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PATENT BAR EXAMINATION Study Materials. All questions 1991 - April 1999 collated by frequency of occurrence of paragraph number and sub-paragraph letter.

An analysis and report of the content of the patent bar exam questions 1991-April 1999. Paragraph number and letter collated by frequency of occurrence.

QUICK FETCH OF THE IMPORTANT FILES (EXAMPLES FROM PAST PUBLICATIONS)
QUESTIONS 1991 - April 1999.

1991-OCTOBER 2001 FILE SET IS NOW AVAILABLE.

A tabulation of how often each subject was asked. Collated by paragraph number and sub-paragraph letter. 1991-1999.

A tabulation of how often each subject was asked, but redacted to paragraph number only. No subparagraphs ie, a, b, c. etc. 1991-1999.

All questions listed and cross indexed along with cross indexes to MPEP, 37CFR, 35USC paragraph from the 1991 - April 1999 Patent Bar Exams. . This is cross-referenced index based primarily on questions asked in prior exams. Question Identification has been removed, so it can be taken into the exam. Much easier to use and more comphrensive than the indexes provide in the MPEP.
Many of the index lines contain a brief summary of the subject, thereby relieving the examinee of the need to look it up. Especially for niggling details like FEE/NOFEE.

These files can be sorted by subject or MPEP/CFR/USC paragraph
to make a tabulated listing of what is asked often.
SORT.EXE in Windows 98 (95 also??) will do it.
SORT.COM in DOS 5 (maybe 6 also??) will not work.
Use SORTBIG.EXE from this page if you do not have SORT.EXE.

Before re-sorting the frequency-of-asking files, you should re-combine the line-wrapped lines onto 1 line each. Otherwise the sorter will scramble the wrapped fractions. Alternatively, Email me and I will send a non-wrapped version.

Note: SORT.EXE is probably in the \windows\command directory.

These files and the barexams themselves are available on CDROM and/or paper copies from bross@seanet.com. Graphs and summary charts of various complicated subjects for quick reference are also on the CDROM.
Contact bross@seanet.com .

Return to the bar exam home page.

.NOTES :00 . :283 =========================================================== . :282 . :282 . :282 . :282 . :233 TEST QUESTIONS, 1998, 99 ; MPEP 7TH EDITION, Rev 0 . :232 ; possibly Rev 2 also. . :231 TEST QUESTIONS, 1997 ; most likely Rev 0 and Rev 1, . :23 TEST QUESTIONS, 1996 ; MPEP 6TH EDITION, Rev 0 or Rev 1 . :22 TEST QUESTIONS, 1991 - 1995; MPEP 5TH EDITION . :21 ----------------------------------------------- . :20 . :190 Exam question. NOT a day date.!! . :19 The numbers after the month are the numbers of the . :18 . :18 . :17 of them appearing on a future test is quite high. . :16 that their study is recommended, and the probability . :15 cross indexed or entries considered so important . :14 Entries without question date and numbers are either . :13 . :13 . :12 --- = spacers and deleted questions . :11 pct= Patent Co-operation Treaty, pr= PCT rules. . :10 REFS: m= MPEP, c= 37CFR, u= 35USC, . :09 . :09 . :080 . :080 . :08 available at http://www.seanet.com/~bross/sortbig.bas . :07 A sort program for big files like this one is . :068 Otherwise use SORTBIG as follows: . :067 sorting SORT /+1 targetfile . . :066 shows up. Occasionally this can be overcome by . :064 files, but sometimes an unknown limitation error . :063 will sort most big files. I have sorted 40 megabyte . :062 64Kbytes. SORT.EXE in Windows 98 (maybe in 95) . :061 SORT.COM in DOS 5 and under sorts files less than . :06 . :06 . :05 sort on 25th character to order by summary. . :04 Sort on 13th character (:) to order by date. . :03 Sort on left end for grouping by reference. . :02 information in various ways. . :01 Sort this file in various ways to emphasize the . :00 PATENT BAR EXAM QUESTIONS 1991 - APRIL 1999 COLLATED BY PARAGRAPH NUMBER AND SUB-PARAGRAPH LETTER. HOW PARAGRAPH YR MO Q# SUBJECT OFTEN # LETTR 72 u112 :99 Apr 50 Specification 608.01 32 u103 :99 Apr 46. Conditions for patentability, non-obvious subject matter, common I or O m2186 30 c1.131 :99 Apr 28. Swearing back, affidavits overcoming rejections m715 27 c1.75 c :99 Apr 50 Claims, Dependent and multiple dependent claims m608.01 n 26 u102 e :99 Apr 48 Prior patent issued 26 u102 b :99 Apr 49. Prior art by printed publication or in public use more than 1 year. 25 u102 a :99 Apr 39 Prior Art, Known, used, patented, before invention in US 23 m608.01 n :99 Apr 48. Specification (n)= dependent claims, mult dep clams c1.75c 18 u251 :99 Apr 44. Re-issue of defective patents u1401, u1402 (list) 16 c1.136 a :99 Apr 17 Extension of time to respond, timely response, for office actions. m710.02 15 c1.136 :99 Apr 23. Extension of time to respond, timely response, for office actions. m710.02 14 u102 :99 Apr 10 Patentability, reasons for not being patentable. 13 u120 :99 Apr 43 Benefit of earlier filing date in US benefit of earlier filing date in US 12 m715 :99 Apr 43 Swearing back affidavits. c1.131. 12 m201.11 :99 Apr 28. Continuity between applications: filing dates. common inventor pages200-231 11 u119 :97 Aug 15 Benefit of earlier filing date in foreign country, right of priority. 11 m706.02 :98 Aug 2. Prior Art, Rejection on. U102, u103, m2186 11 m1206 :99 Apr 40 Appeal, duration of extensions 10 u133 :98 Aug 45. Time for prosecuting applications, actions, 6 mo then abandoned 10 m708.02 :99 Apr 5 Make Special, Petition to, (handling, expedite, national interest) c1.102 c1.412 10 m512 :99 Apr 40 Certificate of mailing page 500-538 c1.8 don't use for -- list 10 m2145 :99 Apr 46. Rejection. Rebuttal Arguments. Arguments no good. Evidence required. Details shown. 10 m201.03 :99 Apr 41. Correction of inventorship Pages 200-209 c1.48 10 c1.53 b :99 Apr 45. Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01 10 c1.111 b :99 Apr 23 Further Consideration -- Reply by applicant or owner. 9 u116 :97 Aug 46 Inventors, Joint, definitions 9 m716 :99 Apr 14. Affidavits or declarations traversing rejections c1.132 9 m710.02 e :99 Apr 17 Time to respond, Extensions. Page 700-46 c1.136 9 m609 :99 Apr 21 IDS - Information Disclosure Statement. page 600-697 c1.97 9 m608.01 :99 Apr 50 Specification. Detailed Rqmts, Defects c1.71 9 m2111.03 :99 Apr 50. Claim language, transitional phrases. Comprising: Consisting of: Consisting essentially of: "comprising, including, containing, characterized by are inclusive or open ended." 9 c1.75 :99 Apr 27 Claims m608.01 k-o (a)= Spec concludes with claims U112. (b)= more than one claim ok. (c)= dependent claims further limit. MD in alternative only (or). (d)= Antecedent from spec rqd. (e) Jepson form. (f)= numbered consecutively in Arabic numerals. (g)=grouping (h)= start on separate sheet. (i)= indent element listing. m608.01 k - o 9 c1.102 :99 Apr 3 Make special, advancement out of turn m708.02 8 u132 :99 Apr 42. Notice of rejection; Re-examination 8 u101 :98 Aug 12 Patentable Inventions, definition 8 m2173.05 e :98 Aug 49 Claims, lack of antecedent. 8 c1.8 :99 Apr 35. Certificate of mailing mpep 512 a1= use-for list. a2= don't use list. b= fixing list. c= additional evidence may be required. 8 c1.111 :99 Apr 32. Further Consideration -- Reply by applicant or owner. 7 u184 :96 Aug 12 License to file in foreign country see u185 also m140 7 u151 :99 Apr 35. Issue of Patent, procedures, notice, etc 3 mo, fee, no ext except for cause (1.136b), petition for unavoidable delay, fee. S 21 8 7 u122 :99 Apr 27. Confidential status of applications c1.14 7 u104 :93 Oct 48 Inventions made abroad, military personnel exempted, NAFTA 7 m804.02 :98 Aug 1. Terminal Disclaimer, fixes double patenting 7 m714.22 :99 Apr 34. Amendment, directions for entry of,. 7 m714.13 :98 Aug 11. Amendment after final rejection, Procedure. two months from date of mailing special rule. 7 m608.01 p :99 Apr 29. Application, Completeness of application, essential material - defined 7 m601.01 :99 Apr 47. Filing date, requirements to obtain. Description, drawings, claim, inventors named. c1.53 7 m2173.05 h :99 Apr 39 Claims, alternative limitations. permitted if unambiguous. (markush forms = "consisting of A and, B and C". or "wherein R is A or B or C.") 7 m201.13 :99 Apr 12. Right of priority of Foreign Applications. U 119 7 c1.132 :99 Apr 14. Objections to rejections, petitions, affidavits m716 7 c1.121 b :97 Aug 17 Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". m714.22 7 c1.10 :99 Apr 25. Express mailing -(a)can do. -(b)how. -(c)Sat,Sun,Hol see c1.6a, u21a 7 ------- :96 Aug Spacer 6 u121 :99 Apr 40. Divisional Applications, two inventions in one application 6 u102 d :99 Apr 11 Prior art by patent or inventor's certificate. 6 m710.01 a :99 Apr 38 Statutory periods, computation of time to respond 1.135 6 m608.04 :98 Aug 9 New matter by preliminary amendment (at filing time) 6 m402.06 :97 Aug 45 Agent withdraws. c1.36 6 m2173.05 c :99 Apr 33 Claims, numerical ranges and indefinite claim language 6 m2163.06 :99 Apr 43 New matter, u132 in apps. c1.118, u251 in reissues. 6 m1402 :99 Apr 41 Re-issue, grounds for filing 1= claims too narrow or broad, 2 year window for enlargment. By assignee of whole interest if not enlarging. 2= to correct inaccuracies in disclosure, 3= to claim foreign priority, 4= to make or correct reference to prior co-pending apps. 6 m1214.01 :97 Aug 25 Appeal, procedures after decision by board. c1.196 6 c1.63 :99 Apr 5. Oath or Declaration, contents of, 6 c1.56 :99 Apr 28. Disclose, duty to disclose 6 c1.53 c :99 Apr 42 Filing Date, serial #, Completion of Application mpep 506, m601.01 6 c1.137 :97 Aug 25 Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. 6 c1.121 :99 Apr 34. Amendment, including claim, method, style m714.22 6 c1.116 :98 Aug 45. Amendment after final action 6 -- :96 Aug 17 Deleted 5 m711.03 c :99 Apr 28. Abandonment, reviving unintentional abandoned app. c1.137 5 m710.02 :94 Apr 45 Time to respond, statutory period c1.136 5 m608.04 b :99 Apr 39 Amendment, new matter by prelim amendment 5 m2132 :99 Apr 27. Prior art, known or used. "in this country" "by others" "patented in this or foreign country" USC 102a, 5 m201.04 b :99 Apr 32 Provisional Apps. 12 month. Expire on Sat,Sun,Hol No grace. Provisionals do not count in 20 year term. 5 m1412.03 :99 Apr 28 Correction of patent, broadening reissue claims. Cannot do! u251 5 m1410.01 :99 Apr 45. Re-issue, oath, assent of all assignees. c1.172 5 m1306 :99 Apr 35. Issue Fee. Due 3 mo after Notice of Allowance. Not extendible. 5 m103 :96 Aug 21 Public Files. c1.11 Applics not public, some abandoned are. c1.14 5 c1.78 a3 :99 Apr 28. Priority, claiming benefit of earlier filed provisional apps. PPA's can expire on S,S,Hol. PPA must name at least one inventor of non-prov app. 5 c1.53 d :99 Apr 1 Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01 5 c1.191 :99 Apr 30 Appeal to board of Appeals and Interferences u134 5 c1.153 a :98 Aug 28 Design patent, -- title, oath, description, claim 1503 5 c1.137 b :98 Aug 45. Revival of Abandoned App. (a)=unavoidable -- file a proposed response + fee c1.17(L) + showing of unavoidability. (b)= unintentional -- same stuff. (c)= if more than 6 mo. then terminal disclaimer equal to abandoned period + fee c1.321 TD rqd on subsequent continuations. (d)= request for reconsideration of refusal to revive, 2 month period or as set. (e)= Not extendible, except (b) and (d) per c1.136 (the normal extension rules). 5 -------- :95 May Spacer 4 u301 :97 Aug 30 Prior Art, citation of, in re-examination m2202, c1.501 4 u119 b :99 Apr 12. Priority. Must claim and provide a Certified copy. Other requirements. 4 m804.01 :99 Apr 49 Double Patenting, Nullification of rejection. 4 m804 :99 Apr 26. Double Patenting, definition 4 m715.01 c :99 Apr 48 Reference, publications of applicants own invention. 4 m714.24 :99 Apr 9. Amendment of amendment. c1.124 4 m714.12 :98 Aug 11. Amendment after final rejection. Canceling, complying, better form allowed. c1.116 4 m714.02 :99 Apr 23 Amendment must be fully responsive. in writing, distinctly and specifically point out error, must respond to each ground, must appear to be a bonafide effort to advance the application to final action. General allegation no good. c1.111(b) 4 m713.04 :97 Aug 11 Interviews made of record c1.133, c1.2 4 m711.02 :98 Aug 41. Abandonment =711. -02=failure to take action during stat period c1.135 4 m710.06 :98 Aug 43. Dates misc factors, remail of OA, Errors in dating 4 m706.03 o :99 Apr 34 New matter not allowed u132 4 m706.02 b :99 Apr 15. Rejection on prior Art, U102(b) (e), Printed publication or patent. (list of overcoming arguments) 4 m608.02 :95 May 22 Drawings, u113, c1.81, 1.84 4 m605.07 :97 Aug 46 Joint inventors 605=Applicant. -07=joint inventors. c1.45 4 m509.01 :99 Apr 44 Deposit Accounts c1.25 4 m402 :99 Apr 19. Power of attorney, of record and not of record c1.34 4 m2250 :99 Apr 4. Re-examination, Amendment by patent owner c1.121 4 m2173.05 q :98 Aug 44 Claim, for use. Need steps of how to use. 4 m2173.05 p :99 Apr 18 Claim, product by process. separate claims for apparatus and product by process. 4 m2164.08 c :98 Aug 43 Enablement, Critical feature not claimed. 4 m2136.05 :99 Apr 48 Rejections under U102(e) Applicant's own work overcomes 102(e) 4 m2131 :99 Apr 33 Prior art, anticipation. 102abe rejections. To anticipate, ref must teach every element of claim. 4 m2113 :99 Apr 18 Claim, product by process. Patentability is on the product, not the process. Not limited by recited steps, only the structure implied by the steps. 4 m1503.01 :98 Aug 18. Design Patent, Specification and Claim, Form of Application page 1500-1503 c1.154 4 m1490 :94 Apr 37 Disclaimers 4 m1411.02 :98 Aug 7 Re-issue, claims must be for same general invention 4 m140 :96 Aug 12 Foreign filing license u184 4 m1207 :97 Aug 25 Amendment filed with or after appeal 4 m1205 :99 Apr 40 Appeal, notice of appeal 4 c1.97 :98 Aug 28. IDS - Information Disclosure Statement m609 4 c1.9 :95 May 3 Small entity, Definitions (e) 509.02 4 c1.75 b :99 Apr 16. Claims, more than one permitted. m608 4 c1.62 :94 Apr 27 File Wrapper continuations. Continuations in Part, Divisions, etc. 4 c1.53 :98 Aug 36. Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01 4 c1.48 :99 Apr 5. Correction of Inventorship m201.03, a= new oath, affidavit of no deception by original named inventors, fee, assignee's written consent. b= revised claims drop inventor then Petition to drop + statement of his stuff is not claimed, fee. c= amending to claim disclosed stuff, but previously unclaimed inventor not named, then same as a. d= Provisionals. add inventor by petition and fee. e= Provisional, removing wrong inventor, petition, fee, written consent of assignee. 4 c1.45 :97 Aug 2 Joint Inventors 605.07 4 c1.34 a :98 Aug 14. Representation, recognition for 4 c1.27 :99 Apr 3 Small Entity, oath, affidavit 4 c1.25 :96 Aug 37 Deposit Accounts 509.01 4 c1.191 a :99 Apr 23 Appeal to board of Appeals and Interferences u134 4 c1.183 :98 Aug 11. Suspend rules 4 c1.162 :99 Apr 16 Plant patent 4 c1.118 :96 Aug 35 Amendment, no new matter 4 ---------- :97 Aug 1997 Afternoon and morning sessions are not segregated. 4 --------- :99 Apr 1999 Test question # with . are morning questions 3 u371 c4 :98 Aug 49. National Stage filing, contents, oath 3 u371 c2 :98 Aug 49. National Stage filing, contents, copy of international filing 3 u371 c1 :98 Aug 49. National Stage filing, contents, fee 3 u305 :99 Apr 4. Reexamination, conduct of proceedings. No claim enlarging scope of patent permitted. 3 u253 :99 Apr 36. Disclaimer, disclaim a claim or portion of term. 3 u161 :98 Aug 3. Plant patent 3 u115 :97 Aug 24 Oath of Applicant mpep 602 3 u102 g :99 Apr 48 Invention by another, reduction to practice, diligence, not abandoned 3 u041 a :99 Apr 20 Patent Fees 3 m716.10 :99 Apr 48 Prior art, same inventor or common inventor in joint apps (examples provided) 3 m714.19 :99 Apr 17 List of amendments, for which entry is denied 3 m714.16 :94 Apr 27 Amendment after notice of allowance c1.312 3 m713.05 :97 Aug 11 Interviews, prohibited, granted, special situations. 3 m706.03 k :99 Apr 27 Double patenting, duplicate claims 3 m706.02 a :98 Aug 6. Rejections, Well known prior art u102, u103 m2186 c1.107 3 m608.01 m :98 Aug 24 Claim, Form of,. Start on separate sheet. "I Claim" or "The invention claimed is". Begin with a Capitol and end with a period. Jepson is c1.75(e) 3 m602 :93 Oct 23 Oath or Declaration, original u25, 26, 115, c1.63, 1.68 3 m513 :99 Apr 6. Express mail c1.10, c1.6 3 m509.03 :94 Nov 31 Small entity, claiming status as, 3 m505 :99 Apr 35. Office Receipt Stamp. & holiday rule. c1.10 3 m502 :99 Apr 2 Depositing papers. address, identification rqmts 3 m405 :97 Aug 45 Power of attorney, not of record. OK for filing papers. not OK for interviews, release of info. c1.134 3 m402.05 :98 Aug 13. Power of attorney, revocation. c1.36 3 m306 :97 Aug 23 Assignment of division, cont, subs, cip in relation to parent case 3 m2258 :99 Apr 4. Reexamination, scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. c1.552 3 m2202 :97 Aug 30 Prior art, citation of in re-examinations c1.501, u301 3 m2173.05 b :99 Apr 43. Claims, indefinite. imprecision does not automatically render claim indefinite. Ref to a variable object may render indefinite. 3 m2163.05 c :98 Aug 17 Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK) 3 m2144 :99 Apr 19 Rejections, Sources of Rational Supporting a Rejection Under u103. 3 m2143.01 :99 Apr 35 Prior Art must suggest desirability of presently claimed invention to be prior art. 3 m2143 :99 Apr 35 Obviousness, Prima Facie. Criteria = Prior art must make suggestion of motivation + reasonable expectation of success + reference(s) must teach or suggest ALL the limitations. 3 m2128.01 :97 Aug 21 Prior art, level of public accessibility rqd. rqmts for being "published". 3 m2112.01 :99 Apr 7. Claim, product and apparatus. prior art. prima facie case of anticipation or obviousness. 3 m201.09 :99 Apr 8. Substitute Application. 3 m2001.04 :97 Aug 13 IDS -- information under 1.56(a) No duty to disclose information not material to any claim. 3 m1605 :99 Apr 16 Plant patents, claims and specification. 3 m1604 :99 Apr 16 Plant Patent, Oath 3 m1481 :99 Apr 32 Correction of patent. Applicant's mistake. u255 c1.323 3 m1453 :98 Aug 20. Re-issue, amendments to Re-issue appl. Pages 1400-1421 3 m102 :98 Aug 12. Status of application, information made public. 3 c10.78 :94 Apr 28 Malpractice, skip out on obligations of liabilities 3 c10.23 b4 :94 Nov 12 Misconduct, dishonesty, fraud, deceit, misrepresentation 3 c1.98 :95 May 43 IDS - Information Disclosure Statement, contents 3 c1.97 d :98 Aug 15. IDS - May be filed before or with issue fee. Include Cert, petition, fee. 3 c1.8 a2ia :99 Apr 18. Certificate of mailing mpep 512 don't-use list 3 c1.552 b :97 Aug 8 Re-examination, Scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. m2258 3 c1.550 c :96 Aug 36 Re-examination, conduct of, 3 c1.52 :99 Apr 3 Application format, paper size, etc 3 c1.510 a :94 Apr 46 Re-examination, request for, who (a), when(a), parts(b), FEE (c), date(d), amendments (e), Atty(f) 3 c1.510 :99 Apr 22. Re-examination, request for, who (a), when(a), parts(b), FEE (c), date(d), amendments (e), Atty(f) 3 c1.495 b2 :97 Aug 17 National Stage, entering US as an elected office. 30 mo time not extended. 3 c1.48 a :99 Apr 5. Correction of Inventorship m201.03, a= new oath, affidavit of no deception by original named inventors, fee, assignee's written consent. b= revised claims drop inventor then Petition to drop + statement of his stuff is not claimed, fee. c= amending to claim disclosed stuff, but previously unclaimed inventor not named, then same as a. d= Provisionals. add inventor by petition and fee. e= Provisional, removing wrong inventor, petition, fee, written consent of assignee. 3 c1.324 :99 Apr 14 Correction of inventorship. u256 3 c1.312 :94 Apr 27 Amendment after allowance of patent (ie grant, notification) m714.16 3 c1.196 b :97 Aug 25 Board of appeals and interference, decisions by, scope of, m1214.01 3 c1.192 :99 Apr 31 Appellant's Brief board of appeals and Interference. contents, timing 3 c1.172 :93 Oct 34 Re-issue, who signs, who owns. 3 c1.17 :99 Apr 1. Fee schedule for processing & Extensions 3 c1.165 :95 May 30 Plant drawings 3 c1.163 :96 Aug 24 Plant Patent Specification 3 c1.14 :96 Aug 21 Application, held in secrecy u122 a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation. 3 c1.133 :94 Apr 5 Interviews 3 c1.124 :97 Aug 13 Amendment of amendment. amended twice, etc m714.24 3 c1.121 a2ii :99 Apr 48. Amendment, of specification m714.22 3 c1.121 a :94 Apr A3 Amendment, of specification m714.22 3 c1.116 b :97 Aug 25 Amendment after final action 3 c1.11 e :97 Aug 44 Files open to public. Files relating to interference proceeding. fee. m103 3 c1.11 b :99 Apr 47 Files open to public (Reissue apps). m103 3 c1.11 :94 Apr 38 Files open to public (issue patent). m103 2 u282 :99 Apr 36. Infringements, presumption of patent validity, defenses. 2 u134 :92 Oct Completeness and clarity of newly filed applications 2 u118 :94 Apr 17 Inventor, Filings by other than inventor 2 u113 :97 Aug 10 Drawings, late submission 2 u102 f :98 Aug 40 Invention by another, 102 f bar. 2 u041 b :99 Apr 26 Fees, maintenance, (b) 2 u021 b :99 Apr 35. Filing date & day for taking action. (a)= Commish makes the rules incl emergency situations and post office disruptions. (b)=The holiday rule. Sat, Sun, DC slacker day, next day ok. Note:except for provisional application expirations. 2 u004 :93 Apr 1 Restrictions on PTO employees 2 pctA11 :98 Aug 49. Complete International Application gets filing date if application = residency + prescribed language + statement of intention that it is an international application + designation of a contracting state + name of applicant + a description + a claim. 2 pct11 :95 May 40 International application, required parts. 2 m818.03 b :99 Apr 2. Election, Must elect even when rqmt is traversed c1.143 2 m809.03 :98 Aug 17. Division, linked claims, See also 818.03d 2 m809 :98 Aug 17. Division, linked claims, See also 818.03d 2 m716.01 c :99 Apr 14. Affidavits. c1.131 vs 1.132. 1.131 is for prior art rejections where invention is before reference such as u102a or e. 1.132 is for u102 f and g commonly owned or commonly assigned at the time later invention was made. 2 m715.07 :96 Aug 7 Diligence. Yes or No. no degrees of diligence. 2 m715.05 :98 Aug 39. Same Invention. commonly owned. 1 year publication limit applies. Remedy is via c1.608, not c1.131 2 m715.04 :96 Aug 7 Affidavits, who may make affidavits or declarations 2 m715.03 :98 Aug 39. Genus-Species. where predictability is in question. 2 m715.01 :99 Apr 29 Affidavits. c1.131 vs c1.132 1.131 is for overcoming 102(a), (e) Invention prior to reference. ok if ref is apps own invention. 1.132 is for u102(f) (g) 103. commonly owned or obligated to assign. 2 m713.02 :97 Aug 11 Interviews prior to first office action 2 m711.01 :99 Apr 17 Expressed or Formal abandonment. -01 c1.138 2 m710.04 :93 Oct 35 Time to Respond, two periods running together. 2 m709 :93 Oct 41 Suspension of action (examination). c1.103 2 m706.07 f :97 Aug 49 Final Rejection, time for response 2 m706.07 c :98 Aug 11. Final Rejection, Premature. Raise before the primary examiner. Not advancable as grounds for appeal or bias of complaint before the Board of Pat Appeals and Interferences. 2 m706.07 b :99 Apr 8. Final rejection on first action c1.113 2 m706.03 y :93 Apr A4 Markush Group. m803.02 2 m706.03 s :95 May 9 Statutory Bar. Abandonment of inv. Foreign pats or no license, 12 mo use 2 m706.03 e :93 Apr 47 Product by process. Old product, new process of mfg. OK 2 m706.02 L :99 Apr 32. Rejections under u102(f) u102(g) u103, u103(c) c1.106 2 m706.02 k :97 Aug 10 Rejection on Prior Art. Provisional rejection. k = Obviousness. 2 m706.01 :99 Apr 23 Rejection Contrasted with Objections (706=rejection of claims) *63* 2 m608.01 s :99 Apr 9. Canceled matter, restoration of. by new insertion only 2 m608.01 h :94 Nov 16 Specification (h)= mode of operation 2 m608.01 b :99 Apr 13. Abstract, format 2 m605.04 c :98 Aug 21. Inventor changes name. Apply to Assistant Commish for Patents. Fee. 2 m605.04 :93 Oct 40 Oath by all the inventors, facsimile copies filed. pg 600-21 2 m602.03 :97 Aug 24 Oath, defective 2 m602.01 :97 Aug 24 Oath cannot be amended 2 m509.02 :99 Apr 6 Small entity, definitions c1.9 2 m502.01 :99 Apr 1 Facsimile transmissions. Do-not-use list 2 m409.03 i :94 Apr 42 Rights of non-signing inventor. 409.03=Unavailability of Inventor 2 m409.01 f :99 Apr 39. After allowance, Executor should but is not required to act. 2 m403 :99 Apr 44 Correspondence, with whom. c1.33 2 m402.10 :96 Aug 13 Power of attorney, changing, all inventors must agree. 2 m301.01 :97 Aug 44 Assignment records of issued patents public. c1.12 2 m2265 :94 Nov 10 Time to Respond, extensions of, in Re-examination 2 m2248 :94 Apr 49 Request, petition from denial of c1.515 2 m2243 :94 Nov 43 Re-examination, Claims considered in deciding request for Re-ex. 2 m2214 :99 Apr 22. Re-examination, Request, contents. c1.510 2 m2189 :94 Nov 28 Examinations of joint apps under u103, u116 2 m2187 :94 Nov 28 Ownership at time invention was made 2 m2173.05 u :98 Aug 25 Claim, inclusion of trademarks or tradenames. not prohibited as identifier. prohibited as a limiter. 2 m2173.05 d :98 Aug 37 Claims, indefinite. do not put examples "for example, chlorine" or "such as ..:. put in spec. 2 m2164.08 :98 Aug 17 Enablement is evaluated against claims. All claimed material should be enabled. 2 m2164.05 a :98 Aug 26. Enablement. a = specification must be enabling as of the filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one. 2 m2164.03 :98 Aug 20 Enablement and predictability. 2 m2163.05 :97 Aug 15 Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK) 2 m2161 :99 Apr 36 Specification. 3 requirements of u112 (first para). 1= written 2= how to make & use 3= bestmode. Utility rqmt (u101) is implied. 2 m2153 :94 Apr 15 Prior art under 102e 2 m2142 :99 Apr 35 Obviousness, Prima facie. Examiner bears the initial burden of factually supporting a prima facie conclusion of obviousness. 2 m2141 :99 Apr 35 Graham Factual Inquiries. 2 m2138.05 :99 Apr 36 Prior art, reduction to practice. Actual or constructive. Constructive requires sufficient disclosure of "how to use and how to make" 2 m2136 :99 Apr 13 Prior art, Pats and SIR and applications in the US only. Defensive pubs not patents. effective at pub date only. u102e 2 m2135.01 :99 Apr 11 Rejections under U102(d). The 4 requirements of 102(d) detailed 2 m2135 :99 Apr 8 Rejections under U102(d). The 4 requirements of 102(d) listed 2 m2133.03 d :99 Apr 9 Prior art, Public Use or On Sale. d = "in this country" Sale or offer to sell originating in the US only. 2 m2133.01 :99 Apr 43 Rejections of CIP applications 2 m2131.03 :99 Apr 33 Ranges, Anticipation. 2 m2127 :99 Apr 43 In use or on sale, obviousness/anticipated rejection 2 m2126.01 :97 Aug 4 In use, on sale, determination of when. 2 m2126 :99 Apr 43 Prior art, "a patent, foreign, or secret". rqmts for being published. 2 m2125.04 :95 May 37 In use or on sale, "in this country defined" u102b 2 m2125.03 :95 May 37 On sale in the U.S. 2 m2114 :98 Aug 10 Claim, functional language. Apparatus claims distinguished from prior art by in terms of structure rather than function. 2 m2112.02 :99 Apr 49. Process Claims 2 m2106 :98 Aug 12 Patentability, computer programs, algorithms, best mode 2 m201.16 :95 May 1 Certificates of correction to perfect claim for priority 2 m201.08 :97 Aug 7 Continuation in Part Applications. may contain new matter. copending. 2 m201.07 :96 Aug 1 Continuation Application. for same invention, copending. 2 m201.06 d :99 Apr 47. Continued prosecution application. abandon previous app, no new matter, same term, same inventors, filing date is date of request of continued prosecution much more. 2 m201.06 b :95 May 8 Continuation, File Wrapper procedure Rule 62 2 m1895.01 :99 Apr 7 Protest, who can protest 2 m1893.01 b1 :99 Apr 10. PCT 30 months to enter submissions. c1.495b 2 m1810 :98 Aug 44. Filing date requirements. PCT treaty 11 2 m1706 :99 Apr 47 Disclosure Documents 2 m1603 :95 May 30 Plant Patent, Elements of appl. 2 m1601 :98 Aug 3. Plant Patent, law, scope, type of plants covered. 2 m1504.10 :98 Aug 10. Design Patent Right of Priority. U119 a-d and U102(e) are 6 months instead of 1 year. U102(e) not applied to designs. 2 m1504.01 a :99 Apr 3. Design patents. Computer generated icons. OK if shown on a computer screen (the required "article of manufacture") 2 m1503.03 :99 Apr 3. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 2 m1503.02 :97 Aug 19 Drawing standards for Design Patents 2 m1503 :94 Apr 8 Design patent, Elements of a Design Patent 2 m1417 :95 May 5 Correction of patent, claim for benefit under u119 2 m1416 :99 Apr 28 Correction, offer to surrender original patent 2 m1411 :98 Aug 50 Correction of patent, form of specification. no new matter. c1.173 2 m1403 :99 Apr 45. Re-issue, Diligence in filing 2 m1302.14 :99 Apr 15 Reasons for allowance 2 m1212 :94 Nov 5 Appeal, remand to board to reconsider. c1.195 2 m1209 :95 May 20 Oral Hearings in Appeal cases. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. c1.194 2 m120 :99 Apr 12 Secrecy orders. 2 m106 :98 Aug 48. Inspection by applicant (inventor). Applicant can inspect unless assignee says no. Even so, if applicant can show why his inspection is necessary to preserve his rights and get access. 2 m101 :95 May 23 Secrecy, National security, foreign filing 2 m1002.02 c :98 Aug 19. Petition to Commissioner, delegation of authority to Group director. 2 deleted :98 Aug 46. Deleted 2 c10.77 :92 Oct Fail to act competently 2 c10.40 a :99 Apr 23. Cannot quit employment except for -- a= withdrawal. b= manditory withdrawal. c= persmissive withdrawal. 2 c10.32 c :99 Apr 17. Advertising, include name 2 c10.18 :99 Apr 23 Signature of agent required. Original reqd xcept for when faxes or copy acceptable. Signature certifies (list = read, authorized, good grounds, not for delay). b= violations disciplined. 2 c10.160 :97 Aug 45 Petition for reinstatement. suspended attorney. requirements for petition. 2 c10.158 a :97 Aug 45 Suspended attorney shall not engage in unauthorized practice . 2 c1.97 e :99 Apr 25. IDS - Information Disclosure Statement, late entry, FEE (d), 2 c1.97 c :99 Apr 21 IDS - Information Disclosure Statement, after final action,allowance, FEE(c) 2 c1.97 b3 :97 Aug 40 IDS - File before mailing date of first office action on merits or whichever of (b)1-3) occurs last. 2 c1.97 b :99 Apr 25. IDS - Information Disclosure Statement. b = requirements list. m609 2 c1.84 :98 Aug 5. Drawing standards 2 c1.81 :98 Aug 11. Drawing, when required, late submission, u113 2 c1.75 d1 :98 Aug 25 Claims, forms of. d1=claim must conform to specification and terms and phrases must have clear antecedents. 2 c1.72 :99 Apr 13. Title short as possible, abstract on separate sheet, abstract not for interpreting claims. 2 c1.71 :99 Apr 45. Specification requirements 2 c1.6 d3 :99 Apr 18. Facimile transmission. d= dont use list 9 items. 2 c1.560 :95 May 38 Re-examination, interviews 2 c1.55 :99 Apr 12. Foreign Priority, claim for 2 c1.530 d :99 Apr 37. Re-examination, no enlargement, no new matter. no ammendment to expired patent. 2 c1.52 d :96 Aug 23 Application format, 2 c1.510 b :99 Apr 22. Re-examination, request for, required parts (b). May include proposed amendments (e) 2 c1.501 :94 Apr 35 Re-examination, Citations of Prior Art, Re-examination, during life of patent 2 c1.48 b :96 Aug 1 Correction of Inventorship m201.03, b= revised claims drop inventor then Petition to drop + statement of his stuff is not claimed, fee. a= new oath, affidavit of no deception by original named inventors, fee, assignee's written consent. c= amending to claim disclosed stuff, but previously unclaimed inventor not named, then same as a. d= Provisionals. add inventor by petition and fee. e= Provisional, removing wrong inventor, petition, fee, written consent of assignee. 2 c1.412 a :96 Aug 23 International, US as receiving office 2 c1.4 b :95 May 19 Application, completeness of 2 c1.362 c4 :99 Apr 26 Maintenance fees for Re-issue. use dates of original. 2 c1.362 b :99 Apr 26 Maintenance fees, Design Patents, Plant Patents, (no fee required) 2 c1.34 :97 Aug 45 Representation, recognition for 2 c1.33 b :98 Aug 35. Correspondence mpep 403 2 c1.323 :95 May 1 Correction, certificate of. Applicant's mistake. u255 2 c1.321 :96 Aug 42 Statutory disclaimer, terminal disclaimer, fee 2 c1.31 a :95 May 48 Represented by Attorney or Agent 2 c1.31 :94 Apr 25 Represented by Attorney or Agent 2 c1.28 b :94 Nov 31 Small Entity, Keep status until issue fee or maint fee due 2 c1.21 h :93 Oct 42 Misc fees 2 c1.20 e-j :92 Oct Fees, post issuance 2 c1.196 b1 :93 Oct 11 Board of appeals and interference, decisions by, scope of, m1214.01 2 c1.195 :94 Nov 5 Affidavits after appeal, not admitted xcpt good for reason 2 c1.194 :95 May 20 Oral Hearings in Appeal cases. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. m1209 2 c1.193 b :96 Aug 41 Appeal, examiner's answer. (to Board of Interferences and Appeals) 2 c1.192 a :96 Aug 11 Appellant's Brief board of appeals and interference. 2 mo. triplicate fee args. later args refused. 2 c1.18 b :99 Apr 40 Patent Issue Fees. deposit account OK 2 c1.18 a :99 Apr 2 Fee schedule - issue fee. certificate of mailing applies. 2 c1.18 :96 Aug 37 Fee schedule - Certificate of mailing, applies 2 c1.178 :97 Aug 28 Re-issue, original patent surrendered 2 c1.176 :95 May 47 Re-issue, examination of, 2 c1.175 :98 Aug 33 Re-issue oath or declaration Pages 600-658 2 c1.173 :95 May 47 Specification of Re-issue Application. form of deletes, adds 2 c1.172 a :96 Aug 26 Reissue, who signs, who owns. 2 c1.17 p :99 Apr 25. Fee for late IDS 2 c1.16 :98 Aug 20 Fees, National application filing 2 c1.154 :96 Aug 28 Specification, Design patents, arrangement of, format 2 c1.153 :98 Aug 29 Design patent, -- title, oath, description, claim 1503 2 c1.144 :93 Apr 40 Restriction, petition from requirement of, No Fee 2 c1.143 :99 Apr 2. Restriction, reconsideration of requirement. No Fee. 2 c1.14 a :97 Aug 35 Application, held in secrecy u122 a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation. 2 c1.137 a :98 Aug 45. Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. 2 c1.136 a2 :97 Aug 39 Extension of time to respond, date of response is date when response, petition, and fee have been filed. 2 c1.135 :98 Aug 37. Abandonment for failure to respond within time limit. m710.02 2 c1.121 f :94 Nov 47 Amendments in Re-examination, method 2 c1.12 :93 Oct 20 Assignment records open to public 2 c1.117 :96 Aug 35 Amendment required for ---- reasons 2 c1.111 b,c :93 Apr A3 Further Consideration -- Reply by applicant or owner. 2 c1.103 :93 Oct 41 Examinations, suspension of examination. L 11 8 2 c1.102 c :99 Apr 5 Make special, advancement out of turn, why. list in m708.02 2 ------ :94 Apr A0 Test # Ax are afternoon session questions 1 u371 c :99 Apr 7 National Stage filing, commencement. a= receipt from International Bureau of int app with amendments. Int search Rpt, INt prelim search rpt, prelim exam rpt, desig US. 1 u365 b :94 Apr 29 Priority, benefit of, International Stage, u119 1 u304 :94 Apr 46 Re-examination ordered by Commissioner 1 u302 :94 Apr 46 Re-examination, request for 1 u262 :92 Apr Joint owners, accountability, no need for. 1 u256 :93 Apr 7 Correction of inventor 1 u255 :95 May 1 Certificate of correction, Applicant's mistake, no new matter, fee reqd. 1 u254 :92 Apr Certificate of correction, PTO mistake. c1.322 1 u172 :98 Aug 8. Right of Priority, Design patents. 6 mo for u119(d) ; 0 for u119(e) 1 u171 :98 Aug 30 Design patents def. new, original, AND ornamental design for an article of manufacture .. patentable. 1 u162 :93 Oct 28 Plant Patent, description, claim 1 u154 a :99 Apr 33. Filing, contents. a=general b=term extension c=continuation 1 u145 :92 Oct Civil Action to obtain patent. court may rule for issuance. 1 u144 :92 Oct Decision on appeal (to courts), court's instruction to PTO 1 u135 :93 Oct 33 Interference 1 u119 d :97 Aug 42 Priority. Inventor's certificate. 1 u117 :92 Oct Inventor, Death or incapacity of Inventor 1 u114 :93 Oct 37 Models and specimens 1 u111 b7 :99 Apr 42 Provisional apps have no right of priority from earlier filings. 1 u111 b4 :99 Apr 18. Provisional app filing date. b4=prov. app filing date issued when Spec and drawing received by PTO. This if for filing date, not necessarily an effective filing. 1 u111 b2 :98 Aug 31 Application is made by inventor. (a)=general provisions. (b)=Provisional Application laws. (b1a)=by inventor (b2)=no claim rqd in provisional. 1 u111 b1A :98 Aug 31 Application is made by inventor. (a)=general provisions. (b)=Provisional Application laws. (b1a)=by inventor 1 u111 a :96 Aug 23 Patent Application, regular, required contents of, filing date 1 u111 :92 Oct Application for Patent. contents, oath, etc. boilerplate stuff 1 u100 b :93 Apr 10 Definitions "process" (b) 1 u100 :96 Aug 23 Definitions 1 u042 d :96 Aug 28 Office funding, fees. Commish may refund (d) 1 u041 h :99 Apr 6 Small entity reduced 50% fees listed in (a) and (b). 1 u041 e :96 Aug 4 Fees, Commissioner may waive. No fees for Pat copies provided under u132 (rejection notices). (e) 1 u041 a1B :96 Aug 29 Fees for excess claims (a1b) 1 u041 a1 :97 Aug 46 Fee structure. fee laws. 1a = filing fee. 1 u032 :93 Apr 20 Suspension of License 1 pr47.1 c :95 May 4 WRONG REFERENCE CITED BY PTO 1 pr04.9 :93 Oct 22 International Apps. Desig of States (rule 4.9) 1 pr04.10 b :94 Apr 29 PCT priority claim. Rule 4.10 1 pr02.1 :94 Nov 14 Definitions 1 pctR47.1 c :98 Aug 49. Communication to Designated Offices. International Search Report goes to Designated offices and/or applicant if requested. PCT A20 1 pctA20 :98 Aug 49. Communication to Designated Offices. International Search Report goes to Designated offices and/or applicant if requested. PCT R 47 1 pct30 :94 Apr 41 PCT Confidentiality, PCT art 30. m110 1 pct11 (13c) :94 Nov 14 Filing Date, requirements to get one. page T-4 1 pct09 :94 Nov 14 Applicant, PCT. Applicant is not necessarily the inventor 1 pct08(2)a :94 Nov 50 Priority, PCT apps. within 12 mo of filing US app. 1 pct T 31 6a :97 Aug Treaty article 31 has no section 6. 1 pct T 11 :97 Aug 27 International application, required parts. 1 none :99 Apr 31. no paragraph listed for Q 31. 1 m818.03 e :99 Apr 2. Restriction, Must traverse to preserve right of petition. 1 m818.03 :98 Aug 17. Division, linked claims, See also 818.03d 1 m806.04 i :94 Nov 30 Claims, Generic 1 m804.03 :93 Apr 9 Common owner, different inventors 1 m803.02 :94 Apr 18 Markush, rejection of 706.03y 1 m802 :92 Apr Restrictions, Divisions U121, c1.141 1 m724.04 a :93 Oct 32 Trade secrets 1 m724.03 :93 Oct 32 Trade secrets 1 m724.02 :93 Oct 32 Trade secrets 1 m718 :98 Aug 4. Prior art, commonly owned patent, Affidavit to overcome. 1 m716.09 :97 Aug 19 Disclosure, sufficiency of. m2164 - 2164.04 b 1 m716.02 b :98 Aug 29. Unexpected Results, Evidence Must Show. .02(a) = Evidence must show. .02(b) = Burden is on Applicant 1 m716.02 a :99 Apr 46. Unexpected Results, Evidence must shoe. .02(a) = Evidence must show. .02(b) = Burden is on Applicant 1 m716.01 b :99 Apr 14. Affidavit of non-obviousness. see 716.01(a) also. 1 m715.07 c :99 Apr 13 Afidavit that the invention was done in US, NAFTA, or WTO countries. u104 1 m715.01 b :99 Apr 29 Referemce patents have common assignee. 1 m714.19 (11):96 Aug 35 Amendment to be denied (list of). No insults, Group director decides (11) 1 m714.19 (10):96 Aug 35 Amendment to be denied (list of). Drawings, No new matter. not to be entered. (10) 1 m714.19 (1) :93 Oct A3 Amendment to be denied (list of). 1 m714.15 :94 Apr A9 Amendment received in Examining Group after notice of allowance. 1 m714.14 :94 Apr 45 Amendment after allowance of all claims. 1 m714.09 :95 May 16 Amendment before first office action 1 m714.04 :94 Apr A6 Amendment to claims with no attempt to point out patentable novelty. 1 m714.01 d :97 Aug 13 Amendment, improper signature(s) on,. not admitted. definitions of proper sig. d = enter if signed by applicant instead of atty. 1 m713.09 :97 Aug 49 Interviews after final rejection. One permitted, second is possible. Agenda in writing for disposal or clarification for appeal. 1 m713.01 :94 Nov 48 Interviews, general policy c1.133 1 m711.03 :95 May 15 Abandonment, reviving unintentional abandoned app. c1.137 1 m711.02 b :92 Apr Abandonment by termination of proceedings. -02b 1 m711.02 a :92 Apr Abandonment for insufficiency of response. -02a 1 m710.04 a :91 Aug Claims, copying of, causing two periods running together. 1 m710.02 d :96 Aug 8 Shortened Statutory vs time limit periods 1 m710.02 c :93 Apr 24 Time to respond, statutory period shortened c1.136 1 m710.01 e :92 Oct Time to respond, Extensions. Page 700-46 1 m710 :93 Apr 46 Response, period for, 1 m708 :92 Apr Order of examinations (priority) c1.101 1 m707.07 f13 :96 Aug 25 Final Rejection, time for response, interviews, no fee for 1 m707.07 e :98 Aug 11. Final Rejection, Withdrawal, General. New convincing facts presented. Amendments entered. New grounds require approval of supervisory primary examiner. 1 m706.07 f8 :96 Aug 25 Final Rejection, time for response, examiner's amendment 1 m706.07 f1 :96 Aug 25 Final Rejection, time for response 1 m706.07 d :98 Aug 11. Final Rejection, Withdrawal of Premature. 1 m706.03 u :99 Apr 39 Rejection by disclaimer (??). applicant fails to: a= make suggested claims for interference. b= copy claim when suggested. c= timly respond to appeal. 1 m706.03 d :97 Aug 50 Rejection under u112, second paragraph. go to m2171 - m2174. u112 1 m706.03 a :93 Apr 10 Non-statutory subject matter in application 1 m706.03 :92 Oct Rejection not based on Prior Art 1 m706.02 j :96 Aug 30 U103 rejections 1 m706.02 f :96 Aug 44 U102e rejections 1 m706.02 c :95 May 35 Rejections, Common ownership, establishing 1 m706 :92 Apr Rejection of Claims c1.106 1 m609 b2 :99 Apr 25. IDS - Information Disclosure Statement. May be filed before final action or notice of allowance mailed. (not on day of mailing) 1 m609 b1 :99 Apr 25. IDS - Information Disclosure Statement. file before first office action or 3 mo from filing. 1 m608.04 c :93 Oct 47 Amendment, review of examiner's finding of new matter 1 m608.03 :93 Oct 37 Models, exhibits, specimens 1 m608.02 k :94 Apr 12 Drawings, transfer of drawings to Re-issue 1 m608.02 i :92 Oct Drawings from prior applications. c1.88 1 m608.01 v :98 Aug 25 Trademarks, use of. trade names ok. Capitalize trademarks. Avoid in titles. 1 m608.01 q :94 Apr 39 Substitute or rewritten specification m714.20 1 m608.01 o :98 Aug 25 Claim Terminology. claim words supported by spec. avoid synonyms or confusing variety of terms. 1 m608.01 L :98 Aug 2 Claims, Original,. Applicant may rely on original claims as disclosure for amendment. 1 m608.01 i :96 Aug 29 Specification (i)= claims c1.75 1 m608.01 a :99 Apr 24. Filing date, requirements to obtain. Description, drawings, claim, inventors named. 1 m606.01 :94 Apr 43 Title, Change of required by Examiner do it! 1 m605.04 b :94 Apr 19 Oath by all the inventors, facsimile copies filed. pg 600-21 1 m605.02 :93 Apr A3 Applicant's residence 1 m605.01 :93 Apr A3 Applicant's citizenship, must state. u115 1 m605 :93 Apr 4 Applicant, who etc. c1.41 1 m602.05 :94 Nov 36 Oath, date of execution, lapsed, too old. 3 mo. 1 m602.02 :93 Oct 23 Oath, new or substitute 1 m601.02 :93 Apr A3 Attorney, power of, authorization 1 m601.01 a :99 Apr 21 Filing non-provisional under u111(a) c1.53 1 m509 :93 Oct 42 Fees, payment of see for list of types 1 m506.02 :98 Aug 5. Filing date, Review of Refusal to Issue. Filing date when office receives spec, all inventors, drawings, claim for provisional and regular.. 1 m506 :92 Apr Completeness of original application c1.53 1 m503 :96 Aug 28 Serial Number and Filing receipt. c1.54 1 m501 :95 May 19 Correspondence. Each Application file should be complete in itself. 1 m410 :99 Apr 19. Search, no reqirement to make one relative to filing an application. 1 m409.03 b :92 Apr No inventor available. 1 m409.03 a :97 Aug 46 Joint inventor unavailable. Prove unavailable or refuses (see 409.03 d) last known address of unavailable inventor must be supplied. 1 m409.03 :94 Apr 17 Inventor, unavailability of c1.47 1 m409.01 a :92 Oct Prosecution by Administrator or Executor u117, c1.42 1 m409.01 :99 Apr 39. Death of Inventor or joint inventor terminates power of attorney. need now P of A from heirs. 1 m403.01 :92 Apr Correspondence with associate attorney c1.33 1 m402.07 :92 Oct Power of attorney, revocation by assignee. c1.36, c3.71 1 m309 :91 Aug Employees of PTO, restriction on. 1 m302.02 :94 Apr 47 Assignment document, translation. c3.26 1 m302.01 :94 Apr 47 Assignment document must be original or true copy. c3.24 1 m2504 :99 Apr 26 Maintenence fees. 4,8,12 yes after grant. None for plants and designs. c1.362 1 m2403 :99 Apr 44. Deposit of Biological samples. sometimes required for u112 enablement. deposit rules are c1.801-1.809. 1 m2308.01 :98 Aug 39. Interference with a patent. patent has earlier filing date. 1 m2304 :93 Oct 33 Interference, applicant requests inter between apps 1 m2300-2303 :96 Aug 7 Interference Proceedings 1 m2276 :95 May 20 Oral Hearings in Reexamination cases. fee. One month. 1 m2272 :94 Nov 10 Final Action in Re-examination, actions after final action 1 m2271 :94 Nov 10 Re-examination, Final Action 1 m2251 :94 Apr 46 Re-examination, Reply by requester. c1.535 1 m2249 :94 Nov 43 Re-examination, patent owner's statement c1.530 1 m2247 :94 Apr 49 Re-examination, request denied 1 m2242 :94 Apr 46 Re-examination, criteria for deciding request. 1 m2239 :94 Apr 49 Re-examination ordered by Commish's initiative. 1 m2234 :99 Apr 37. Re-examination, Amendment, entry of. Bracket and underline method only. No new matter, no enlargement of scope. c1.121 1 m2223 :95 May 32 Agent withdraws. in reexamination proceedings. 30 days to go limit m402.06 1 m2217 :93 Oct 26 Re-examination, statement of prior art u302 1 m2212 :94 Apr 46 Re-examination, persons who may file a request. u302, c1.510a 1 m2210 :99 Apr 22. Re-examination, request for. u302, c1.510 1 m2205 :97 Aug 30 Content of prior art citation. Limited to patents and printed publications. 1 m2204 :97 Aug 30 Time for filing prior art citation. patent term + 6 years. Limited during reexamination proceedings. 1 m2188.02 :94 Apr 15 Common ownership by different inventors. 1 m2188 :94 Nov 28 Ownership at time of invention, establishing 1 m2186 :94 Apr 50 U103 guidelines, examples. 1 m2181 :98 Aug 45 Means plus function claim described. 1 m2174 :97 Aug 27 USC112, first and second paragraph relationship. 1 m2173.05 r :97 Aug 14 Claim, omnibus. are indefinite. u11 m703.06 1 m2173.05 L :97 Aug 11 Claims, Incomplete. omits essential element or relationship. Example given. 1 m2173.05 k :97 Aug 24 Claims, aggregation, rejection on. lack of co-operation between elements. 1 m2173.05 i :98 Aug 5 Negative Limitations in Claims. Not inherently ambiguous, often is. If recited negatives limitations are definite, claim is definite. 1 m2172.01 :98 Aug 47 Essential Matter, unclaimed. A claim that fails to include what has been described in the spec as essential matter, may be rejected under U112. 1 m2165.03 :98 Aug 16 Best Mode, Lack of,. Assume best mode is disclosed unless there is evidence to the contrary. BM is at filing. enquiry list here. 1 m2165.01 :99 Apr 34 Best Mode, Relevant Considerations. a= what is the invention. b= specific examples not rqd. c= designation of best mode not rqd. d= updating best mode not reqd. e= defect in best mode not cured by new matter. 1 m2164.07 :97 Aug 13 Enablement, how to use disclosure. 1 m2164.05 b :98 Aug 16 Enablement, determination. (a)=enabled as of filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one. 1 m2164.05 :98 Aug 26. Enablement. a = specification must be enabling as of the filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one. 1 m2164.02 :97 Aug 8 Working example. Functional example not required. 1 m2164.01 a :98 Aug 36 Enablement. Undue Experimentation factors. List of 8 factors. 1 m2163.06 c :96 Aug 24 New matter, at last a definition!!! u132, u251 1 m2163.05 b :98 Aug 46 Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK) 1 m2163.05 a :97 Aug 3 Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK) 1 m2163.04 b :96 Aug 35 Description of invention 1 m2163 :99 Apr 21. Specification. Written description required. 1 m2150 :94 Nov 43 Re-examination, Amendment by patent owner c1.121 1 m2146 :99 Apr 29 Prior art. "By another" common ownership overcomes. u103(c) U102(f), u102(g) 1 m2144.06 :97 Aug 22 Prior art, combining equivalent prior art known for the same purpose. 1 m2144.05 :98 Aug 2 Obviousness of Ranges. (a)= No overlapping with Prior Art (includes near overlap if obv to skilled artisan) (prima facie obv.) . see 2131.03 for examples. (b)=various concentrations or temps usually obvious, unless shown critical to claim. Optimization of P.Art not patentable. 1 m2144.04 :99 Apr 7. Obviousness, legal precedence. u103 1 m2143.02 :98 Aug 39 Prior Art. Obviousness requires only a reasonable expectation of success. 1 m2138.03 :97 Aug 4 Prior art, abandoned, suppressed or concealed ref. u102g 1 m2137.01 :99 Apr 10 Inventorship, defined for U102(f) 1 m2137 :99 Apr 10 Rejections under U102(f). Applicant is not the inventor. 1 m2136.04 :98 Aug 46 Rejections under U102(e) Inventors, Different. "by another" definition. 1 m2136.03 :98 Aug 46 Rejections under U102(c) Reference Date, Critical. in U102(c) cases. (foreign references) 1 m2133.03 e1 :96 Aug 40 Commercial exploitation 1 m2133.03 e :96 Aug 40 Experimental use permitted 1 m2133.02 :96 Aug 19 Rejections based on publications and patents 1 m2132.01 :97 Aug 4 Prior art, Publications. u102a 1 m2131.05 :98 Aug 10 Non-Analogous Art anticipating a claim. Do not work for 102 rejections. 1 m2131.04 :99 Apr 15. Ranges, Anticipation. 1 m2131.01 :97 Aug 9 Prior art, multiple references. 102 rejections. 1 m2128.04 :92 Apr Experimental activity, testing. 1 m2127 a :98 Aug 11 Patent Apps as Prior Art. (a)=abandoned apps P.Art only if disclosed to public. (b)=Canceled matter. Rejection cannot rely on canceled matter cuz not in issued patent (made public). 1 m2125 :98 Aug 42. Prior Art, Drawings as, . If they are clearly shown. Proportions shown are not are not evidence of actual proportions. 1 m2122 :98 Aug 42. Prior Art, Discussion of Utility in, . Utility need not be disclosed in reference. 1 m2121.04 :98 Aug 42. Enabling Prior Art, what constitutes, in apparatus and articles. 1 m2121.02 :98 Aug 42. Enabling Prior Art, what constitutes, in compounds and compositions. 1 m2115 :97 Aug 21 Claims on workpiece rather than apparatus. Does not confer patentability. 1 m2112 :98 Aug 22. Inherency, Rejections Based on,. 1 m2111.01 :98 Aug 6 Claim language, words defined in their "plain meaning" (by skilled in art) unless defined in specification. 1 m2107.02 c :98 Aug 38 Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)= 1 m2107.02 a :98 Aug 38 Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)= 1 m2107.02 :98 Aug 31. Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)= 1 m2107.01 bi :98 Aug 31. Lack of Utility. (b)=statement of utility should be in spec. A statement of general utility not acceptable. 1 m210.11 :97 Aug 15 Continuity between applications: filing dates. common inventor 1 m203.07 :95 May 15 Abandonment. Failure to pay issue fee. 1 m201.15 :99 Apr 13 Right of priority. Overcoming references. 1 m201.12 :94 Apr 22 Assignment in divs and conts carries title (CIP does not) m306 1 m201.06 a :94 Nov 18 Continuations, c1.60 1 m201.06 :92 Oct Continuation, Division Rule 60 (1.60) 1 m201.04 :99 Apr 32 Parent Application defined. Provisionals not a "parent" 1 m2004 :91 Aug IDS - aids to compliance with duty of disclosure 1 m2002.01 :96 Aug 15 IDS - who makes the disclosure. c1.56 1 m2001.06 :96 Aug 15 IDS - sources of info. c1.56 1 m1901.03 :94 Nov 15 Protest, how submitted, contents, completeness 1 m1901.02 :94 Nov 15 Protest, Information which can be relied upon in a protest 1 m1901.01 :94 Nov 15 Protest, who can protest 1 m1893.03 c :94 Apr 29 PCT priority date, claim for US National Stage ape. 1 m1834.01 :99 Apr 24 No fax for Internatonal apps filed in US. 1 m1805 :99 Apr 24 International filing, where to. 1 m1702 :96 Aug 1 Restrictions on former examiners 1 m1607 :99 Apr 16 Plant specimins. do not submit unless asked by examiner. 1 m1512 III :99 Apr 46 1 m1512 II :99 Apr 46 1 m1512 :99 Apr 3. 1 m1504.05 3b :93 Apr 8 Double patenting and restriction in design patents 1 m1504.03 a.4:98 Aug 10. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 1 m1504.03 a.2:98 Aug 10. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 1 m1504 b :98 Aug 10. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 1 m1504 :98 Aug 18. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 1 m1502.01 :98 Aug 29 Design Patent, Distinction between design and utility 1 m150 :93 Oct 19 DOE, NASA statements to , c1.14 1 m1480 :98 Aug 21. Correction, Certificates of, Office Mistake. 1 m1451 :94 Apr 38 Correction of patent, divisional Re-issue apps. c1.177 1 m1450 :94 Apr 38 Correction of patent, restriction and election of species 1 m1445 :98 Aug 14 Re-issue Apps Examined in Same Manner as Original Apps. Subject to any and all rejections. c1,176 1 m1440 :95 May 47 Re-issue, examined in same manner as original applications c1.176 1 m1430 :99 Apr 28 Re-issue files open to public. Notice of filing in Gazette. 1 m1418 :93 Apr 7 IDS and other information 1 m1414.02 a :93 Apr 39 Correction, information considered under c1.175 1 m1413 :94 Apr 12 Drawings, correction of patents c1.174 1 m1412.02 :91 Aug Re-issue, claims must be for same general invention 1 m1411.01 :94 Apr 38 Certificate of correction, incorporate in re-issue copy 1 m1410 :99 Apr 45. Re-issue application, contents of. Re-issue oath rqd. ok to file oath or fee late, 1 m1401 :99 Apr 11. Re-issue, requirments to file. error & no deception, surrender patent, fee. no new matter. for invention as disclosed in original patent, for unexpired portion of term. may be divided into several re-issues. 2 year window for enlargment of scope of claims. By assignee of whole interest if not enlarging. 1 m1309.01 :99 Apr 33. Patent term and extensions. 20 years from earliest priority. Extensions for delays. 5 years max. 1 m1309 :99 Apr 33. Issue of patent 1 m1308 :94 Apr 27 Withdrawal from issue c1.313 1 m1306.01 :94 Apr 2 Deferred issuance of patent c1.314 1 m1302.04 :94 Apr 34 Amendment, examiner's amendment and changes 1 m130 :99 Apr 12 Secrecy order cases, examination of. 1 m1216.02 :92 Oct Appeal, Civil suits under u145 1 m1215.04 :94 Apr 16 Appeal, withdrawal or dismissal of appeal. 1 m1215.03 :94 Nov 34 Appeal, withdrawal of some claims 1 m1215.02 :93 Apr 6 Appeal, withdrawal or dismissal of appeal. 1 m1215.01 :92 Apr Appeal, withdrawal or dismissal of appeal. 1 m1214.07 :98 Aug 19. Appeal, reopening prosecution. not a right. amendment placing case for allowance should be entered. 1 m1214.06 :93 Apr 6 Appeal, examiner sustained 1 m1214.05 :94 Nov 34 Appeal, cancellation of withdrawn claims 1 m1213.02 :93 Apr 21 Appeal, statement to rejection of allowed claim 1 m1208.03 :95 May 50 Reply Brief in Appeal. Directed only at new points of argument c1.193 1 m1201 :92 Oct Appeal, distinction between board and commissioner 1 m115 :93 Apr 16 Secrecy, orders, review of. also security of property rights 1 m1105 :91 Aug Og 68 (m1100 is now m2300, interference proceedings) 1 m110 :94 Apr 41 Secrecy, National Security, international apps. pct 30 1 m1096 :91 Aug Og 39 (aint no such m1096) 1 m106.01 :98 Aug 48. Rights of Assignee of Part Interest. Part interest gets right to inspect. 1 m104 :96 Aug 21 Inspection of applications, when allowed 1 m1002.02 c4c:96 Aug 43 Petition to Commissioner, Delegation to Group Director, . holding of abandonment (c4c) 1 m1002.02 c4b:93 Oct A3 Petition to Commissioner, delegation of authority to Group director. 1 m1002.02 a :93 Oct A7 Petition to Commissioner, delegation of authority to Office of special programs. 1 m1002.02 :93 Apr 25 Petition to Commissioner, delegation of authority to Group director. 1 m1002 :92 Oct Petition to Commissioner and delegations of authority by commissioner. c1.181 1 c5.5 a :91 Aug Secrecy Orders, Permit to disclose or modification of secrecy order. u182 1 c5.3 :91 Aug Secrecy Orders, Prosecution of application while under secrecy orders. m120 1 c5.15 :94 Apr 40 Export License, scope of, 1 c5.12 :96 Aug 12 Export and foreign filing license, Petition for license implied within filing of application. 1 c5.11 e 1 :96 Aug 12 Export and foreign filing License, not rqd for foreign made inventions 1 c5.11 :94 Apr 40 Export and foreign filing License 1 c3.81 :97 Aug 23 Issue patent to assignee if assignment is made before issue fee paid. 1 c3.71 :98 Aug 48. Assignee, prosecution by, Assignee of entire right may conduct prosecution and exclude prior assignees and/or inventors. 1 c10.84 a :92 Oct Zealously representation of client, do it by -c5.11 :93 Apr 16 Export and foreign filing license 1 c10.66 :93 Oct 30 Continued employment, refusing. 1 c10.64 a3 :92 Apr Acquisition of interest in application. 1 c10.57 :93 Oct 30 Preservation of confidences and secrets of client. a= definitions. b= list of dont's. c= list of can do's. d= reasonable care. 1 c10.40 c1 :93 Apr 50 Permissive withdrawal from case 1 c10.40 b4 :99 Apr 23. Cannot quit employment except for -- a= withdrawal. b= manditory withdrawal. c= persmissive withdrawal. 1 c10.40 a,b4 :94 Apr 31 Cannot quit employment except for -- a= withdrawal. b= manditory withdrawal. c= persmissive withdrawal. 1 c10.36 b8 :96 Aug 20 Fees for service flat/contingent (b8) 1 c10.34 b :96 Aug 20 Advertising, permitted wording in advertising, agent (b) 1 c10.32 :96 Aug 20 Advertising see also 10.33, 10.34, 10.35 1 c10.31 c :96 Aug 20 Trademark practice forbidden to agents 1 c10.24 b :94 Nov 32 Misconduct, Ethics, report non-privileged knowledge of, 1 c10.23 c7 :95 May 43 Misconduct, withholding info about copying claims (c7) 1 c10.23 c2ii :94 Nov 12 Misconduct, give or contribute to false info to Office 1 c10.23 C16 :94 Nov 32 Misconduct, Ethics, report non-privileged knowledge of, 1 c10.18 b :99 Apr 3 Signature violations bring big trouble from 10.23(c)(15) 1 c10.18 a1 :96 Aug 20 Signature of agent required. Correspondence read by Practitioner (a1). Original reqd xcept for when faxes or copy acceptable. Signature certifies (list = read, authorized, good grounds, not for delay). b= violations disciplined. 1 c10.18 a :99 Apr 19. Signature of agent required. Original reqd xcept for when faxes or copy acceptable. Signature certifies (list = read, authorized, good grounds, not for delay). b= violations disciplined. 1 c10.11 :96 Aug 1 Roster of Agents/Atty. Removal from 1 c10. :98 Aug 47. Ethics chapter 1 c1.97 d 2 :96 Aug 14 IDS - Information Disclosure Statement, late entry, FEE (d), 1 c1.96 b :93 Oct A1 Computer listings as an appendix 1 c1.96 a1 :93 Oct 37 Computer listings as drawings 1 c1.94 :93 Oct 37 Models, return of 1 c1.93 :93 Oct 37 Specimens of compositions of matter 1 c1.9 e :96 Aug 4 Small entity, Definitions (e) 509.02 1 c1.84 b :95 May 22 Drawing standards. photographic submissions. m608.02 1 c1.83 :93 Oct 6 Drawings, content of 1 c1.81 c :94 Nov 46 Drawing, when required, late submission, u113 1 c1.8 a2 :93 Apr 5 Certificate of mailing mpep 512 don't-use list 1 c1.8 a1 :99 Apr 40 Certificate of mailing mpep 512 use-for list 1 c1.78 a2 :99 Apr 18. Priority, claiming benefit. Priority reference apps must be in first sentence. Co-pending 1 c1.777 :94 Apr 2 Extension of patent terms for medical devices. 1 c1.7 :93 Oct 4 Time, ending on Saturday, Sunday, Holiday 1 c1.67 b :94 Nov 36 Oath, supplemental, required 1 c1.637 c3 :97 Aug 22 Interference. Content of motions. (c3)= prelim motion seeking to designate an app or patent claim to correspond to a count shall: ID the claim and count and show the claim defines the same patentable invention as another claim ... not disputed. 1 c1.607 :95 May 43 Interference, request by applicant 1 c1.604 b :93 Oct 33 Interference, request for 1 c1.6 d6 :99 Apr 12 Facimile transmission. d= dont use list 9 items. 1 c1.6 a3 :98 Aug 7. Receipt of letters and papers, handling by PTO, Official dating. a= Express mail filed next day not on Sat, Sun, Hol. (1.6 a2) b= post office pouch. c= hand delivered. d= fax e= postoffice interruptions. 1 c1.6 a2 :96 Aug 47 Receipt of letters and papers, handling by PTO, Official dating. a= Express mail filed next day not on Sat, Sun, Hol. (1.6 a2) b= post office pouch. c= hand delivered. d= fax e= postoffice interruptions. 1 c1.6 :92 Oct Receipt of letters and papers, handling by PTO, Official dating. a= Express mail filed next day not on Sat, Sun, Hol. (1.6 a2) b= post office pouch. c= hand delivered. d= fax e= postoffice interruptions. 1 c1.59 :96 Aug 28 Filed papers not returned. 1 c1.58 a :98 Aug 25 Re-examination, interviews 1 c1.56 d :93 Apr 29 Disclose, duty to disclose, by others 1 c1.56 c :93 Oct 2 Disclose, duty to disclose, by whom 1 c1.56 a2 :96 Aug 15 Disclose, duty to disclose, by whom, closest person (a2) 1 c1.552 :95 May 14 Reexamination, scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. m2258 1 c1.55 a :96 Aug 3 Foreign Priority, claim for 1 c1.535 :94 Apr 46 Re-examination, reply by requester to owner's statement. 1 c1.530 :94 Nov 43 Re-examination, Statement, Amendment by owner. 1 c1.53 f :99 Apr 45. Filing date & application #. International app. Int App designating US is filed per art11(3) xcept 102(e). 1 c1.53 e :98 Aug 36. Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01 1 c1.53 d2 :99 Apr 47. Filing date & application # Provisional App. missing fee rules for action. 1 c1.53 d1 :98 Aug 27. Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01 1 c1.53 c3 :98 Aug 10. Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01 1 c1.53 b2 :97 Aug 15 Filing Date, serial #, for Provisional App. b2= Spec per 112. Drawings, Inventors (alluvthem), cover sheet, mpep 506 1 c1.520 :94 Apr 49 Re-examination at initiative of commissioner 1 c1.52 c :93 Oct 40 Application format, 1 c1.515 c :94 Apr 49 Re-examination, req 3 mo. reply 1 mo. all claims re-examined. 1 c1.515 :94 Apr 46 Re-examination, req 3 mo. reply 1 mo. all claims re-examined. 1 c1.510 e :96 Aug 49 Re-examination, request for, required parts (b). May include proposed amendments (e) 1 c1.51 c :99 Apr 32 Application, contents of. a= contents. b= IDS encouraged. No IDS in a provisional. c= Applicants can setup and use deposit accounts for 1.16-1.18 fees. 1 c1.495 b :99 Apr 10. National Stage, provide within 30 months International app, national fee, in English, Oath 1 c1.48 d :99 Apr 32 Correction of Inventorship, Provisionals, error. d= req. petition of no intention of deception, + Fee. 1 c1.47 b :92 Apr Joint inventors, reluctance of, u116 1 c1.47 :94 Apr 17 Joint inventors, reluctance of, u116 1 c1.451 a :94 Apr 29 International priority 1 c1.45 b :93 Apr 4 Joint inventors 605.07 1 c1.432 c :93 Oct 22 International Apps. Designation of states, payment of fees 1 c1.431 b,c :94 Apr 6 International application requirements 1 c1.431 a :93 Apr 45 International application requirements 1 c1.42 :92 Oct Inventor, Death of inventor 1 c1.41 :94 Apr 19 Applicant, Name format m605.04b 1 c1.362 d :93 Apr 41 Maintenance fees, schedule of due dates 1 c1.362 :91 Aug Maintenance Fees 1 c1.36 :97 Aug 38 Agent withdraws or revocation of power of attorney. Commissioner must authorize withdrawal c1.613(d) for withdrawal. m402.06 1 c1.35 a :98 Aug 36. Representation, recognition for 1 c1.33 A :92 Apr Correspondence mpep 403 1 c1.33 :96 Aug 41 Correspondence mpep 403 1 c1.322 :92 Apr Correction, certificate of PTO mistake. u254 1 c1.316 :93 Apr 40 Issue fee, failure to pay abandons patent. (3 mo after notice of allowance). May be rectified. 1 c1.314 :94 Apr 2 Issuance of patent, (due course unless -- list) m1306.01 1 c1.313 :94 Apr 27 Withdrawal from issue (list of reasons and conditions) 1 c1.311 a :98 Aug 36. Notice of Allowance of issue. time to send in fee. 1 c1.311 :92 Oct Notice of Allowance of issue. time to send in fee. 1 c1.3 :96 Aug 35 Business to be conducted with decorum and courtesy 1 c1.291 a :94 Nov 15 Protests by Public against pending applications 1 c1.291 :92 Oct Protests by Public against pending applications 1 c1.28 a :94 Nov 21 Small Entity, Failure to establish 1 c1.27 c :94 Nov 31 Small Entity, oath, affidavit 1 c1.26 :96 Aug 28 Post Issuance Fees, when 1 c1.25 b :91 Aug Deposit Accounts 509.01 1 c1.248 a4 :97 Aug 20 Service of papers. by first class mail. Date of mailing is date of service. 1 c1.248 a3 :97 Aug 20 Service of papers. by leaving a copy at the person's place of residence with a qualified resident. 1 c1.248 a2 :97 Aug 20 Service of papers. by leaving a copy at the usual place of business with someone in his employment. 1 c1.248 a1 :97 Aug 20 Service of papers. by delivering a copy to the person served. 1 c1.248 a :97 Aug 20 Service of papers. on whom and how. 1 c1.20 e :96 Aug 34 Fees, post issuance, maintenance (e) 1 c1.20 a :99 Apr 6 Fees, post issuance, certificate of correction. 1 c1.197 b :97 Aug 25 SIR - Sirs are published. (b) is required statement in an SIR. u157 1 c1.197 :93 Apr 6 Appeal, action following decision. 1 c1.196 f :92 Oct Board of appeals and interference, decisions by, scope of, m1214.01 1 c1.196 d :93 Apr 21 Board of appeals and interference, decisions by, scope of, m1214.01 1 c1.196 :93 Oct A2 Board of appeals and interference, decisions by. m1214.01 1 c1.193 b2ii :98 Aug 33. Appeal, examiner's answer. (to Board of Interferences and Appeals) 1 c1.193 b2i :98 Aug 33. Appeal, examiner's answer. (to Board of Interferences and Appeals) 1 c1.193 b1 :98 Aug 33. Appeal, examiner's answer. (to Board of Interferences and Appeals) 1 c1.193 a2 :98 Aug 32. Interference Appeals, Examiner's answer 1 c1.193 a :98 Aug 32. Interference Appeals, Examiner's answer 1 c1.193 :92 Apr Interference Appeals, Examiner's answer 1 c1.192 c6iv :91 Aug Appellant's Brief board of appeals and Interference. specify errors in rejection reasons. 1 c1.192 c5 :93 Oct A7 Appellant's Brief. board of appeals and Interference. all claims stand/fall together. unless argued separately 1 c1.192 c :99 Apr 38. Appellant's Brief board of appeals and Interference. Content and order (except by pro-se applicant) 1 c1.191 b :98 Aug 35. Appeal to board of Appeals and Interferences u134 1 c1.182 :98 Aug 21. Questions not specifically provide for (in the rules?). Commissioner decides on merits. FEE RQD 1.17h 1 c1.181 f :96 Aug 32 Petition to commissioner. timeliness(f) 1 c1.179 :91 Aug Notice of Re-issue application (inserted in original application file. 1 c1.177 :94 Apr 38 Re-issue in divisions 1 c1.174 :94 Apr 12 Re-issue, drawings. 608.02k Transfer if no change. New Set rqd if any dwg needs change. 1 c1.171 :95 May 5 Re-issue, Application, title report, surrender offer, fee 1 c1.17 i :99 Apr 5. Fee schedule for petitions to commissioner. 1 c1.17 h :99 Apr 6 Fee schedule for petitions to commissioner 1 c1.166 :93 Oct 28 Plant specimens 1 c1.164 :95 May 30 Plant Patent Claims 1 c1.16 L :99 Apr 47. Late Filing Surcharge for late filing of application fee, or cover sheet of provisional application. 1 c1.16 d :97 Aug 31 Claims, multiple dependent, surcharged filing fee. 1 c1.1550 c :94 Nov 10 Re-examination, extensions of time m2265 1 c1.153 a2 :98 Aug 18. Design patent, -- title, oath, description, claim 1503 1 c1.152 :94 Apr 8 Design patent, -- drawings 1 c1.14 g :99 Apr 47 Application, held in secrecy u122, a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation. 1 c1.14 b :95 May 6 Application, held in secrecy u122 a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation. 1 c1.139 b :97 Aug 15 Revival of Provisional App. still 12 mo max life of ppa 1 c1.137 c :96 Aug 43 Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. (c)=Terminal Disclaimer required 1 c1.137 b3 :98 Aug 41. Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. 1 c1.137 a3 :98 Aug 41. Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. 1 c1.136 b :94 Nov 10 Extension of time to respond, not regular extensions. Sufficient cause reqired. 1 c1.136 a3 :99 Apr 1. Extension of time to respond, Paying fee or authorizing deposit account is treated as a request for extension. 1 c1.136 a,1,i:94 Nov 2 Extension of time to respond, timely response, for office actions. m710.02 1 c1.135 c :96 Aug 8 Abandonment for failure to respond within time limit. m710.02 1 c1.135 b :98 Aug 45. Abandonment for failure to respond within time limit. m710.02 1 c1.131 a2 :98 Aug 4. Swearing back, affidavits overcoming rejections m715 1 c1.131 a :94 Nov 11 Swearing back, affidavits overcoming rejections m715 1 c1.127 :92 Oct Petition from refusal to admit an amendment 1 c1.126 :94 Apr A4 Claim numbering in amendment 1 c1.121 e :97 Aug 28 Amendments in re-issues. Submit entire claim sentence with deletes bracketed [ ] and adds underlined. or indicating exact words to strike and ul adds. 1 c1.121 c :94 Apr A8 Amendment of claim. can use spec form for 5 or less words. 1 c1.121 b2iii:98 Aug 20. Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". m714.22 1 c1.121 b2ii :98 Aug 20. Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". 1 c1.121 b2ib :99 Apr 28 Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". 1 c1.121 b2ia :98 Aug 20. Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". 1 c1.121 b2 :98 Aug 20. Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". 1 c1.121 a2i :98 Aug 50 Amendment, of specification m714.22 1 c1.12 d :97 Aug 44 Assignment records. To get -- Need to identify the reel and frame where assignment is recorded, else extra charge. 1 c1.12 b :97 Aug 44 Assignment records of pending or abandoned applications not open to public. Need proper authority to get. 1 c1.12 a :97 Aug 44 Assignment records of issued patents, reissues, open to public. 1 c1.119 :97 Aug 13 Amendment of claims. Cancel&present new. amend per c1.121. Point out patentable distinction per c1.111 1 c1.118 a :94 Apr A1 Amendment, no new matter 1 c1.116 a :94 Apr A5 Amendment after final action 1 c1.115 :96 Aug 5 Amendment, when appropriate 1 c1.113 a :98 Aug 37. Final Rejection or Action. Response must include cancellation of or repeal from the rejection of EACH rejected claim. 1 c1.111 c :94 Apr A6 Further Consideration -- Reply by applicant or owner. 1 c1.11 d :97 Aug 44 Files open to public. Files relating to reexamination proceedings. fee. 1 c1.11 c :95 May 7 Files open to public (Rexam request published). m103 1 c1.11 a :95 May 5 Files open to public (issue patent). m103 1 c1.109 :92 Apr Examination of applications, Reasons for allowance 1 c1.107 b :95 May 26 Rejection of claims. b = examiner's personal knowledge 1 c1.104 e :99 Apr 15 Common ownership, evience of. Recorded Assignment, assignment papers, affidavits, corps require officer's affidavit. 1 c1.102 d :93 Oct 12 Make special, advancement out of turn, why. list in m708.02 1 c1.102 c,d :94 Apr 23 Make special, advancement out of turn, why. list in m708.02 1 c1.10 a :95 May 42 Express mailing -(a)can do. -(b)how. -(c)Sat,Sun,Hol see c1.6a, u21a 1 .REF :90 DATE Q# SUMMARY CROSS REF ~ :~ ~LAST, LARGEST ITEM IN LIST. 102 u102 :99 Apr 48 Invention by another, reduction to practice, diligence, not abandoned 72 u112 :99 Apr 50 Specification 608.01 54 m608.01 :98 Aug 25 Trademarks, use of. trade names ok. Capitalize trademarks. Avoid in titles. 42 c1.75 :98 Aug 25 Claims, forms of. d1=claim must conform to specification and terms and phrases must have clear antecedents. 40 m2173.05 :98 Aug 25 Claim, inclusion of trademarks or tradenames. not prohibited as identifier. prohibited as a limiter. 36 c1.136 :94 Nov 10 Extension of time to respond, not regular extensions. Sufficient cause reqired. 32 u103 :99 Apr 46. Conditions for patentability, non-obvious subject matter, common I or O m2186 32 c1.131 :98 Aug 4. Swearing back, affidavits overcoming rejections m715 31 c1.53 :99 Apr 45. Filing date & application #. International app. Int App designating US is filed per art11(3) xcept 102(e). 29 c1.121 :94 Nov 47 Amendments in Re-examination, method 25 m706.02 :99 Apr 32. Rejections under u102(f) u102(g) u103, u103(c) c1.106 21 c1.111 :94 Apr A6 Further Consideration -- Reply by applicant or owner. 18 u251 :99 Apr 44. Re-issue of defective patents u1401, u1402 (list) 17 m706.03 :93 Apr A4 Markush Group. m803.02 16 u119 :97 Aug 42 Priority. Inventor's certificate. 16 m710.02 :99 Apr 17 Time to respond, Extensions. Page 700-46 c1.136 16 c1.97 :99 Apr 25. IDS - Information Disclosure Statement, late entry, FEE (d), 16 c1.137 :96 Aug 43 Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. (c)=Terminal Disclaimer required 13 u120 :99 Apr 43 Benefit of earlier filing date in US benefit of earlier filing date in US 13 c1.8 :99 Apr 18. Certificate of mailing mpep 512 don't-use list 13 c1.102 :93 Oct 12 Make special, advancement out of turn, why. list in m708.02 12 m715 :99 Apr 43 Swearing back affidavits. c1.131. 12 m608.04 :93 Oct 47 Amendment, review of examiner's finding of new matter 12 m201.11 :99 Apr 28. Continuity between applications: filing dates. common inventor pages200-231 12 c1.11 :97 Aug 44 Files open to public. Files relating to interference proceeding. fee. m103 11 m609 :99 Apr 25. IDS - Information Disclosure Statement. May be filed before final action or notice of allowance mailed. (not on day of mailing) 11 m1206 :99 Apr 40 Appeal, duration of extensions 10 u371 :98 Aug 49. National Stage filing, contents, oath 10 u133 :98 Aug 45. Time for prosecuting applications, actions, 6 mo then abandoned 10 m708.02 :99 Apr 5 Make Special, Petition to, (handling, expedite, national interest) c1.102 c1.412 10 m512 :99 Apr 40 Certificate of mailing page 500-538 c1.8 don't use for -- list 10 m2145 :99 Apr 46. Rejection. Rebuttal Arguments. Arguments no good. Evidence required. Details shown. 10 m201.03 :99 Apr 41. Correction of inventorship Pages 200-209 c1.48 10 c1.48 :99 Apr 32 Correction of Inventorship, Provisionals, error. d= req. petition of no intention of deception, + Fee. 10 c1.191 :98 Aug 35. Appeal to board of Appeals and Interferences u134 10 c1.116 :97 Aug 25 Amendment after final action 9 u116 :97 Aug 46 Inventors, Joint, definitions 9 u041 :99 Apr 6 Small entity reduced 50% fees listed in (a) and (b). 9 m716 :99 Apr 14. Affidavits or declarations traversing rejections c1.132 9 m706.07 :96 Aug 25 Final Rejection, time for response, examiner's amendment 9 m2111.03 :99 Apr 50. Claim language, transitional phrases. Comprising: Consisting of: Consisting essentially of: "comprising, including, containing, characterized by are inclusive or open ended." 9 c1.56 :93 Apr 29 Disclose, duty to disclose, by others 9 c1.510 :96 Aug 49 Re-examination, request for, required parts (b). May include proposed amendments (e) 8 u132 :99 Apr 42. Notice of rejection; Re-examination 8 u101 :98 Aug 12 Patentable Inventions, definition 8 m601.01 :99 Apr 21 Filing non-provisional under u111(a) c1.53 8 c1.196 :92 Oct Board of appeals and interference, decisions by, scope of, m1214.01 8 c1.193 :98 Aug 33. Appeal, examiner's answer. (to Board of Interferences and Appeals) 8 c1.192 :91 Aug Appellant's Brief board of appeals and Interference. specify errors in rejection reasons. 8 c1.153 :98 Aug 18. Design patent, -- title, oath, description, claim 1503 8 c1.10 :95 May 42 Express mailing -(a)can do. -(b)how. -(c)Sat,Sun,Hol see c1.6a, u21a 7 u184 :96 Aug 12 License to file in foreign country see u185 also m140 7 u151 :99 Apr 35. Issue of Patent, procedures, notice, etc 3 mo, fee, no ext except for cause (1.136b), petition for unavoidable delay, fee. S 21 8 7 u122 :99 Apr 27. Confidential status of applications c1.14 7 u104 :93 Oct 48 Inventions made abroad, military personnel exempted, NAFTA 7 m804.02 :98 Aug 1. Terminal Disclaimer, fixes double patenting 7 m715.01 :99 Apr 48 Reference, publications of applicants own invention. 7 m714.22 :99 Apr 34. Amendment, directions for entry of,. 7 m714.13 :98 Aug 11. Amendment after final rejection, Procedure. two months from date of mailing special rule. 7 m710.01 :92 Oct Time to respond, Extensions. Page 700-46 7 m2163.06 :96 Aug 24 New matter, at last a definition!!! u132, u251 7 m2163.05 :98 Aug 17 Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK) 7 m201.13 :99 Apr 12. Right of priority of Foreign Applications. U 119 7 c1.17 :99 Apr 25. Fee for late IDS 7 c1.14 :99 Apr 47 Application, held in secrecy u122, a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation. 7 c1.132 :99 Apr 14. Objections to rejections, petitions, affidavits m716 6 u121 :99 Apr 40. Divisional Applications, two inventions in one application 6 u111 :99 Apr 42 Provisional apps have no right of priority from earlier filings. 6 m714.19 :96 Aug 35 Amendment to be denied (list of). No insults, Group director decides (11) 6 m711.03 :99 Apr 28. Abandonment, reviving unintentional abandoned app. c1.137 6 m711.02 :92 Apr Abandonment by termination of proceedings. -02b 6 m608.02 :94 Apr 12 Drawings, transfer of drawings to Re-issue 6 m402.06 :97 Aug 45 Agent withdraws. c1.36 6 m2164.08 :98 Aug 43 Enablement, Critical feature not claimed. 6 m201.06 :99 Apr 47. Continued prosecution application. abandon previous app, no new matter, same term, same inventors, filing date is date of request of continued prosecution much more. 6 m201.04 :99 Apr 32 Provisional Apps. 12 month. Expire on Sat,Sun,Hol No grace. Provisionals do not count in 20 year term. 6 m1402 :99 Apr 41 Re-issue, grounds for filing 1= claims too narrow or broad, 2 year window for enlargment. By assignee of whole interest if not enlarging. 2= to correct inaccuracies in disclosure, 3= to claim foreign priority, 4= to make or correct reference to prior co-pending apps. 6 m1214.01 :97 Aug 25 Appeal, procedures after decision by board. c1.196 6 m1002.02 :96 Aug 43 Petition to Commissioner, Delegation to Group Director, . holding of abandonment (c4c) 6 c10.23 :95 May 43 Misconduct, withholding info about copying claims (c7) 6 c1.78 :99 Apr 28. Priority, claiming benefit of earlier filed provisional apps. PPA's can expire on S,S,Hol. PPA must name at least one inventor of non-prov app. 6 c1.63 :99 Apr 5. Oath or Declaration, contents of, 6 c1.6 :99 Apr 12 Facimile transmission. d= dont use list 9 items. 6 c1.52 :96 Aug 23 Application format, 6 c1.362 :93 Apr 41 Maintenance fees, schedule of due dates 6 c1.34 :98 Aug 14. Representation, recognition for 6 c1.18 :99 Apr 40 Patent Issue Fees. deposit account OK 5 m605.04 :98 Aug 21. Inventor changes name. Apply to Assistant Commish for Patents. Fee. 5 m409.03 :94 Apr 42 Rights of non-signing inventor. 409.03=Unavailability of Inventor 5 m2132 :99 Apr 27. Prior art, known or used. "in this country" "by others" "patented in this or foreign country" USC 102a, 5 m1412.03 :99 Apr 28 Correction of patent, broadening reissue claims. Cannot do! u251 5 m1410.01 :99 Apr 45. Re-issue, oath, assent of all assignees. c1.172 5 m1306 :99 Apr 35. Issue Fee. Due 3 mo after Notice of Allowance. Not extendible. 5 m103 :96 Aug 21 Public Files. c1.11 Applics not public, some abandoned are. c1.14 5 c10.40 :93 Apr 50 Permissive withdrawal from case 5 c10.18 :99 Apr 3 Signature violations bring big trouble from 10.23(c)(15) 5 c1.9 :96 Aug 4 Small entity, Definitions (e) 509.02 5 c1.45 :93 Apr 4 Joint inventors 605.07 5 c1.27 :94 Nov 31 Small Entity, oath, affidavit 5 c1.25 :91 Aug Deposit Accounts 509.01 5 c1.248 :97 Aug 20 Service of papers. by first class mail. Date of mailing is date of service. 5 c1.172 :96 Aug 26 Reissue, who signs, who owns. 5 c1.12 :97 Aug 44 Assignment records. To get -- Need to identify the reel and frame where assignment is recorded, else extra charge. 5 c1.118 :94 Apr A1 Amendment, no new matter 4 u301 :97 Aug 30 Prior Art, citation of, in re-examination m2202, c1.501 4 pct :98 Aug 49. Communication to Designated Offices. International Search Report goes to Designated offices and/or applicant if requested. PCT A20 4 m818.03 :99 Apr 2. Restriction, Must traverse to preserve right of petition. 4 m804.01 :99 Apr 49 Double Patenting, Nullification of rejection. 4 m804 :99 Apr 26. Double Patenting, definition 4 m714.24 :99 Apr 9. Amendment of amendment. c1.124 4 m714.12 :98 Aug 11. Amendment after final rejection. Canceling, complying, better form allowed. c1.116 4 m714.02 :99 Apr 23 Amendment must be fully responsive. in writing, distinctly and specifically point out error, must respond to each ground, must appear to be a bonafide effort to advance the application to final action. General allegation no good. c1.111(b) 4 m713.04 :97 Aug 11 Interviews made of record c1.133, c1.2 4 m710.06 :98 Aug 43. Dates misc factors, remail of OA, Errors in dating 4 m605.07 :97 Aug 46 Joint inventors 605=Applicant. -07=joint inventors. c1.45 4 m509.01 :99 Apr 44 Deposit Accounts c1.25 4 m409.01 :99 Apr 39. After allowance, Executor should but is not required to act. 4 m402 :99 Apr 19. Power of attorney, of record and not of record c1.34 4 m2250 :99 Apr 4. Re-examination, Amendment by patent owner c1.121 4 m2164.05 :98 Aug 16 Enablement, determination. (a)=enabled as of filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one. 4 m2136.05 :99 Apr 48 Rejections under U102(e) Applicant's own work overcomes 102(e) 4 m2133.03 :96 Aug 40 Commercial exploitation 4 m2131 :99 Apr 33 Prior art, anticipation. 102abe rejections. To anticipate, ref must teach every element of claim. 4 m2113 :99 Apr 18 Claim, product by process. Patentability is on the product, not the process. Not limited by recited steps, only the structure implied by the steps. 4 m1503.01 :98 Aug 18. Design Patent, Specification and Claim, Form of Application page 1500-1503 c1.154 4 m1490 :94 Apr 37 Disclaimers 4 m1411.02 :98 Aug 7 Re-issue, claims must be for same general invention 4 m140 :96 Aug 12 Foreign filing license u184 4 m1207 :97 Aug 25 Amendment filed with or after appeal 4 m1205 :99 Apr 40 Appeal, notice of appeal 4 c1.62 :94 Apr 27 File Wrapper continuations. Continuations in Part, Divisions, etc. 4 c1.552 :97 Aug 8 Re-examination, Scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. m2258 4 c1.495 :97 Aug 17 National Stage, entering US as an elected office. 30 mo time not extended. 4 c1.33 :98 Aug 35. Correspondence mpep 403 4 c1.31 :95 May 48 Represented by Attorney or Agent 4 c1.20 :92 Oct Fees, post issuance 4 c1.183 :98 Aug 11. Suspend rules 4 c1.162 :99 Apr 16 Plant patent 4 c1.16 :99 Apr 47. Late Filing Surcharge for late filing of application fee, or cover sheet of provisional application. 4 c1.135 :96 Aug 8 Abandonment for failure to respond within time limit. m710.02 3 u305 :99 Apr 4. Reexamination, conduct of proceedings. No claim enlarging scope of patent permitted. 3 u253 :99 Apr 36. Disclaimer, disclaim a claim or portion of term. 3 u161 :98 Aug 3. Plant patent 3 u115 :97 Aug 24 Oath of Applicant mpep 602 3 pct11 :94 Nov 14 Filing Date, requirements to get one. page T-4 3 m716.10 :99 Apr 48 Prior art, same inventor or common inventor in joint apps (examples provided) 3 m716.01 :99 Apr 14. Affidavits. c1.131 vs 1.132. 1.131 is for prior art rejections where invention is before reference such as u102a or e. 1.132 is for u102 f and g commonly owned or commonly assigned at the time later invention was made. 3 m715.07 :99 Apr 13 Afidavit that the invention was done in US, NAFTA, or WTO countries. u104 3 m714.16 :94 Apr 27 Amendment after notice of allowance c1.312 3 m713.05 :97 Aug 11 Interviews, prohibited, granted, special situations. 3 m710.04 :91 Aug Claims, copying of, causing two periods running together. 3 m602 :93 Oct 23 Oath or Declaration, original u25, 26, 115, c1.63, 1.68 3 m513 :99 Apr 6. Express mail c1.10, c1.6 3 m509.03 :94 Nov 31 Small entity, claiming status as, 3 m505 :99 Apr 35. Office Receipt Stamp. & holiday rule. c1.10 3 m502 :99 Apr 2 Depositing papers. address, identification rqmts 3 m405 :97 Aug 45 Power of attorney, not of record. OK for filing papers. not OK for interviews, release of info. c1.134 3 m402.05 :98 Aug 13. Power of attorney, revocation. c1.36 3 m306 :97 Aug 23 Assignment of division, cont, subs, cip in relation to parent case 3 m2258 :99 Apr 4. Reexamination, scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. c1.552 3 m2202 :97 Aug 30 Prior art, citation of in re-examinations c1.501, u301 3 m2144 :99 Apr 19 Rejections, Sources of Rational Supporting a Rejection Under u103. 3 m2143.01 :99 Apr 35 Prior Art must suggest desirability of presently claimed invention to be prior art. 3 m2143 :99 Apr 35 Obviousness, Prima Facie. Criteria = Prior art must make suggestion of motivation + reasonable expectation of success + reference(s) must teach or suggest ALL the limitations. 3 m2128.01 :97 Aug 21 Prior art, level of public accessibility rqd. rqmts for being "published". 3 m2127 :98 Aug 11 Patent Apps as Prior Art. (a)=abandoned apps P.Art only if disclosed to public. (b)=Canceled matter. Rejection cannot rely on canceled matter cuz not in issued patent (made public). 3 m2112.01 :99 Apr 7. Claim, product and apparatus. prior art. prima facie case of anticipation or obviousness. 3 m2107.02 :98 Aug 38 Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)= 3 m201.09 :99 Apr 8. Substitute Application. 3 m2001.04 :97 Aug 13 IDS -- information under 1.56(a) No duty to disclose information not material to any claim. 3 m1605 :99 Apr 16 Plant patents, claims and specification. 3 m1604 :99 Apr 16 Plant Patent, Oath 3 m1512 :99 Apr 46 3 m1481 :99 Apr 32 Correction of patent. Applicant's mistake. u255 c1.323 3 m1453 :98 Aug 20. Re-issue, amendments to Re-issue appl. Pages 1400-1421 3 m102 :98 Aug 12. Status of application, information made public. 3 c10.78 :94 Apr 28 Malpractice, skip out on obligations of liabilities 3 c10.32 :99 Apr 17. Advertising, include name 3 c1.98 :95 May 43 IDS - Information Disclosure Statement, contents 3 c1.84 :95 May 22 Drawing standards. photographic submissions. m608.02 3 c1.81 :94 Nov 46 Drawing, when required, late submission, u113 3 c1.550 :96 Aug 36 Re-examination, conduct of, 3 c1.55 :96 Aug 3 Foreign Priority, claim for 3 c1.530 :99 Apr 37. Re-examination, no enlargement, no new matter. no ammendment to expired patent. 3 c1.324 :99 Apr 14 Correction of inventorship. u256 3 c1.312 :94 Apr 27 Amendment after allowance of patent (ie grant, notification) m714.16 3 c1.28 :94 Nov 31 Small Entity, Keep status until issue fee or maint fee due 3 c1.165 :95 May 30 Plant drawings 3 c1.163 :96 Aug 24 Plant Patent Specification 3 c1.133 :94 Apr 5 Interviews 3 c1.124 :97 Aug 13 Amendment of amendment. amended twice, etc m714.24 2 u282 :99 Apr 36. Infringements, presumption of patent validity, defenses. 2 u134 :92 Oct Completeness and clarity of newly filed applications 2 u118 :94 Apr 17 Inventor, Filings by other than inventor 2 u113 :97 Aug 10 Drawings, late submission 2 u100 :93 Apr 10 Definitions "process" (b) 2 u021 :99 Apr 35. Filing date & day for taking action. (a)= Commish makes the rules incl emergency situations and post office disruptions. (b)=The holiday rule. Sat, Sun, DC slacker day, next day ok. Note:except for provisional application expirations. 2 u004 :93 Apr 1 Restrictions on PTO employees 2 pct :97 Aug Treaty article 31 has no section 6. 2 m809.03 :98 Aug 17. Division, linked claims, See also 818.03d 2 m809 :98 Aug 17. Division, linked claims, See also 818.03d 2 m716.02 :98 Aug 29. Unexpected Results, Evidence Must Show. .02(a) = Evidence must show. .02(b) = Burden is on Applicant 2 m715.05 :98 Aug 39. Same Invention. commonly owned. 1 year publication limit applies. Remedy is via c1.608, not c1.131 2 m715.04 :96 Aug 7 Affidavits, who may make affidavits or declarations 2 m715.03 :98 Aug 39. Genus-Species. where predictability is in question. 2 m713.02 :97 Aug 11 Interviews prior to first office action 2 m711.01 :99 Apr 17 Expressed or Formal abandonment. -01 c1.138 2 m709 :93 Oct 41 Suspension of action (examination). c1.103 2 m707.07 :96 Aug 25 Final Rejection, time for response, interviews, no fee for 2 m706.01 :99 Apr 23 Rejection Contrasted with Objections (706=rejection of claims) *63* 2 m602.03 :97 Aug 24 Oath, defective 2 m602.01 :97 Aug 24 Oath cannot be amended 2 m509.02 :99 Apr 6 Small entity, definitions c1.9 2 m502.01 :99 Apr 1 Facsimile transmissions. Do-not-use list 2 m403 :99 Apr 44 Correspondence, with whom. c1.33 2 m402.10 :96 Aug 13 Power of attorney, changing, all inventors must agree. 2 m301.01 :97 Aug 44 Assignment records of issued patents public. c1.12 2 m2265 :94 Nov 10 Time to Respond, extensions of, in Re-examination 2 m2248 :94 Apr 49 Request, petition from denial of c1.515 2 m2243 :94 Nov 43 Re-examination, Claims considered in deciding request for Re-ex. 2 m2214 :99 Apr 22. Re-examination, Request, contents. c1.510 2 m2189 :94 Nov 28 Examinations of joint apps under u103, u116 2 m2187 :94 Nov 28 Ownership at time invention was made 2 m2164.03 :98 Aug 20 Enablement and predictability. 2 m2161 :99 Apr 36 Specification. 3 requirements of u112 (first para). 1= written 2= how to make & use 3= bestmode. Utility rqmt (u101) is implied. 2 m2153 :94 Apr 15 Prior art under 102e 2 m2142 :99 Apr 35 Obviousness, Prima facie. Examiner bears the initial burden of factually supporting a prima facie conclusion of obviousness. 2 m2141 :99 Apr 35 Graham Factual Inquiries. 2 m2138.05 :99 Apr 36 Prior art, reduction to practice. Actual or constructive. Constructive requires sufficient disclosure of "how to use and how to make" 2 m2136 :99 Apr 13 Prior art, Pats and SIR and applications in the US only. Defensive pubs not patents. effective at pub date only. u102e 2 m2135.01 :99 Apr 11 Rejections under U102(d). The 4 requirements of 102(d) detailed 2 m2135 :99 Apr 8 Rejections under U102(d). The 4 requirements of 102(d) listed 2 m2133.01 :99 Apr 43 Rejections of CIP applications 2 m2131.03 :99 Apr 33 Ranges, Anticipation. 2 m2126.01 :97 Aug 4 In use, on sale, determination of when. 2 m2126 :99 Apr 43 Prior art, "a patent, foreign, or secret". rqmts for being published. 2 m2125.04 :95 May 37 In use or on sale, "in this country defined" u102b 2 m2125.03 :95 May 37 On sale in the U.S. 2 m2114 :98 Aug 10 Claim, functional language. Apparatus claims distinguished from prior art by in terms of structure rather than function. 2 m2112.02 :99 Apr 49. Process Claims 2 m2106 :98 Aug 12 Patentability, computer programs, algorithms, best mode 2 m201.16 :95 May 1 Certificates of correction to perfect claim for priority 2 m201.08 :97 Aug 7 Continuation in Part Applications. may contain new matter. copending. 2 m201.07 :96 Aug 1 Continuation Application. for same invention, copending. 2 m1895.01 :99 Apr 7 Protest, who can protest 2 m1893.01 :99 Apr 10. PCT 30 months to enter submissions. c1.495b 2 m1810 :98 Aug 44. Filing date requirements. PCT treaty 11 2 m1706 :99 Apr 47 Disclosure Documents 2 m1603 :95 May 30 Plant Patent, Elements of appl. 2 m1601 :98 Aug 3. Plant Patent, law, scope, type of plants covered. 2 m1504.10 :98 Aug 10. Design Patent Right of Priority. U119 a-d and U102(e) are 6 months instead of 1 year. U102(e) not applied to designs. 2 m1504.03 :98 Aug 10. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 2 m1504.01 :99 Apr 3. Design patents. Computer generated icons. OK if shown on a computer screen (the required "article of manufacture") 2 m1504 :98 Aug 10. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 2 m1503.03 :99 Apr 3. Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described." 2 m1503.02 :97 Aug 19 Drawing standards for Design Patents 2 m1503 :94 Apr 8 Design patent, Elements of a Design Patent 2 m1417 :95 May 5 Correction of patent, claim for benefit under u119 2 m1416 :99 Apr 28 Correction, offer to surrender original patent 2 m1411 :98 Aug 50 Correction of patent, form of specification. no new matter. c1.173 2 m1403 :99 Apr 45. Re-issue, Diligence in filing 2 m1302.14 :99 Apr 15 Reasons for allowance 2 m1212 :94 Nov 5 Appeal, remand to board to reconsider. c1.195 2 m1209 :95 May 20 Oral Hearings in Appeal cases. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. c1.194 2 m120 :99 Apr 12 Secrecy orders. 2 m106 :98 Aug 48. Inspection by applicant (inventor). Applicant can inspect unless assignee says no. Even so, if applicant can show why his inspection is necessary to preserve his rights and get access. 2 m101 :95 May 23 Secrecy, National security, foreign filing 2 d :98 Aug 46. Deleted 2 c5.11 :96 Aug 12 Export and foreign filing License, not rqd for foreign made inventions 2 c10.77 :92 Oct Fail to act competently 2 c10.160 :97 Aug 45 Petition for reinstatement. suspended attorney. requirements for petition. 2 c10.158 :97 Aug 45 Suspended attorney shall not engage in unauthorized practice . 2 c1.96 :93 Oct A1 Computer listings as an appendix 2 c1.72 :99 Apr 13. Title short as possible, abstract on separate sheet, abstract not for interpreting claims. 2 c1.71 :99 Apr 45. Specification requirements 2 c1.560 :95 May 38 Re-examination, interviews 2 c1.515 :94 Apr 49 Re-examination, req 3 mo. reply 1 mo. all claims re-examined. 2 c1.501 :94 Apr 35 Re-examination, Citations of Prior Art, Re-examination, during life of patent 2 c1.47 :92 Apr Joint inventors, reluctance of, u116 2 c1.431 :94 Apr 6 International application requirements 2 c1.412 :96 Aug 23 International, US as receiving office 2 c1.4 :95 May 19 Application, completeness of 2 c1.323 :95 May 1 Correction, certificate of. Applicant's mistake. u255 2 c1.321 :96 Aug 42 Statutory disclaimer, terminal disclaimer, fee 2 c1.311 :98 Aug 36. Notice of Allowance of issue. time to send in fee. 2 c1.291 :94 Nov 15 Protests by Public against pending applications 2 c1.21 :93 Oct 42 Misc fees 2 c1.197 :97 Aug 25 SIR - Sirs are published. (b) is required statement in an SIR. u157 2 c1.195 :94 Nov 5 Affidavits after appeal, not admitted xcpt good for reason 2 c1.194 :95 May 20 Oral Hearings in Appeal cases. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. m1209 2 c1.178 :97 Aug 28 Re-issue, original patent surrendered 2 c1.176 :95 May 47 Re-issue, examination of, 2 c1.175 :98 Aug 33 Re-issue oath or declaration Pages 600-658 2 c1.173 :95 May 47 Specification of Re-issue Application. form of deletes, adds 2 c1.154 :96 Aug 28 Specification, Design patents, arrangement of, format 2 c1.144 :93 Apr 40 Restriction, petition from requirement of, No Fee 2 c1.143 :99 Apr 2. Restriction, reconsideration of requirement. No Fee. 2 c1.117 :96 Aug 35 Amendment required for ---- reasons 2 c1.103 :93 Oct 41 Examinations, suspension of examination. L 11 8 1 u365 :94 Apr 29 Priority, benefit of, International Stage, u119 1 u304 :94 Apr 46 Re-examination ordered by Commissioner 1 u302 :94 Apr 46 Re-examination, request for 1 u262 :92 Apr Joint owners, accountability, no need for. 1 u256 :93 Apr 7 Correction of inventor 1 u255 :95 May 1 Certificate of correction, Applicant's mistake, no new matter, fee reqd. 1 u254 :92 Apr Certificate of correction, PTO mistake. c1.322 1 u172 :98 Aug 8. Right of Priority, Design patents. 6 mo for u119(d) ; 0 for u119(e) 1 u171 :98 Aug 30 Design patents def. new, original, AND ornamental design for an article of manufacture .. patentable. 1 u162 :93 Oct 28 Plant Patent, description, claim 1 u154 :99 Apr 33. Filing, contents. a=general b=term extension c=continuation 1 u145 :92 Oct Civil Action to obtain patent. court may rule for issuance. 1 u144 :92 Oct Decision on appeal (to courts), court's instruction to PTO 1 u135 :93 Oct 33 Interference 1 u117 :92 Oct Inventor, Death or incapacity of Inventor 1 u114 :93 Oct 37 Models and specimens 1 u042 :96 Aug 28 Office funding, fees. Commish may refund (d) 1 u032 :93 Apr 20 Suspension of License 1 pr47.1 :95 May 4 WRONG REFERENCE CITED BY PTO 1 pr04.9 :93 Oct 22 International Apps. Desig of States (rule 4.9) 1 pr04.10 :94 Apr 29 PCT priority claim. Rule 4.10 1 pr02.1 :94 Nov 14 Definitions 1 pct30 :94 Apr 41 PCT Confidentiality, PCT art 30. m110 1 pct09 :94 Nov 14 Applicant, PCT. Applicant is not necessarily the inventor 1 pct08 :94 Nov 50 Priority, PCT apps. within 12 mo of filing US app. 1 n :99 Apr 31. no paragraph listed for Q 31. 1 m806.04 :94 Nov 30 Claims, Generic 1 m804.03 :93 Apr 9 Common owner, different inventors 1 m803.02 :94 Apr 18 Markush, rejection of 706.03y 1 m802 :92 Apr Restrictions, Divisions U121, c1.141 1 m724.04 :93 Oct 32 Trade secrets 1 m724.03 :93 Oct 32 Trade secrets 1 m724.02 :93 Oct 32 Trade secrets 1 m718 :98 Aug 4. Prior art, commonly owned patent, Affidavit to overcome. 1 m716.09 :97 Aug 19 Disclosure, sufficiency of. m2164 - 2164.04 b 1 m714.15 :94 Apr A9 Amendment received in Examining Group after notice of allowance. 1 m714.14 :94 Apr 45 Amendment after allowance of all claims. 1 m714.09 :95 May 16 Amendment before first office action 1 m714.04 :94 Apr A6 Amendment to claims with no attempt to point out patentable novelty. 1 m714.01 :97 Aug 13 Amendment, improper signature(s) on,. not admitted. definitions of proper sig. d = enter if signed by applicant instead of atty. 1 m713.09 :97 Aug 49 Interviews after final rejection. One permitted, second is possible. Agenda in writing for disposal or clarification for appeal. 1 m713.01 :94 Nov 48 Interviews, general policy c1.133 1 m710 :93 Apr 46 Response, period for, 1 m708 :92 Apr Order of examinations (priority) c1.101 1 m706 :92 Apr Rejection of Claims c1.106 1 m608.03 :93 Oct 37 Models, exhibits, specimens 1 m606.01 :94 Apr 43 Title, Change of required by Examiner do it! 1 m605.02 :93 Apr A3 Applicant's residence 1 m605.01 :93 Apr A3 Applicant's citizenship, must state. u115 1 m605 :93 Apr 4 Applicant, who etc. c1.41 1 m602.05 :94 Nov 36 Oath, date of execution, lapsed, too old. 3 mo. 1 m602.02 :93 Oct 23 Oath, new or substitute 1 m601.02 :93 Apr A3 Attorney, power of, authorization 1 m509 :93 Oct 42 Fees, payment of see for list of types 1 m506.02 :98 Aug 5. Filing date, Review of Refusal to Issue. Filing date when office receives spec, all inventors, drawings, claim for provisional and regular.. 1 m506 :92 Apr Completeness of original application c1.53 1 m503 :96 Aug 28 Serial Number and Filing receipt. c1.54 1 m501 :95 May 19 Correspondence. Each Application file should be complete in itself. 1 m410 :99 Apr 19. Search, no reqirement to make one relative to filing an application. 1 m403.01 :92 Apr Correspondence with associate attorney c1.33 1 m402.07 :92 Oct Power of attorney, revocation by assignee. c1.36, c3.71 1 m309 :91 Aug Employees of PTO, restriction on. 1 m302.02 :94 Apr 47 Assignment document, translation. c3.26 1 m302.01 :94 Apr 47 Assignment document must be original or true copy. c3.24 1 m2504 :99 Apr 26 Maintenence fees. 4,8,12 yes after grant. None for plants and designs. c1.362 1 m2403 :99 Apr 44. Deposit of Biological samples. sometimes required for u112 enablement. deposit rules are c1.801-1.809. 1 m2308.01 :98 Aug 39. Interference with a patent. patent has earlier filing date. 1 m2304 :93 Oct 33 Interference, applicant requests inter between apps 1 m2300 :96 Aug 7 Interference Proceedings 1 m2276 :95 May 20 Oral Hearings in Reexamination cases. fee. One month. 1 m2272 :94 Nov 10 Final Action in Re-examination, actions after final action 1 m2271 :94 Nov 10 Re-examination, Final Action 1 m2251 :94 Apr 46 Re-examination, Reply by requester. c1.535 1 m2249 :94 Nov 43 Re-examination, patent owner's statement c1.530 1 m2247 :94 Apr 49 Re-examination, request denied 1 m2242 :94 Apr 46 Re-examination, criteria for deciding request. 1 m2239 :94 Apr 49 Re-examination ordered by Commish's initiative. 1 m2234 :99 Apr 37. Re-examination, Amendment, entry of. Bracket and underline method only. No new matter, no enlargement of scope. c1.121 1 m2223 :95 May 32 Agent withdraws. in reexamination proceedings. 30 days to go limit m402.06 1 m2217 :93 Oct 26 Re-examination, statement of prior art u302 1 m2212 :94 Apr 46 Re-examination, persons who may file a request. u302, c1.510a 1 m2210 :99 Apr 22. Re-examination, request for. u302, c1.510 1 m2205 :97 Aug 30 Content of prior art citation. Limited to patents and printed publications. 1 m2204 :97 Aug 30 Time for filing prior art citation. patent term + 6 years. Limited during reexamination proceedings. 1 m2188.02 :94 Apr 15 Common ownership by different inventors. 1 m2188 :94 Nov 28 Ownership at time of invention, establishing 1 m2186 :94 Apr 50 U103 guidelines, examples. 1 m2181 :98 Aug 45 Means plus function claim described. 1 m2174 :97 Aug 27 USC112, first and second paragraph relationship. 1 m2172.01 :98 Aug 47 Essential Matter, unclaimed. A claim that fails to include what has been described in the spec as essential matter, may be rejected under U112. 1 m2165.03 :98 Aug 16 Best Mode, Lack of,. Assume best mode is disclosed unless there is evidence to the contrary. BM is at filing. enquiry list here. 1 m2165.01 :99 Apr 34 Best Mode, Relevant Considerations. a= what is the invention. b= specific examples not rqd. c= designation of best mode not rqd. d= updating best mode not reqd. e= defect in best mode not cured by new matter. 1 m2164.07 :97 Aug 13 Enablement, how to use disclosure. 1 m2164.02 :97 Aug 8 Working example. Functional example not required. 1 m2164.01 :98 Aug 36 Enablement. Undue Experimentation factors. List of 8 factors. 1 m2163.04 :96 Aug 35 Description of invention 1 m2163 :99 Apr 21. Specification. Written description required. 1 m2150 :94 Nov 43 Re-examination, Amendment by patent owner c1.121 1 m2146 :99 Apr 29 Prior art. "By another" common ownership overcomes. u103(c) U102(f), u102(g) 1 m2144.06 :97 Aug 22 Prior art, combining equivalent prior art known for the same purpose. 1 m2144.05 :98 Aug 2 Obviousness of Ranges. (a)= No overlapping with Prior Art (includes near overlap if obv to skilled artisan) (prima facie obv.) . see 2131.03 for examples. (b)=various concentrations or temps usually obvious, unless shown critical to claim. Optimization of P.Art not patentable. 1 m2144.04 :99 Apr 7. Obviousness, legal precedence. u103 1 m2143.02 :98 Aug 39 Prior Art. Obviousness requires only a reasonable expectation of success. 1 m2138.03 :97 Aug 4 Prior art, abandoned, suppressed or concealed ref. u102g 1 m2137.01 :99 Apr 10 Inventorship, defined for U102(f) 1 m2137 :99 Apr 10 Rejections under U102(f). Applicant is not the inventor. 1 m2136.04 :98 Aug 46 Rejections under U102(e) Inventors, Different. "by another" definition. 1 m2136.03 :98 Aug 46 Rejections under U102(c) Reference Date, Critical. in U102(c) cases. (foreign references) 1 m2133.02 :96 Aug 19 Rejections based on publications and patents 1 m2132.01 :97 Aug 4 Prior art, Publications. u102a 1 m2131.05 :98 Aug 10 Non-Analogous Art anticipating a claim. Do not work for 102 rejections. 1 m2131.04 :99 Apr 15. Ranges, Anticipation. 1 m2131.01 :97 Aug 9 Prior art, multiple references. 102 rejections. 1 m2128.04 :92 Apr Experimental activity, testing. 1 m2125 :98 Aug 42. Prior Art, Drawings as, . If they are clearly shown. Proportions shown are not are not evidence of actual proportions. 1 m2122 :98 Aug 42. Prior Art, Discussion of Utility in, . Utility need not be disclosed in reference. 1 m2121.04 :98 Aug 42. Enabling Prior Art, what constitutes, in apparatus and articles. 1 m2121.02 :98 Aug 42. Enabling Prior Art, what constitutes, in compounds and compositions. 1 m2115 :97 Aug 21 Claims on workpiece rather than apparatus. Does not confer patentability. 1 m2112 :98 Aug 22. Inherency, Rejections Based on,. 1 m2111.01 :98 Aug 6 Claim language, words defined in their "plain meaning" (by skilled in art) unless defined in specification. 1 m2107.01 :98 Aug 31. Lack of Utility. (b)=statement of utility should be in spec. A statement of general utility not acceptable. 1 m210.11 :97 Aug 15 Continuity between applications: filing dates. common inventor 1 m203.07 :95 May 15 Abandonment. Failure to pay issue fee. 1 m201.15 :99 Apr 13 Right of priority. Overcoming references. 1 m201.12 :94 Apr 22 Assignment in divs and conts carries title (CIP does not) m306 1 m2004 :91 Aug IDS - aids to compliance with duty of disclosure 1 m2002.01 :96 Aug 15 IDS - who makes the disclosure. c1.56 1 m2001.06 :96 Aug 15 IDS - sources of info. c1.56 1 m1901.03 :94 Nov 15 Protest, how submitted, contents, completeness 1 m1901.02 :94 Nov 15 Protest, Information which can be relied upon in a protest 1 m1901.01 :94 Nov 15 Protest, who can protest 1 m1893.03 :94 Apr 29 PCT priority date, claim for US National Stage ape. 1 m1834.01 :99 Apr 24 No fax for Internatonal apps filed in US. 1 m1805 :99 Apr 24 International filing, where to. 1 m1702 :96 Aug 1 Restrictions on former examiners 1 m1607 :99 Apr 16 Plant specimins. do not submit unless asked by examiner. 1 m1504.05 :93 Apr 8 Double patenting and restriction in design patents 1 m1502.01 :98 Aug 29 Design Patent, Distinction between design and utility 1 m150 :93 Oct 19 DOE, NASA statements to , c1.14 1 m1480 :98 Aug 21. Correction, Certificates of, Office Mistake. 1 m1451 :94 Apr 38 Correction of patent, divisional Re-issue apps. c1.177 1 m1450 :94 Apr 38 Correction of patent, restriction and election of species 1 m1445 :98 Aug 14 Re-issue Apps Examined in Same Manner as Original Apps. Subject to any and all rejections. c1,176 1 m1440 :95 May 47 Re-issue, examined in same manner as original applications c1.176 1 m1430 :99 Apr 28 Re-issue files open to public. Notice of filing in Gazette. 1 m1418 :93 Apr 7 IDS and other information 1 m1414.02 :93 Apr 39 Correction, information considered under c1.175 1 m1413 :94 Apr 12 Drawings, correction of patents c1.174 1 m1412.02 :91 Aug Re-issue, claims must be for same general invention 1 m1411.01 :94 Apr 38 Certificate of correction, incorporate in re-issue copy 1 m1410 :99 Apr 45. Re-issue application, contents of. Re-issue oath rqd. ok to file oath or fee late, 1 m1401 :99 Apr 11. Re-issue, requirments to file. error & no deception, surrender patent, fee. no new matter. for invention as disclosed in original patent, for unexpired portion of term. may be divided into several re-issues. 2 year window for enlargment of scope of claims. By assignee of whole interest if not enlarging. 1 m1309.01 :99 Apr 33. Patent term and extensions. 20 years from earliest priority. Extensions for delays. 5 years max. 1 m1309 :99 Apr 33. Issue of patent 1 m1308 :94 Apr 27 Withdrawal from issue c1.313 1 m1306.01 :94 Apr 2 Deferred issuance of patent c1.314 1 m1302.04 :94 Apr 34 Amendment, examiner's amendment and changes 1 m130 :99 Apr 12 Secrecy order cases, examination of. 1 m1216.02 :92 Oct Appeal, Civil suits under u145 1 m1215.04 :94 Apr 16 Appeal, withdrawal or dismissal of appeal. 1 m1215.03 :94 Nov 34 Appeal, withdrawal of some claims 1 m1215.02 :93 Apr 6 Appeal, withdrawal or dismissal of appeal. 1 m1215.01 :92 Apr Appeal, withdrawal or dismissal of appeal. 1 m1214.07 :98 Aug 19. Appeal, reopening prosecution. not a right. amendment placing case for allowance should be entered. 1 m1214.06 :93 Apr 6 Appeal, examiner sustained 1 m1214.05 :94 Nov 34 Appeal, cancellation of withdrawn claims 1 m1213.02 :93 Apr 21 Appeal, statement to rejection of allowed claim 1 m1208.03 :95 May 50 Reply Brief in Appeal. Directed only at new points of argument c1.193 1 m1201 :92 Oct Appeal, distinction between board and commissioner 1 m115 :93 Apr 16 Secrecy, orders, review of. also security of property rights 1 m1105 :91 Aug Og 68 (m1100 is now m2300, interference proceedings) 1 m110 :94 Apr 41 Secrecy, National Security, international apps. pct 30 1 m1096 :91 Aug Og 39 (aint no such m1096) 1 m106.01 :98 Aug 48. Rights of Assignee of Part Interest. Part interest gets right to inspect. 1 m104 :96 Aug 21 Inspection of applications, when allowed 1 m1002 :92 Oct Petition to Commissioner and delegations of authority by commissioner. c1.181 1 c5.5 :91 Aug Secrecy Orders, Permit to disclose or modification of secrecy order. u182 1 c5.3 :91 Aug Secrecy Orders, Prosecution of application while under secrecy orders. m120 1 c5.15 :94 Apr 40 Export License, scope of, 1 c5.12 :96 Aug 12 Export and foreign filing license, Petition for license implied within filing of application. 1 c3.81 :97 Aug 23 Issue patent to assignee if assignment is made before issue fee paid. 1 c3.71 :98 Aug 48. Assignee, prosecution by, Assignee of entire right may conduct prosecution and exclude prior assignees and/or inventors. 1 c10.84 :92 Oct Zealously representation of client, do it by -c5.11 :93 Apr 16 Export and foreign filing license 1 c10.66 :93 Oct 30 Continued employment, refusing. 1 c10.64 :92 Apr Acquisition of interest in application. 1 c10.57 :93 Oct 30 Preservation of confidences and secrets of client. a= definitions. b= list of dont's. c= list of can do's. d= reasonable care. 1 c10.36 :96 Aug 20 Fees for service flat/contingent (b8) 1 c10.34 :96 Aug 20 Advertising, permitted wording in advertising, agent (b) 1 c10.31 :96 Aug 20 Trademark practice forbidden to agents 1 c10.24 :94 Nov 32 Misconduct, Ethics, report non-privileged knowledge of, 1 c10.11 :96 Aug 1 Roster of Agents/Atty. Removal from 1 c10. :98 Aug 47. Ethics chapter 1 c1.94 :93 Oct 37 Models, return of 1 c1.93 :93 Oct 37 Specimens of compositions of matter 1 c1.83 :93 Oct 6 Drawings, content of 1 c1.777 :94 Apr 2 Extension of patent terms for medical devices. 1 c1.7 :93 Oct 4 Time, ending on Saturday, Sunday, Holiday 1 c1.67 :94 Nov 36 Oath, supplemental, required 1 c1.637 :97 Aug 22 Interference. Content of motions. (c3)= prelim motion seeking to designate an app or patent claim to correspond to a count shall: ID the claim and count and show the claim defines the same patentable invention as another claim ... not disputed. 1 c1.607 :95 May 43 Interference, request by applicant 1 c1.604 :93 Oct 33 Interference, request for 1 c1.59 :96 Aug 28 Filed papers not returned. 1 c1.58 :98 Aug 25 Re-examination, interviews 1 c1.535 :94 Apr 46 Re-examination, reply by requester to owner's statement. 1 c1.520 :94 Apr 49 Re-examination at initiative of commissioner 1 c1.51 :99 Apr 32 Application, contents of. a= contents. b= IDS encouraged. No IDS in a provisional. c= Applicants can setup and use deposit accounts for 1.16-1.18 fees. 1 c1.451 :94 Apr 29 International priority 1 c1.432 :93 Oct 22 International Apps. Designation of states, payment of fees 1 c1.42 :92 Oct Inventor, Death of inventor 1 c1.41 :94 Apr 19 Applicant, Name format m605.04b 1 c1.36 :97 Aug 38 Agent withdraws or revocation of power of attorney. Commissioner must authorize withdrawal c1.613(d) for withdrawal. m402.06 1 c1.35 :98 Aug 36. Representation, recognition for 1 c1.322 :92 Apr Correction, certificate of PTO mistake. u254 1 c1.316 :93 Apr 40 Issue fee, failure to pay abandons patent. (3 mo after notice of allowance). May be rectified. 1 c1.314 :94 Apr 2 Issuance of patent, (due course unless -- list) m1306.01 1 c1.313 :94 Apr 27 Withdrawal from issue (list of reasons and conditions) 1 c1.3 :96 Aug 35 Business to be conducted with decorum and courtesy 1 c1.26 :96 Aug 28 Post Issuance Fees, when 1 c1.182 :98 Aug 21. Questions not specifically provide for (in the rules?). Commissioner decides on merits. FEE RQD 1.17h 1 c1.181 :96 Aug 32 Petition to commissioner. timeliness(f) 1 c1.179 :91 Aug Notice of Re-issue application (inserted in original application file. 1 c1.177 :94 Apr 38 Re-issue in divisions 1 c1.174 :94 Apr 12 Re-issue, drawings. 608.02k Transfer if no change. New Set rqd if any dwg needs change. 1 c1.171 :95 May 5 Re-issue, Application, title report, surrender offer, fee 1 c1.166 :93 Oct 28 Plant specimens 1 c1.164 :95 May 30 Plant Patent Claims 1 c1.1550 :94 Nov 10 Re-examination, extensions of time m2265 1 c1.152 :94 Apr 8 Design patent, -- drawings 1 c1.139 :97 Aug 15 Revival of Provisional App. still 12 mo max life of ppa 1 c1.127 :92 Oct Petition from refusal to admit an amendment 1 c1.126 :94 Apr A4 Claim numbering in amendment 1 c1.119 :97 Aug 13 Amendment of claims. Cancel&present new. amend per c1.121. Point out patentable distinction per c1.111 1 c1.115 :96 Aug 5 Amendment, when appropriate 1 c1.113 :98 Aug 37. Final Rejection or Action. Response must include cancellation of or repeal from the rejection of EACH rejected claim. 1 c1.109 :92 Apr Examination of applications, Reasons for allowance 1 c1.107 :95 May 26 Rejection of claims. b = examiner's personal knowledge 1 c1.104 :99 Apr 15 Common ownership, evience of. Recorded Assignment, assignment papers, affidavits, corps require officer's affidavit. 1 . :90 DATE Q# SUMMARY CROSS REF ~ :~ ~LAST, LARGEST ITEM IN LIST.