILING OF OATH: 601.01 pg 600-5
name of inventor
serial #
or
name of inventor
atty docket #
filing date
or
name of inventor
title of invention
filing date
or
name of inventor (CONCURRENT FILING WITH APPLICATION)
title of invention
reference to specification which is attached and filed therewith
or
name of inventor (LATE FILING)
title of invention
statement from reg agent that the applic filed in the PTO is the
application which the inventor executed by signing the oath.
* 9* MINIMUM INFO FOR OBTAINING A FILING DATE: M 506 PG 500-5
CFR 1.53b
All applications get a serial number for identification.
To get a filing date:: (for an incomplete application) 1.53
Identity of all inventors
Specification USC 112
at least one Claim USC 112
Drawing if required USC 113
Filing date is when the last of the above is filed. c1.111
No new matter can be introduced after filing date whether
application is complete or not.
need continuation to add new matter and keep filing
date of the rest.
An incomplete app can be converted to a provisional app with
the original filing date.
Petition and fee.
Oath and fee can be submitted later to complete the application.
[not advised]
Note - if a drawing is required, but missing, (1.53) NO filing date.
Not required to get a filing date:
oath
fee
English
address
appointment of agent or lawyer
patentable invention
* 9.1* TO OBTAIN AN EFFECTIVE [durable] FILING DATE:
Identity of all inventors
Specification USC 112
Written description
Best mode
Enabling description, make, use
Utility (?)
At least one Claim USC 112
Drawing if required USC 113
[this was written prior to the advent
of provisional applications, but is
still applicable]
* 9.1.1* USC 112 SPECIFICATION
Description of invention
manner and process of making and using it
for person skilled in art to make & use same.
Utility
Best mode
One or more claims
USC 112 is often refered to by paragraph
here they are:
* first paragraph:
* written description
* manner and process of making and using in clear, concise, exact
terms
* enable any one skilled in art to make and use
* best mode
* second paragraph:
* One or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as
his invention.
* Last (7th) paragraph:
* An element in a claim for a combination mah be expressed as a means
or step for performing a specified function without the recital
of structure, material, or acts in support thereof, ... construed
to cover corresponding ... as ... as described in the
specification and equivalents thereof.
Utility is a requirement of USC101, and is part of the specification.
* 9.2* PROVISIONAL APPLICATION (PPA): U111,
m601, pg 600-4, m601.01b
General: Provisional Applications are treated as "incomplete
filings"
An incomplete regular filing may be made a Provisional.
Provisional app has NO priority from 119, 120, 121, 365(a), 365(c)
Not for design patents.
u115, oath not rqd;
131, not examined;
135, not for interference;
157, not for SIR applications;
These are not applicable to provisionals.
Required:
* Cover sheet identifying it as a PPA
* Identity of inventor
* Specification USC 112 (fully disclosed, best mode,
enabling, make, use, utility)
* Drawing if required USC 113 in Permanent INK, (Xerox
of pencil ok)
* Fee
* Small entity affidavit, if applicable Fee (or later
with surcharge)
Not required:
claim m201.04b
background
summary of invention
oath m201.04b
abstract
Not subject to U115 (oath), 131(examination), 135(interference),
157(SIR).
IDS prohibited. m601
May be informally drafted as long as disclosure is adequate.
U112 first paragraph, U113 drawing content.
Pendancy: U111(b)
12 months from filing (sat sun hol rule does not apply to
expiration date. m505
No revival
No right of priority to previous apps/patents.
Provisional app has NO priority from 119, 120, 121, 365(a), 365(c)
Not subject to U115, 131, 135, 157
To use: U119(e)
Not later than 12 months after date on which the PPA was filed.
Make reference to ppa in subsequent regular filing.
PPA must be pending (less than 12 mo old) to be used as ref
in the subsequent regular application. U112(e)(2)
What a PPA is, does, does not:
DOES:
Obtains a filing date which can be utilized in subsequent
regular filing and continuations. [The subsequent
regular filing is quite similar to a "CIP" of the PPA.
Only similar, it is NOT a CIP]
Can use "Patent Pending"
Reviewed for "secrecy order" purposes. (Invokes secrecy
order evaluation)
Gets Foreign Filing license. (If no secrecy order issued)
Stops "on-sale, publication" clock
DOES NOT:
No right of priority to previous apps/patents.
Not subject to U115, 131, 135, 157
No rights attach except priority because of date.
Like any disclosure or application, if it is not adequately
disclosed (U112), it is not covered, and no date for the
not-disclosed features.
What happens when a PPA expires:
PPA filing date cannot be used in subsequent application.
"Patent Pending" status expires
[ Disclosed information probably remains taking on a status similar
to a disclosure document (DDP). ]
[ The mpep is silent on the disposal/retention of expired ppa's]
*10* ARRANGEMENT AND CONTENTS OF SPECIFICATION: MPEP 601 pg 600-2
Title
Cross Reference to other related applications or patents
Statement of Federal rights if Federally sponsored u202(c)(6)
Background of invention 601.01(a)
1. Field of invention
2. Description of related art c1.97, 1.98
Summary of invention
Brief Description of the Drawings
Description of preferred embodiment(s) best mode; make, use
Claim(s) *
Abstract *
* start on new page
Grammar note: Describe working models and examples in past tense.
Describe "paper inventions" and projections in
present or imperative tense.
*11* COMPLETE APPLICATION IS THE *10* SPECIFICATION PLUS
plus mpep 601, cfr 1.51
Drawings,
Fee
oath and application form,
Small inventor declaration.
IDD Information Disclosure Document MPEP 609
Assignment
*12* APPLICATION ORDER AND ELEMENTS CFR 1.77
Title of invention,
or
applicants name, citizenship, residence, and title of invention
Title of invention
1. Cross Reference
2. Ref to microfiche appendix 1.96b
Statement of Federal rights if Federally sponsored
Background of invention
1. Field of invention
2. Description of related art 1.97, 1.98
Summary of invention
Descript of drawings
Descript of preferred embodiment(s) best mode; make and use
Claim(s)
Abstract
Oath
Drawings
Fee NOTE the above list is not exactly as listed in 1.77, but is a
composite. 1.77 is not totally consistent with other contents
lists reproduced here.
*12.1* INCORPORATION BY REFERENCE: M608.01(p)(B)
May incorporate essential material by reference to an issued
US patent or application upon which issue fee has been paid
if:
US Patent,
an allowed US application IF necessary to:
support claims
adequate disclosure of invention
but not;
Patents or applications published by foreign or
regional patent offices
Non-patent publications
US application which itself incorporates
essential material by reference.
Foreign application
Not allowed: Foreign patents or applications
non-patent publications
Non Essential Material:
Non-essential subject matter is matter referred to for purpose
of indicating the background of the invention or illustrating
the state of the art.
As above
Non-patent publications.
*13* MAKE SPECIAL: 708.02, CFR 1.102
by examiner or dept head of branch of gvt:
importance to some branch of gvt.
Petitions requirements are found within each category
in 708.02
with fee (no small entity discount)
manufacturing reasons
imminent manufacture see list pg 700-39
manufacture held up
will mfg in US in quantity
plus
search was made
believe all claims allowable
infringing device on market see list pg 700-39
recombinant DNA applications
certain new applications (unclear as what is allowed) see list
without fee
Applicant's age, (65 or older)
Applicant's health, (med cert rqd)
enhance environment
energy resource conservation
Superconductivity technology (SEE 708.02 VII for details)
*14* BOX # IDENT CFR 1.1
See 37cfr 1.1 for partial list.
*14.1* OATHS SEE * 8*
*15* TIME TO RESPOND, EXTENSIONS OF TIME:
*15.1* EXTENSIONS PURCHASABLE FOR: 1.136, L 15 16 S 21 8,9
FOR ---
QUAYLE ACTIONS
OFFICE ACTION ON MERITS
NOTICES OF APPEAL
DECISIONS OF APPEAL BOARD 1.196, 1.197, 1.304
REPLY BRIEF 1.193b
REQUEST FOR ORAL HEARING 1.194b
IN INTERFERENCE 1.611
NOT FOR ---
RESPONSE TO FINAL ACTION
NO EXTENSION NOTICE IN OA. 1.136 a1i
*17* APPEAL BRIEF, CONTENTS, SEQUENCE 1206
*17* APPEALS CFR 1.191, CFR 1.192, CFR 1.193, mpep 1206, 2273 reX,
USC 306
Filing form for notice mpep pg 1200-3
fee rqd , brief in triplicate sometimes (1.192)
must be twice rejected to be appealable USC 134, 1205,.
time, CFR 1.192, 1204 see "TIME TO RESPOND" in these notes.
Contents 1.191, 1.192, 1206
status of claims
status of amendments
summary of invention
issues
grouping of claims
argument
1) form
A) discussion of subject matter of rejected claims
B) make and use invention
C) Best mode
appendix, incl copy of claims involved
amendment to spec may be filed with or after appeal, but before appeal
brief is filed, provided total effect of amendments is to : 1207
1. remove issues from appeal ie withdraw or amend offending
stuff.
2. and/or adopt examiner's suggestions no new matter, etc.
Remedies after board rules on the appeal. 1214, CFR 1.196, 1.197
1. amend claims and/or showing of facts
2. have case re-considered under 1.197
see also *18*
Examiner's answer to : cfr 1.193 1208
If appeal is not regular in form or does not relate to appealable
action applicant may take to commissioner as provided in 1.181.
Applicant may file a reply brief directed only to such new points
of argument as may be raised in the examiner's answer within one
month. see 1208,
Board of appeals normally operates on rejected claims. not on allowed
or pending claims, but can do just about anything including
rejecting allowed claims. 1.196d
Oral hearing not rqd but permitted by request and fee, [1. xxxxx......] whole claim.
add --> ul 2.__________ whole claim
including number.
* Claims should not be renumbered. New claims follow original last
number. c1.173
* Change to only part of a word or formula is not permitted. M1411
See Example at M1453
*20.2* RE-EXAMINATIONS
REEXAMINATION is not an "application" thus 1.136 does not apply
(M265)
Also because no application, there is no "applicant".
Extension requests only after decision to grant reX is mailed.
One month automatic extension (confused instruction)
All other requests under 1.550
Req for extension before expiration of date for owner to respond
(1 mo?) need reason with sufficient cause for extension.
No new matter
Mail Cert OK
Express Mail cert OK
Base request on printed publications and patents only.
see 2209 for list of characteristics.
FILING, WHO, WHEN. 2209, 2210, 2212, USC 302, USC 303,
CFR 1.510A, 2216, 17, 42
* Against any claim.
* Not for expired patents
* Any person any time during enforceability of patent + the 6 years
in which infringement may be filed (6 yr statute of limitations
to sue for infringement) based on prior patents or printed pubs.
2211, U302, 1.510,.
* 2216,42 Substantial new questions of patentability:
Statement of such rqd.
At least one claim must be in question based on prior patents or
printed publications ONLY. 2247
If one claim found reXable, all will be reXed. (?)
* 2217 Statement applying prior art:
prior art must be a patent or PRINTED PUBLICATION and admitted
via USC 102 criteria. Also USC 103.
Double Patenting is proper for consideration.
* Proceeding is ex-parte in nature.
* Proceeding must start within 3 mo of request. Proceed with "special
dispatch".
* Proceeding normally carried to a conclusion and certificate of
reexamination issued.
* Scope of claim cannot be enlarged by reexamination.
* All Reexamination files are open to the public.
REQUEST FOR REEXAMINATION:
M2214 =
* Any person
* During enforceability period.
* Request for Reexamination
* Fee
The Petition:
* Point out substantial new question of patentability based on
prior printed publications and patents. Use form 1449
* Identification of each claim for which reexamination is requested
* "Detailed explanation of the pertinency and manner of applying
the prior art to every claim for which reexamination is requested."
* A copy of the prior art in English.
* A copy of the patent to be reexamined in the form of the cut up
patent and mounted as single columns on sheets.
* Copy of disclaimer, certificates of correction, reexamination
certificates to be included.
* A certification that the patent owner has been served with a
copy of the request for reexamination.
Public use, sale, or fraud should not be included in the request
for ReX and will not be considered by examiner if included.
(MPEP 2200-15)
If patent owner wants to have a wider consideration of issues incl
matters such as prior pub use or sale, patent owner may file for
reX.
2212, 1.501, 1.510,.
SCOPE: 1.530, 1.552,.
period for owner to file statement of rebuttal or amend. is 2 mo
min. 1.530b
Argument OK 1.530c for form
Amendment OK 1.530b,d to description and/or claims
NO FEE FOR ADDITIONAL CLAIMS. 2233
No new matter 1.530 d or enlarged scope of claims
Only owner can comment before determination of reX ability. 1.530a
AMENDMENT FORM FOR REEXAMINATIONS:
CFR 1.121(f) =
".. amendments ... presented in the form of full copy of the text of:
each claim which is amended or each paragraph which is amended ...
Deletes [deleted], additions underlined."
" Copies of the printed claims from the patent may be used, with deletes
[bracketed] and ADDS in "
" Claims not to be renumbered, new claims follow the highest claim
number in patent."
" No new Matter may be introduced into the patent."
MPEP 2234 =
" If a portion of the text is amended more than once, each amendment
should indicate ALL of the changes (insertions and deletions) in relation
to the current text of the patent under reexamination."
Question?? is this the issued patent, or the modified "current" text??
I vote for the issued patent as that would be without confusion
and obfuscation from prior modifications.
* Scope of claim cannot be enlarged by reexamination.
*21* ABANDONMENT: 711.04a, 1.135
3 mo OA JAN 12 feb. march. APRIL 12, midnight
6 mo OA JAN 12 feb. march. april. may. JUNE 12, midnight
Date of abandonment is end of stat or short stat period if no
extensions. With extensions, end of purchased extension. 711.04
ABANDONED BY DEF AFTER STATUTORY PERIOD or insufficiency of response.
If shortened stat period set at 3mo and no extensions bought.
abandonment date set at 3 months (holding of abandonment at 6 mo
retroactive to midnight, April 12 in above example. GONE ON A13,
WHICH MAY BE A SATURDAY) !!! IF A12 LAST DAY TO RESPOND IS A FRIDAY.--
DATE OF ABANDONMENT IS CONSIDERED NEXT DAY IE. A13.
Purchased extensions put date of abandonment at end of purchased
period. 711.04 Interference and Board proceeding modify limits
shown above.
After final rejection, time starts with rejection UNLESS a response,
even a notice of no-entry, is mailed in response to amendment filed in
response to final rejection. A response to mailing restarts the
extensions-purchased clock but the clock STOPS at 6 months from the
final rejection. This is illogical but see 710.02e pg 700-47 for
authority.
There is some advantage granted when first response is filed within 2
months of final rejection. Evaluate this if the Q mentions 2 months
in any way.
Time to file notice of appeal is shortened stat + ext to 6 mo unless
specified by examiner. (1205 seems to instruct the examiner to limit
the time to 3 mo.)
Appeal brief is due 2 mo from notice or remainder of time originally
allowed to act on the OA which provoked the appeal, ie an OA
containing the second rejection of a claim, whichever is latest.
NOTE time of action is the OA response term including CFR
1.136 extensions.!!! which may be up to 4 months. 1206 page
1200-4 Extensions beyond this generous time can be bought for 4
more mo... This could be as much as 6 + 2 + 4 months maxxx.
Apparently, the extended time from OA does not have to be
petitioned and fee paid.
???
filing form mpep pg 1200-3
WEEKEND RULE - 710.05, 710.01A, 505, 502. page 700-48
If period to act ends on a
Sat, Sun, Hol. then actual ending date is next business day.
Extensions from actual date, not Week-end rule date. Not so for
date of abandonment and a few other conditions.
Period spans Feb 28,29 rule.
*22* MAILING CERTIFICATES:
*22.1* US Mail, regular mail c1.8 mpep 512
Deposited when certificate claims the communications was
mailed.
Use - don't use list c1.8
c1.8(1) (reprinted) Correspondence will be considered as
being timely filed if:
(i) The correspondence is mailed or transmitted prior to
expiration of the set period of time by being:
(A) Deposited with the U.S. Postal Service with sufficient
postage as first class mail addressed to the Commissioner
of Patents and Trademarks, Washington, DC 20231; or
(B) Transmitted by facsimile to the Patent and Trademark
Office in accordance with # 1.6(d); and
(ii) The correspondence includes a certificate for each piece
of correspondence stating the date of deposit or
transmission. The person signing the certificate should
have reasonable basis to expect that the correspondence
would be mailed or transmitted on or before the date
indicated.
Example Certificate of mailing from mpep 512
A suggested format for a Certificate of Mailing and a Certificate
of Transmission under 37 CFR 1.8 to be included with the
correspondence is reproduced below.
Example:
Certificate of Mailing.
I hereby certify that this correspondence is being deposited
with the United States Postal Service with sufficient postage
as first class mail in an envelope addressed to:
Assistant Commissioner for Patents
Washington, D.C. 20231
on ___________. (Date)
*22.2* US Express Mail mpep 513 CFR 1.10
Primarily used for Applications. Ok for filing Any Paper.
Provides good receipts.
Post Office to Addressee service is recommended because
Post Office hands a receipt over the counter.
Express mail drop boxes are now acceptable for posting, but
PTO does not recommended their use for logistical reason.
Filed when mailed. even Sat, Sun, Holidays
Express mail # is no longer required inside the envelope,
but its inclusion is recommended.
Fed X etc us NOT "express mail" and the filing date will be
when received at the PTO.!!
Example Express Mailing certificate:
No model given in MPEP. Use regular mailing form, substituting
"express mail" for "first class". When possible include
express mail # .
*22.3* FAX TRANSMISSIONS Use For --
Terminal disclaimer ok;
Telephone interview report
Whatever not listed below
Do not use for -- mpep 605.04
Oath
Amendments
Applications (except as incomplete to obtain a filing date)
Classified stuff (security reasons)
PCT papers
If the paper needs an original signature.
Applications and amendments are considered incomplete
(no original signature) for obtaining a filing date.
Include ---
___________________________________________
Typed or printed name of person signing this certificate
Signature________________________________________
[Ref: from MPEP 6th edition, Rev 2]
Certificate of Transmission (fax).
I hereby certify that this correspondence is being facsimile
transmitted to the Patent and Trademark Office (Fax No.
(703)___-____) on____________. (Date)
___________________________________________
Typed or printed name of person signing this certificate
Signature________________________________________
[Ref: from mpep 6th Ed, Rev 2]
*23* NAMES:
Full name required 605.04b
first, initial, last on application document?, oath?, both?
(see GICP)
Inventor's address also required (GICP)
*24* CORRECTION OF INVENTORSHIP: CFR 1.48, MPEP 201.03
old inventors agree
no deception and when error discovered, and how error occurred
statement by inventors
oaths by inventors 1.63
fee
consent of assignee
see pg 200-2 for deletion because of changed claims.
*25* INVENTOR UNAVAILABLE: 409.03 CFR 1.47
need:
last known address
assignment, or proof of ownership (to de-facto applicant)
fee
diligent effort to find
irreparable damage or harm if not filed without inventor
*26* INVENTOR REFUSES TO SIGN: CFR 1.47 CFR 409.03i
may protest naming as inventor
entitled to inspect any paper in application
order copies
make position a matter of record
plus list, good stuff
patent is still issued to inventor signed or not.!!!! rights not
lost!!!
*27* TERMINAL & STATUTORY DISCLAIMERS mpep 1490 1.78d 1.321b U253
TD's in parent applic do not apply to continuations.
Need new TD's Fee
* By patentee. State interest therein
* By Applicant,
* By Agent or Atty.
* By Owner, Part or all.
the phrase "double patenting" expects terminal disclaimer or combine
apps into one patent app to eliminate.
*29* ANTEDATING AFFIDAVITS U 102a, U102e, MPEP 715, CFR 1.131a,
Pressman 3-4 (swearing behind)
invention application within year after publication, and invention
built and tested prior to publication is a keeper. 1.131a
Objecting US patent issued within 1 year of US applic shows, but does
not claim the invention is not a bar. invention is a keeper.
Less than 12 mo and;
Reduction to practice in US (filing is minimum reduction and is of no
effect in this case, but R&D is) and;
Domestic patent that shows but not claim or;
Foreign Patent (issued), or;
Printed publication then;
make oath or declaration as to facts showing completion of invention
in this country before filing date of domestic patent or;
before issue date of foreign patent or;
publication date.
by inventor, owner, 1.41,43,47 person. for Joint Inventors it is per
claim. pg 700-79 (5) 715.04
*30* NEW MATTER: CFR 1.118 MPEP 608.04, 608.04c, 608.01o,
rule 60 201.06e, rule 62 201.06b 706.03o
CFR 1.118
is somewhat vague about defining "new matter". Reading around
the words "adding departure from or addition to the original
disclosure", other paragraphs make reference to "claims
containing new matter will be rejected" and the matter will be
rejected from the specification.
NEW MATTER is material that may affect:
BEST MODE
WRITTEN DESCRIPTION
ENABLEMENT
ie, is essential matter
USC 112. ie support claims or for adequate disclosure of
invention. 608.01p-B pg 600-42.
By Reference:
US Patent or an allowed US application IF necessary
to support claims adequate disclosure of invention
but not;
patents or applications published by foreign or
regional patent offices
non-patent publications
US application which itself incorporates essential
material by reference.
Foreign application
Not allowed: Foreign patents or applications
non-patent publications
US patents also incorporating material by reference.
See 600-2 for non essential material and format of referenced
material.
CIP may introduce new matter, but then requires new oath and gets new
filing date. Rule 62
1. later amendment containing new matter
2 obvious, but not explicit, implicit, inherent, or intrinsic.
3. new incorporation by reference
4. adding best mode
5. new utility
6. preliminary amendment not in oath.
7. deposit of biological material not specifically identified in
specification as filed.
8. adding specific percentages or compounds after a broader original
disclosure 706.03q
9. omission of a step from a method. 706.03q
10. addition of inherent characteristics: 608.04a
chemical or physical properties
new structural formula
1. amendment filed with application and in oath.
2. amendment conforming one part to another ie, dwgs to spec to
claims.
3. original claims 4. previously canceled, but copendency
probably required.
5. request earlier filing date under 119 or 120
6. already incorporated by reference
7. amendment filed with CIP under 1.62 and referred to in oath, but
is new matter to parent application.
8. inherent advantage not amounting to a new utility
9. deposit of biological material specifically identified in specification
as filed.
Not clear whether adding new "prior art" is adding "new matter"
See 608.04b for preliminary amendment special rule. *32*
"Old matter" must be in either claims, drawings, or specification.
Fix new matter objection/rejection 608.04c
a. if spec only, by petition.
b. if affects a claim, by appeal.
*30.1* ESSENTIAL MATERIAL == SEE ESSENTIAL MATTER IN DEFINITIONS BELOW.
*31* PRELIMINARY AMENDMENT: 506, 714.10, 717.04, 608.04b, 702.01
New Matter. 608.04b must be made before oath signed.
refer to preliminary amend in oath when it is finally signed.
"Preliminary Amendments (claims) do not enjoy original
disclosure status." m702.01(4) M608.04(b)
Preliminary amendments: c1.115
* Any time before first office action is a right.
* No new matter, except before oath is signed.
* Can cancel claims in rule 60 or 62 cases before counting
claims for calculating fee.
* Constructive Election
INTERLINEATION, ALTERATION: 605.04 pg 600-21 CFR 1.52c
(treated as a preliminary amendment)
Revision by interlineation must be made before oath is signed.
Each change is initialed and dated BY APPLICANT.
(before date of oath).
*32* AMENDMENT FORMS:
*32.2* TO THE CLAIMS: 714.22 c1.121.
* underline/bracket method for Small changes
[] brackets = delete, underline = inserts
Example:
2. (amended) A gadget for [becoming airborne]
flying(underlined) without wings comprising:
which becomes --> 2. A gadget for flying without wings
comprising:
Do not forget (amended)
* Second or later amendment to same claim : C 1.121
Twice or thrice amended
" ..... if a previously rewritten claim is rewritten,
underlining and bracketing will be applied in reference
to the previously rewritten claim ...." c1.121(b)
It is not clear whether the second amendment should be
presented with the prior amendment incorporated or
merely copied, including the first change notations.
For authority, at least one old exam shows that
the second amendment is written incorporating the
first [], and the new changes are underlined.
Thus:
( __signifies underlining of all between__ )
Claim 1 (amended) A shelter of [canvas] __water
resistant fabric__ adapted to prevent
precipitation reaching articles thereunder ...
Claim 1 (twice amended) .... A shelter of water
resistant fabric adapted to prevent [precipitation]
__rain__ reaching articles thereunder ...
Make sure that the intent is clear. Otherwise, use
cancel-and-submit-new-claim method.
* cancel and submit new method
Use in any circumstances, especially major revision.
Cancel claim 1 and add ( or substitute) claim xx as follows:
Claim xx ..... where xx is the next unused claim number
available.
Do not use ( ) for changes !! 714.22
* Cancellation of claim is by specific directive. 714.22, c1.121
* SMALL CHANGES in claims may be changed by the in-spec format.
Limited to spelling, punctuation, typographical errors,
deletions, and additions of 5 or fewer words. 1.121c, 714.22
Example: Please rewrite claim 1 by deleting "becoming airborne"
and inserting -- flying -- at the same place.
-----> All claims, new or amended, must be supported by specification
and/or drawings or by previously submitted claims.
Dependent claims must have proper antecedents.
-----> No new matter !!!
* REISSUES ARE AMENDED UNDER DIFFERENT RULES. SEE *20*
[] AND UL ARE FOR ALL CHANGES. NO SPECIFIC DIRECTIVE TO ADD
OR DELETE WHOLE CLAIM OR SENTENCE.
*32.3* AMENDMENTS TO THE SPECIFICATION:
-- new or changed words between dashes --
"identify place between quoties" where insertion, deletion,
or action is to occur.
NO NEW MATTER ALLOWED. !!! <--------<<
Form:
Similar to claims, but less formal. Must be clear as to
what is to be changed, where the changes occur, and the
new wording.
Page 1, line 5; change " current wording " to "-- new
wording -- "
Page 1, at line 12; delete first occurrence of "erase it".
Longer than 5 words may be used in this form.
*32.4* SUBSTITUTE SPECIFICATION:
use with major changes. See MPEP 608.01q c1.125
Must be accompanied by a statement that it contains no
new matter. [and it had better not!!]
*32.5* Different rules for reissues. See *20*
Reissues 1.121(e)
Reexaminations 1.121(f)
*32.6* AMENDMENT OF DRAWINGS 608.02
Draftsman's report says drawing quality is inadequate
reply:" Draftsman's report is noted. Please examine
considering the presented drawings as "informal" New drawings
will be supplied timely before issue"
Obviously, major faults involving clarity or content must be
corrected immediately.
Amendment to drawings, procedure 608.02
1. Submit a copy of the drawings with the changes shown in red
ink to the examiner for approval.
2. Submit new original drawings with approved changes to
draftsman.
[NO NEW MATTER!!! ALL CHANGES MUST HAVE BEEN PREVIOUSLY ENTERED
AND SUPPORTED BY PREVIOUS DRAWINGS, SPECIFICATION, OR CLAIMS.]
[new originals may be provisionally submitted at the same
time as the red-marked copy. Seems to work when changes are
merely corrections of obvious error.]
*32.7* RESPONSE BY APPLICANT TO OFFICE ACTION (REMARKS SECTION) CFR 1.111
Reply must respond to every ground an objection
Reply must distinctly and specifically point out the supposed
errors in examiner's action
Request to hold in abeyance matters of form not necessary to
further consideration of claims until allowance is in order.
Reply must appear throughout to be a bonafide attempt to advance
the case to final action.
NOT PROPER - a general allegation that claims define a patentable
invention without specifically pointing out how the language of
the claims patentably distinguishes them from the references .
1.111b
1.111c for re-examinations
EXAMPLE redacted from PTO published documents:
Serial # ______
Applicant(s) _______
Filing Date _______
Title _____________________
Examiner: ___________________
Group Art Unit: ____________
Date __________
Honorable Assistant Commissioner of Patents and Trademarks
Washington DC, 20231
RESPONSE TO RESTRICTION REQUIREMENT
Sir:
AMENDMENT
To the Specification:
-- insertions between dashes --
" deletes between quotes "
To the Claims:
within claims.
[ Brackets insert ]
underlined deletes
Please delete claims ....
Please add new claims .... new numbers in sequence.
do not re-use claim numbers.
REMARKS
This is a response to the objections set forth in the Office Action
dated ________.
Claim _____ is revised to remove lack of antecedent (or whatever)
for xxx in claim ____.
Claims _____ are canceled to remove the objectionable issues.
New Claims ______ are presented to remove objectionable issues
and retain non-objected issues.
The rejection over Goofus' patent is now believed to be overcome
by the cancellation of claims 1 and 3 and presentation of new
claim 12. The amended claims define a patentable invention
invention which is not anticipated by Goofus.
Reconsideration of the application (or rejection) is requested.
Respectfully submitted,
__________________ sig
Agent for the applicants, Reg #___________
Mailing Certificate ------- US Mail, regular mail
c1.8 mpep 512 *22.1*
US Express Mail
c1,10 mpep 513 *22.2*
NOTE: Although examination of old bar exams does not suggest it,
one might expect that the mailing certificate could, for
test purposes, be inserted by merely citing "the form
suggested in MPEP 512." This might be an emergency
response to "out of time" answer the test.
Obviously, the testee (you) shows that he knows about
how to formulate a mailing certificate.
*32.8* AMENDMENT AFTER NOTICE OF ALLOWANCE 1.312 M714.14 M1303.01
* No amendment as a matter of right.
* May submit rule 312 (c1.312) amendments to
put application into better shape for issue.
[spelling, grammar, errors]
* Submit formal drawings
*32.9* AMENDMENT AFTER APPEAL BOARD DECISION 1214.01, 1214.06
c1.196, 1214.07
* Not a matter of right
* All claims or some claims may be reviewed by board
1213.01, 1.196(a)
* Entry of Amendments must be approved by Primary
Examiner and Supervisory Examiner if not
a board recommendation. 214.03
OK if:
* amendment removes issues or adopts examiner's
suggestion.
* amendment places application in condition for
allowance.
NOT OK:
* if amendment requires new search,
* new matter,
* Increases number of claims,
* raises new issues.
*32.10* AMENDMENT AFTER FINAL REJECTION OR ACTION 714.12, 714.13
C1.116
* No amendment as a matter of right.
OK FOR:
* Presenting rejected claims in better form for
consideration on appeal. c1.116
* Presenting claim in better condition for allowance. 1.16
* Complying with requirements or objections as to form.
* Canceling a claim c1.116
* On merits in reexamination if good & sufficient reasons
given. 1.116
* Extension of time per Rule 1.136,
* Petition non-entry to Commissioner
*33* FILING DATES, CONTINUITY, AFFORDING DATES OF EARLIER APPLICATIONS
cfr 1.53, mpep 506, 201.06
WHEN common inventor see 201.11
New application must be co-pending with old when filed. Only matter
carried forward can claim earlier Filing Date. New matter has a FD
when filed.
Provisional Apps must be co-pending, same inventor. U119 * 9.2*
CERTIFICATES OF MAILING of no effect. not applicable for
applications. including continuations.
*33.1* RULE 60, CONTINUATIONS 201.07
* file under 1.53, 1.60, 1.62
* file before abandonment, patented, or termination of proceedings
* at least one common inventor
* same disclosure
for new claims and/or establish right to further
examination by examiner.
* Must be before payment of issue fees for cfr 1.62 continuations.
* NO NEW MATTER
* See USC 120, CFR 1.78 for keeping prior applic date.
*33.2* RULE 60 DIVISIONAL application 201.06 a 1.60 USC 121
* Divided patents not to be used against on-another. 121
* Examiner's failure to divide does not invalidate patent. 121
* NO NEW MATTER
All continuing apps must refer to FIRST appl if rights and
date to be carried forward.
*33.3* RULE 62 FILE-WRAPPER ( FWC ) CONTINUATION 201.06 b 1.62
FOR ADDING NEW MATTER
New date of filing, but may have benefit of previous.
New matter has the filing date when new matter is entered.
All continuing apps must refer to FIRST appl if rights and
date to be carried forward.
*33.4* RULE 62 CIP 201.08
FOR ADDING NEW MATTER
Filed during the lifetime of an earlier application by same
applicant repeating some or all of earlier applic and adding new
matter.
New matter has the filing date when new matter is entered.
File under 1.53 or 1.62. 1.62 must be before payment of issue
fee. At least one common applicant.
See 201.08 and 201.11 for list of rqmts for prior appl date. USC
120
201.08 uses word "APPLICANT" 201.11 seems to supersede using word
"INVENTOR" TWICE. USC 120 ALSO USES "INVENTOR". [ An application
can be filed by certain others than the inventors, but the
"inventors" of 208.11(4) means "inventors" as the inventors, not
necessarily the filers. Read "by" as "for".]
see USC 120, CFR 1.78 for keeping prior applic date.
201.08 and 201.11 are inconsistent. 201.11 lists 4 conditions
for availability of benefit of prior filing date. 201.08 lists
only 3 of these 4. The 4th is a reference requiring the two
patents combined comply with USC 112 first paragraph.
ie. description, how to make, how to use, by skilled in art,
and best mode.
201.11 on pg 200-17 there is another inconsistent or
unconnected specification relating to CIP as to why a prior
date is NOT ALLOWED if CIP contains claim not previously
supported.
All continuing apps must refer to FIRST appl if rights
and date to be carried forward.
*33.5* CIP, NOT ENTITLED TO EARLIER DATE: 201.11, PG 200-17
201.11 on pg 200-17 there is another inconsistent or
unconnected specification relating to CIP as to why a prior
date is NOT ALLOWED if CIP contains claim not previously
supported.
Features in CIP but not in parent application do not get
benefit of prior filing date. Support goes back only to
first time mentioned in CIP type chains.
All continuing apps must refer to FIRST appl if rights
and date to be carried forward.
201.08 and 201.11 are inconsistent. 201.11 lists 4 conditions
for availability of benefit of prior filing date. 201.08 lists
only 3 of these 4. The 4th is a reference requiring the two
patents combined comply with USC 112 first paragraph.
ie. description, how to make, how to use, by skilled in
art, and best mode.
*40* RESTRICTION / ELECTION
DIVISION, EXAMINER REQUIRES: 802, USC 121, CFR 1.141, 1.42
"Restriction is when two or more independent AND distinct
inventions are claimed one application. The Commissioner
may require the application to be restricted to one of
the inventions." Quote U121
Examiner requires applicant to choose (elect) one only
to claim.
Election of species is when two or more patentably distinct
forms of a generic invention are in one application.
Can file a rule 60 or 61 division or continuation on the
non-elected invention. (new fee), (same (rule 60)
or nearly same (rule 62) specification)
Parent and divisional apps cannot be used against each other
when a restriction requirement has been made. u121
Examiner must give reasons why he thinks inventions are
distinct. m816
Claims for non-elected invention are withdrawn.
If traversal arguments fail, petition to the Commissioner.
Inventorship may be called into question if application is
by joint inventors. [inventions may be by each]
*40.1* IMPROPER REQUIREMENT FOR RESTRICTION
* A single claim including a Markush or a Design claim.
* Claims clearly unpatentable over each other.
* Claims differing only in scope. M806.03
* Claims differing only in form.
* Means plus Function apparatus claim and method claim
using the same language.
*41* FOREIGN PRIORITY, ESTABLISHING: USC 119 , MPEP 201.13,-14,-15,
CFR 1.55
* US application must be same invention as foreign application.
* US must be filed within 12 mo of foreign application.
* and within 12 mo of any foreign publication.
To get:
* must claim priority, supply cert copy of original applic,
spec, and drawings
* Foreign country must offer same privilege
* Same inventor
*44* DEPOSIT ACCOUNTS: CFR 1.25 (for list), 1.51 m509.01
Charge fees of 1.16,1.17,1.18, 1.19, 1.20, US filing, appeal, issue,
records, and post-issue fees.
1.445,1.446, international search, processing fees. (1.25, list)
General authorization to charge all fees, or only certain fees of
1.16, 1.17, 1.18 may be filed in an individual application for
entire pendancy or for only certain papers. NOT for 1.19, 1.20,
1.21
Re-exam per 1.510 fees chargeable. if requested in re-ex appl. 1.25
Must have adequate $ in fund to cover charges. Also minimum balances.
NOT FOR recording an assignment! fee in 1.21, misc
Apparently not for Misc fees (1.21)
Fee amount is from the current fee schedule at time of PAYMENT.
Not when first payable or date of notice.
*44.1* NOTICE OF ALLOWANCE,
ISSUE FEES:
* 3 Months to pay up. no extension cfr 1.87
AMENDMENT:
* No amendment as a matter of right.
* May submit rule 312 (c1.312) amendments to
put application into better shape for issue.
[spelling, grammar, errors]
* Submit formal drawings. Extensions allowed for
submission of formal drawings, with 1.136
extension fee.
*44.2* PETITIONS, normal period to file,
Petitions are to the PTO, examiner, commish, etc
Appeals are to the board and/or courts.
FEES REQUIRED / NOT REQUIRED
NOT REQUIRED [know these]
* in re-examinations, for excess claims carried forward
from patent.
* certain Make Special Cases (see make special)
* petition to revive (after abandonment) 700-50 1.137
promptly upon notification
1 year for unintentionally abandoned 1.137, 1.316
* petition to withdraw holding of abandonment 711.02
* Petition to Commissioner to review restriction rqmt. 1.144
not later than appeal
* Petition to Commissioner to invoke supervisory authority
1.181
* Petitions to Commissioner for actions not appealable to
board 1.181
* To inspect file open to public access.
FEE REQUIRED
Review CFR 1.17h & 1.17i lists. Not all are listed here.
most extensions
Re examination
Continuations
Certificate of correction
Correction of Inventorship
Maintenance Fees
Appeals
Notice of appeal MPEP 1205,
On filing an appeal USC 41, 1.17e?
Filing appeal brief 1.192a, 1.17f
For an oral hearing before Board of Appeals 1.17g, USC 134
Inventor unavailable, filing with
Terminal Disclaimer
Recording of assignment
Issue fee
Extension of time to file formal drawings
Access to assignment file.
Copies and other work
Petition to Commissioner to waive rules. 1.183
Petition to suspend the rules 1.17h, 1.183
Petitions in interferences, several kinds. 1.644 (1.17h list
only)
Petition for access to patent application, including
reissue files. 1.17i, 1.14, MPEP 103
Petition to suspend action on an application. 1.17i, 1.103
Petition to withdraw an application from issue. 1.17i, 1.313
Petition for expedited handling of foreign filing license
1.17h, 5.12
Excess claims 3, 20
Multiple dependent claim, to submit a,
Fee amount is from the current fee schedule at time of PAYMENT.
Not when first payable or date of notice.
*45* SECRECY ORDERS CFR 5-- MPEP 120
Prosecution proceeds CFR 5.3 (a)
Allowance suspended until secrecy order lifted (c)
Interference not declared during secrecy (b)
International applications will not be mailed (d)
Recision, Modification 5.4, 5.5
Licensing for foreign export of filing
see 5.11 -->
*46* GVT REGISTER OF INTEREST 37cfr 7.xx
for government owned applications and patents.
*47* ETHICS, PRACTICE CFR 10--
Signatures on documents 10.18
Your signature or filing of a paper signifies that:
you have read the document
you believe it to be true
you are authorized to sign
the paper is not for purpose of delay
Misconduct 10.23
study the list at 10.23
Advertising etc. 10.31, - 35
Employment and withdrawal of empl 10.39 - .40
Employment - see 10.39
See 10.39 for list of when not to accept employment.
withdrawal - see list at cfr 10.40
Must give client time to seek other council.
Not less than 3 months before Office Action due.
Permission required in most cases.
Permission not required if client dismisses attorney.
Confidentiality 10.57, 10.87
Conflict of interest, impairment of judgment 10.62 -
Incompetence 10.77
Zealous and legal representation 10.84- .93
Impropriety 10.111 -.112
Disciplinary rules, proceedings 10.130 --.170
Gvt employees, Office employees, Public officials 10.10, 10.101-.103
if licensable, their practice is limited by the code.
[cynical remark -- This part of the ethics code is applicable ONLY
to current and ex government employees. Yet several
questions on it have appeared recently for all of us to get wrong
or waste time looking it up]
*48* TRADEMARKS CFR 2--
Not for Agents to represent
Not relevant to this exam. [cynical remark -
Since there is no PTO licensing for trademark
practitioners, (any licensed attorney is
permitted to do trademark work without showing
any understanding or competence).
If trademark questions appear, they are irrelevant
and could be the basis of a re-grade]
*49* ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE CFR 3---
Eligibility for assignment
Requirement for recording
Cover Sheets
Dates
Issue to Assignee
*50* REPRESENTATION MPEP SECTION 4
*51* CORRESPONDENCE: MPEP 403
*52* JOINT INVENTORS USC 262
* A patent "has the attributes of personal property". U261
* "In the absence of any agreement to the contrary, each of the
joint owners of a patent may make, use or sell the patented
invention without the consent of and without accounting to
to the other owners." U262
[(ie as joint tenants)(262 does not address assignment directly.
Assume licensing, being a form of selling the invention within
a product is ok. Assignment or exclusive licensing would
infringe on the others' rights to access to the invention.
Not ok)]
*53* PUBLIC ACCESS TO RECORDS:
OPEN TO PUBLIC MPEP 103 CFR 1.11
* Application after issue
* after statutory invention registration
* All reissue applications
* Office has honored request for opening for public good.
* All requests for re-examination
* All re-examination papers
* Any interference file.
* Status (must provide app # and date to get status info)
app is abandoned
app is pending
patent was issued
* Assignments of patents. CFR 1.12 (fee rqd)
NOT OPEN TO PUBLIC CFR 1.14
* Pending applications
* abandoned applications
* papers relating thereto.
* Assignments for abandoned and pending apps.
EXCEPT if assignment record is in document made public by
issue of a patent referring to abandoned app or is opened by
applicant. CFR 1.14b
*54* DESIGN PATENTS: 1500
* Design patents and utility patents may be on same product
if they are not on the same subject.
ie double patenting. 1504.05 3b
* Use Terminal Disclaimer to overcome.
* "The design of an object consists of the visual characteristics
or aspects displayed by the object. ... which creates a
visual impact upon the mind of the observer.
* "Must be a definite, preconceived thing, capable of
reproduction and not merely the chance result of a method."
* No maintenance fees for design patents.
* 102d period is 6 months for Design patents. U172
* No U119 e (priority for Provisionals) for design patents. U172
CONTENTS, ARRANGEMENT 1.154 1503.01
* Preamble, stating name of applicant and title of the design
* Description of the figure or figures
* Description, if any
* Claim, One only
* Oath
Title: 1503.01
The title uses words or names generally known and used
by the public. No exotic or contrived words.
Description: 1503.01
Optional; A general description is not necessary.
The description of the drawing and the drawing itself
are usually adequate.
Permitted in description:
1. Description of the appearance portions of the
claimed design not shown in the drawing disclosure.
2. Statement indicating that any broken line
illustration in the drawing disclosure is not
part of the design sought to be patented.
3. Description denoting the nature and environmental
use of the claimed invention.
Model claim: MPEP 1503.03, page 1500-5 & 6
The ornamental design for -- article as described in
the specification -- as shown [and described].
(if it is not actually described).
* Not allowed in spec, see 1503.01 page 1500-3 for list
* One claim only
* No dotted lines in drawing
* "there are no portions of the claimed design which are
immaterial or unimportant, and elements shown in dotted
lines in the drawing are not part of the claim.
* No photographs. Photographs are considered as informal
drawings.
* Functionality of features is not design-patentable.
* Design patents are only for what can be seen on the exterior
of the device. Inside features not design patentable.
The interior if visible from the outside may be patentable.
(ref Kayton). [ Example. Fabrige' egg with scene visible
through a peephole. (Example not from Kayton)]
*55* USC 101 STATUTORY CLASSES
USC 101 Pressman 5-3 CFR 706.03a
new and useful: Classes: see usc 101
process process
machine machine
manufacture manufacture
composition of matter composition
improvement thereof new use for
*56* USC 102 NOVELTY AND BARS, CONSIDERATIONS
USC 102.
Watch for Saturday, Sunday, Holiday tricky questions with
dates. CLUE -- , day names given!!!!!
Except Express mail may now be filed on Sat, Sun, Hol. and get that
date. ref OG 1192, Nov 26, 1996
USC 102, PRIOR ART, BARS, WHERE INVENTED, WHEN INVENTED
(102 a) Publicly known, or used by others ("others" (PLURAL)
than applicant) IN THIS COUNTRY;
or
patented or described in printed publication
IN THIS OR A FOREIGN COUNTRY,
and
before the invention thereof by the applicant for patent.
[ 706.02 (c) and 2132 says "in this country" is the United States,
and does not include NAFTA/WTO
note that NAFTA/WTO countries seem to be defined by U104 as
not "foreign countries", but since "in this or a foreign
country" is inclusive without regard to the U104 definition,
everyone is encompassed, NAFTA or not.]
Therefore, U104 (NAFTA/WTO) has no affect on 102a. ]
USC102 a, e, g Do not have a 1 year free window.
USC102 a, b Foreign Publication must be by printed media.
Foreign sales not counted.
Note: Applicant's own work in the US cannot be used against
applicant in 102a because applicant's publication or
use cannot be before the "invention thereof" (Kayton 6th ed. page 4-12)
This could be utilized in a PTO "trick question".
(102 b) Patented or described in printed publication
IN THIS OR A FOREIGN COUNTRY
or
in public use or on sale IN THIS COUNTRY;
and
more than 1 year prior to the date of the application for
patent in the U.S.
(pub by anyone, incl applicant)
[ 102b has the same language as 102a, therefore 102(b) is all
NO-NAFTA/WTO]
USC102 a,b Foreign Publication must be by printed media.
Foreign sales not counted.
(102 c) Invention abandoned.
(102 d) First patented or inventor's certificate in a FOREIGN COUNTRY
by the US applicant, prior to date of application for patent
IN THIS COUNTRY on an
application for patent or inventor's certificate filed more than
12 months before the filing of the application in the UNITED STATES.
[ summary: bar = your foreign application filed more than
12 mo before your US filing]
6 months for Design patents.
Operative Criteria to bar US patent, 102(d): 706.02(e)
* Foreign application must be filed more than 12 months
before effective date of US application.
and
* Foreign and US applications by same applicant or reps.
and
* Foreign application must have actually issued a patent
or inventor's certificate before the filing in the US.
Patent need not be published, but the patent rights
granted must be enforceable.
and
* Same invention if both foreign and US case.
(102 e) Invention described in US patent granted to another before
present invention
or
on an international application by another fulfilling requirements
of -- USC 371 before present invention.
[ USC 119, 120, NAFTA, WTO can be used to swear behind
referenced patent]
Where the reference is a US application, the rejection takes the
form of a "provisional rejection" (because no patent). See *57.4*
"Invention Described" does not mean it has to be claimed. The
patent itself is a publication.
REFERENCE TO UNCLAIMED MATERIAL can be rebutted by
affidavit 102(e). .. Patented invention (claimed) has to have
claim rejected by court or re-examination.
US patent app having foreign priority cannot use the
foreign priority as bar to your application. (not "invented" in
US at time of foreign priority)
USC102 a, e, g Do not have a 1 year free window.
(102 f) not the inventor.
(102 g) Invention was made IN THIS COUNTRY by another who has not
abandoned, suppressed, or concealed it. dates, reduction to
practice and diligence to decide if one was first to conceive,
but last to reduce to practice.
USC102 a, e, g Do not have a 1 year free window.
*56.1* NAFTA/WTO USC 104 INVENTIONS MADE ABROAD UNDER US PROTECTION.
USC104 was modified to include the NAFTA and WTO countries as
equivalent to the United States for some purposes.
Fortunately for some reason (wisdom, serendipity, sonobulism,
or simply incompetence) Congress did not amend 35USC102
to accommodate the apparent intention of the NAFTA and WTO
advocates (the one-world government crowd, not real and
patriotic Americans).
USC104 has always limited the place of invention to
the United States and its territories (except as below) for
establishing the dates of invention and other factors
affecting priority.
USC104(a)(1), The new NAFTA/WTO 104 revisions of 1994 and
1996 extend the privilege to the countries in NAFTA and WTO
(Uruguay Round Agreement).
USC104 has always provided for domestic equivalence for government
employees, military, and government contractors' employees
to enjoy same rights of priority as if their inventions
were made in US territories. In effect, their invention
date, knowledge, or use, and USC 120, Benefit
of earlier filing date in the United States, is available
for them in perfecting priority. [one would presume that
the employees, etc, are US legal residents. 104 is unclear]
USC104(a)(2) extends the privilege to the employees of NAFTA
and WTO countries.
USC104(a)(3) Information in a NAFTA or WTO country concerning
Knowledge, use, or other activity relevant to proving or
disproving a date of invention .... shall draw appropriate
inferences in favor of the party requesting the information
in the proceedings.
[strange one-way use of information????? Facts-is-facts,
why cannot all parties use them?] [Does mpep 706.02(b)
contradict 104(a)(3) ???!!???]
By logical extrapolation of U104, "foreign" applies to everyone
except US and NAFTA/WTO countries. This can make some differences
in U102. Although this definition is inconsistently applied.
MPEP 6th Edition Rev 3. offers some clarification in several
disjointed places.
* Affidavits -- Nafta/wto counts for dates of conception
or completion of inventions. M715.07 pg 700-142 M705.07(c)
* U100 defines "in this country" as the United States, which is
reflected in the MPEP relative to U102 places.
* U102a
In the "United States" and "in this country" are literally
the United States for U102a. USC104 not withstanding.
The modified definition of "foreign" is irrelevant in 102a
U102a is an NO-NAFTA ZONE. M 2132
* U102b
The same wording is in 102b. Therefore, U102b is also
an NO-NAFTA ZONE. M2133
* U102d
Is a NAFTA/WTO country a "foreign country"?
* U102e
Date of invention may be established by invention in a
NAFTA/WTO country.
* U102g
Date of invention may be established by invention in a
NAFTA/WTO country. M2138.02
*57* USC 103 OBVIOUSNESS
-- such that subject matter as a whole would have been obvious to a
person having ordinary skill in the art.
EXCEPT USC 102 F, AND 102 G Obviousness rejection is
NOT PROPER if invention owned by common person(s) at time of
invention.
Functional equivalents not necessarily obvious in view of one-another.
pg mpep 700-9 mpep 706.02
Apparently an old device or chemical composition cannot be patented
because a new use is found. Apparently (maybe) the new use itself
can be patented??? 707.07f
Omission of an element while retaining its function suggests un-
obviousness.
*57.1* GRAHAM VS JOHN DEERE CRITERIA: M 706,
USC 103 evaluation criteria (Graham vs John Deere) m 706 PRC 5-54
1. Determine scope of prior are
2. Ascertain the differences between prior art and claims
in issue (of your application).
3. Resolve the level of Ordinary Skill in the art.
see PRC 5-21
plus 3x. Secondary considerations. PRC 5-17
*57.2* SECONDARY CONSIDERATIONS TO REBUT 103 OBVIOUSNESS: mpep 716
Submit affidavits of -
Commercial Success
Long felt need in art
Acceptance by art
Skilled in art take different directions
Copying of invention
Competitors taking recognition of your invention
Infringers trying to steal the invention, or
indicating that they know it is unique (un-obvious)
Unexpected results
Experts skeptical
Long felt need for invention requires supporting evidence
to succeed.
*57.3* COMBINED REFERENCES:
USC 103 Elements of COMBINED references may be obvious even though
the specific structures CANNOT be specifically substituted
into the structure of the OTHER reference.
REBUTTAL AGAINST --
Person of ordinary skill would not combine
Combined result is not the claimed invention.
*57.4* PROVISIONAL REJECTION: USC 102(e)/103 mpep 706.02(f). pg 700-8, 700-9
Applies of co-pending applications having common inventorship or
ownership.
Earliest application would constitute prior art.
Responses --
combine into 1 application
show that invention was derived from the inventor of earlier
application (common inventor defense)
show date of invention to be before earlier application
706.02(f) has examples.
*58* OBJECTIONS VS REJECTIONS m706 (rejection)
PETITIONS / APPEALS / REQUESTS DISTINCTIONS BETWEEN
m706.01 (objection/rejection compared)
" Refusal to grant claims ... considered unpatentable is called
a `rejection'. The term `rejected' must be applied ... in
the examiner's letter."
" If the form the claim (as distinguished from its substance)
is improper, an `objection' is made."
" REJECTIONS involving the merits of the claim is subject
to review by the BOARD OF PATENT APPEALS AND INTERFERENCES"
" ... an OBJECTION, if persisted in, may be reviewed only by
by way of PETITION to the COMMISSIONER."
Requests are to the examiner for action or review.
FEE required for many petitions.
EXAMPLES:
* Requirement that alleged new matter be canceled is PETITIONABLE.
* Restriction requirement is PETITIONABLE
* Holding that a claim contains new matter is APPEALABLE
* Holding that a claim is not readable on the elected embodiment
is APPEALABLE.
*59* Reserved
*60* LICENSE FOR FOREIGN FILING: USC 184
NOT NEEDED 6 months AFTER filing in U.S. EXCEPT when under
secrecy orders.
PENALTIES USC 185, 186
*61* INTERNATIONAL PROCESSING: CFR 1.4XX
US RECEIVING OFFICE US RESIDENTS ONLY. 1.412, 1.421
*62* PCT stuff Section 18
Basic Principles 1801
Receiving Office 1801, CFR 1.4xx for US, 1805 (who)
Application, contents 1815, details, 1820 --
Filing Date Request 1810
*63* Reserved
*64* QUAYLE, Ex-Parte Quayle m714.14
After all claims have been allowed, all prosecution on merits is
closed. Only formal matters to put into form for allowance are
permitted.
*65* CERTIFICATES OF CORRECTION:
PTO'S ERROR MPEP 1480 U254 C1.322
No fee
May be requested by patentee or assignee. May be req by
Office, others,
Patentee is notified and can be heard.
APPLICANT'S ERROR MPEP 1481, U255, C1.323
No new matter
fee
mistake made in good faith
error not sufficient to evoke re-examination
CORRECTIONS OF INVENTORSHIP MPEP 1481 U256 C1.324
Without deceive intention
fee
petition of all parties originally named as inventors and
assignees.
Petition to Supervisory Primary Examiner in art.
IN RE-ISSUE CASES
cert of correction is part of original patent. insert into
copy without brackets, underlining.
*66* PCT TIMING
To supply missing parts of application 4 months. a14
Applic becomes public by national office 20 mo min after priority
date.
Applic becomes public 18 mo after applic date. a21
Drawings not necessary for understanding. 2 mo min
Time/date is local date/time where the event occurs. R80.4
Dated documents. Actual (provable) mailing date is date starting
time period. R80.6
Period stated in Months. short months, last day.
ie 31 --- 28,29,30,31 30 --- 28,29,30 28 --- 28. R80.2
Period stated in Days. next day is day 1.
0 file national application, (called priority date)
12 max file in receiving office designating nations. Int. App date
+1 max pay basic and search fee R15, R16
pay designation fee -
if no priority date, 12 max from initial application date. R15.4
if priority date, 12 max from priority date R15.4bi
if int app date is 12 then 13 max. R15.4bii
+2 mo from search rpt to amend claims R46
17.5 last opportunity to withdraw app. A21.5
18 Application is published.
19 elect states. change designation to election
20 enter national stage (optional?). no extension of time for
this -- PCT examination, amend, etc
30 enter national stage. no extensions
*67* PCT APPLICATION Article 11 MPEP 1010
To get a filing date, Receiving Office determines that:
1. Applicant does not obviously lack right to file for reasons
of residence or nationality in the receiving office.
2. Prescribed language
3. at least one of
indication that it is intended as an international app.
designation of at least one contracting state
name of applicant [not necessarily the inventor]
a description
a claim
If some missing, Rec Office notifies. 4 mo to supply data.
filing date is when all submitted.
International date considered as filing date in each designated
state.
Equivalent to Paris Convention.
PCT DEFECTIVE APPLICATION Article 14
1. not signed
2. prescribed indications concerning applicant missing. See
Rule 4.5
3. no title
4. no abstract
5. does not meet physical requirements. See Rule 11
Receiving office will check above. If defective, and not timely
corrected, 4 mo, application is considered withdrawn.
see PCT rules for details.
:::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
*99* DEFINITIONS ---- :
ATTACHED Does not necessarily mean "fastened". Being in one place
for consideration is adequate. 605.04 pg 600-21
PUBLICATION is actual publication, US patent application, or
foreign patent issue.
ESSENTIAL MATTER is material required to fulfill the information rqd
by USC 112. ie support claims or for adequate disclosure of
invention. 608.01p-B pg 600-42.
By Reference: US Patent,
an allowed US application IF necessary to:
support claims
adequate disclosure of invention
but not;
patents or applications published by foreign or
regional patent offices
non-patent publications
US application which itself incorporates
essential material by reference.
Foreign application
Not allowed: Foreign patents or applications
non-patent publications
US patents also incorporating material by reference.
See 600-2 for non essential material and format of referenced
material.
REDUCTION TO PRACTICE 715.07
Evidence of reduction to practice is
model
drawings
sketches
photographs
note book entries
plus statements about above and a showing of diligence
It is unclear what is the definition of reduction to practice, but it
seems to be at least the patent specification in the application.
DATE OF INVENTION:
Pressman says:
* date you filed your US application
* date you can prove you built and tested your invention in the US
* date of provable conception provided you can proved diligence
until date of construction
or patent application.
It seems to be also the date that it was described in the US, ie
disclosed to a US patent attorney, ( also, maybe, PTO disclosure
doc, presentation in useful form to a potential US buyer or
licensee, etc.) (opinion from analysis of old exam answers)
REEXAMINATION is not an "application" thus 1.136 does not apply
(2265) Also because no application, there is no "applicant".
"WHEREBY" phrases for descriptive usages. to describe usage or
function, etc. does not limit or distinguish pg 700-15
"MEANS" plus function. ie "means for conveying rotational energy"
which describes a gear, belt, shaft, etc. "Amplifying means"
is an amplifier of any design.
"MEANS" requires two elements in an independent claim.
MPEP 706.03(c), 700-15 USC 112
"SAID" is for reference using SAME WORDS to identify a previously
described element.
"THE" is for different or implicitly, but clearly equivalent
descriptors.
"NEXUS" means connected. a connected group or series.
"TRAVERSE" means A formal denial of matter of fact alleged by the
opposing party in a legal pleading.
"QUAYLE, Ex-Parte Quayle" m714.14
After all claims have been allowed, all prosecution on merits is
closed. Only formal matters to put into form for allowance are
permitted.
=====================================================================
WHAT APPEARS TO BE ISOLATED SUBJECTS, BOTH BELOW AND ABOVE
ARE SUBJECTS TO BE ADDED
THIS IS A SHOPPING LIST AND SOME ARE ALREADY INCLUDED.
USC102, 103, 102/103 rejections, objections
USC 112 objections
Reexamination, responses 2210, 2214, 2266
Ethics
--------------------------------------------------------------------
--- end ---
I can always be reached directly at bross@bross.seanet.com
This page last modified June 29, 1997
Go directly to the bar exam home page
Go directly to the Patent Research Engineer's home page
You are my
visitor. . . Many Thanks.