This course is designed to take an advanced, or a beginner from no knowledge to a passing level of knowledge of patent law needed to pass the patent bar. This online content includes the following features: MPEP discussion based on what is tested on the patent bar exam. Embedded past patent bar questions related to the topic being discussed. Highlighted quotes from the MPEP related to the embedded questions. Cross-reference to the MPEP chapter discussed. Finishing quiz to help you retain the important topics of each chapter. Audio readings of the content...sometimes your eyes get tired of staring at the screen : ).
The essentials are the fundamentals of patent law. These items should be extremely well understood if you want to pass the patent bar exam. The essentials consist of the following: 35 U.S.C. § 101, 102, 103, 112 and MPEP 2100.
35 U.S.C. § 101 – Defining what is patentable.Section 101 of 35 U.S.C. defines what is patentable. The four main groups of patentable inventions include machine, manufacture, composition of matter and process. Additionally, a product-by-process claim can be used but only the product and not the process is patentable. Living subject matter is patentable but only under certain conditions. More regarding this code is discussed in section 2.1.
35 U.S.C. § 102 – Patent rejections due to anticipation.This section of the United States Code contains relevant subsections (a)-(g). Each subsection defines different conditions for when a claim is rejected as unpatentable due to prior art fully disclosing the newly claimed subject matter. These types of rejections are called anticipation rejections. Unlike 35 U.S.C. §103 rejections that are discussed below these rejections rely on prior art which teaches each and every aspect of a claimed invention. More regarding this code is discussed in section 2.2.
35 U.S.C. § 103 – Patent rejections due to obviousness.This section of the United States Code contains relevant paragraphs (a)-(c). The first paragraph defines rejections due to obviousness. Basically, if a new invention would have been obvious to a person skilled in the art to which it pertains relative to the prior art then the invention is not patentable. The second paragraph defines obviousness and how it is practiced in regards to subject matter in biotechnology. The third paragraph defines obviousness and how it is practiced in regards to joint ownership. More specific examples are given regarding joint research agreements.
35 U.S.C. § 112 – Patent rejections due to the form and disclosure of the application.This section of the United States Code contains relevant paragraphs (1),(2) and (6). The first paragraph lays out how the specification needs to contain a written description of the invention with proper enablement that would allow the public to make and use the invention. This must be accompanied by a disclosure of the best mode of using the invention thought of at the time the application was filed. Both of these must be in clear, concise and exact terms as to fully disclose these aspects to the public. The second paragraph lays out the requirement of definitiveness for the application. In summary, the application needs to properly define what the inventor regards as their own invention through distinctly and particularly pointing out the boundaries of what the patent will cover through claim language. The sixth paragraph defines how a invention may be claimed through means or step for function. This language can be used allowing the applicant to not specify the structure, material or acts which support this function but instead relying on the corresponding disclosure in the specification.
MPEP 2100 – Patentable Subject MatterThis chapter deals with Patentable Subject Matter as the name suggests and also heavily covers the 35 U.S.C. codes of 102, 103, and 112. This is one of the most tested MPEP chapters on the Patent Bar exam. As such you should place a major emphasis on knowing the topics covered in this chapter.
- 35 U.S.C. § 101 – Defining What is Patentable
- 35 U.S.C. § 102 – Patent Rejections Due to Anticipation (Pre-AIA)
- 35 U.S.C. § 102 – Patent Rejections Due to Anticipation (Post-AIA)
- 35 U.S.C. § 103 – Patent Rejections Due to Obviousness
- 35 U.S.C. § 112 – Patent Rejections Due to the Form and Disclosure of the Application
- MPEP 2100 – Patentable Subject Matter
- Utility Patents (Non-Provisional Patents)
- Provisional Patents
- Design Patents (MPEP 1500)
- Plant Patents (MPEP 2400)
Non-Provisional Applications:The non-provisional patent application is what most people think of when the someone mentions the term patent, and is the most common application type received by the USPTO. A Non-Provisional patent is for the protection of the utility of an invention unlike a design patent.
Provisional Patent Applications:A provisional patent application is an optional filing which can be made and is a kind of “place holder” for ones invention. In place of going through all the work of filing a complete non-provisional application, an applicant can file a provisional application. The provisional application does not require any claims, just a written description with necessary drawings to understand the invention, filing fee and a cover sheet which identifies the application as a provisional application, the names of all the inventors and their residence, the title of the invention, the name and registration number of the practitioner, correspondence address and any U.S. government agency that has a property interest in the application. Once a provisional application receives a filing date it has a 12 month life and can be converted to a non-provisional application or a non-provisional application can claim benefit to the provisional application. More details on these two options are discussed in the provisional application section.
Design Patents:Design patents are similar to utility patents in that an applicant can obtain protection on their new invention, however the rules for design patents are a little bit different. A design patent only has a life of 14 years unlike the 20 for a utility patent. Also, a design patent protects the way an article looks, not the way the article works/functions. A design patent can embody an entire article for just a portion of the article. It can also protect an ornamentation applied to the article. A design patent can only have a single claim and must include drawings or photographs showing the ornamental appearance of the item which protection is sought on. Generally, design patents are not as widely used as utility patents, but they can be good to use to augment protection from regular utility patents.
Plant Patents:In addition to provisional, non-provisional and design patents the US patent law also allows for patent protection on certain types of plants. Specifically, an asexually reproduced distinct new variety of plant. A plant patent term is 20 years like a utility patent and nearly the same rules for utility patents apply to plant patents except what is noted in 37 C.F.R. § 1.161. Plant patents are not heavily tested on the exam but one or two questions are known to appear. There are also specific rules created in US patent law for patents which deal with the relatively new subject matter of biotechnology. This information can be found in the following section related to biotechnology.
For MPEP 200 – Types and Status the following topics will be covered:Types of applications which are available for use. How to cross-note an application and what it does. The status of an application and what it means. Details regarding inventorship and how to correct it. Additionally, situations where correction of inventorship is not required will also be discussed. How an application can claim foreign priority and what it does. Finally, information regarding the publication of patent applications is also discussed.
For MPEP 600 – Parts, Form and Content the following topics will be covered:The parts, form and content required in a patent applications. The content of a provisional and non-provisional application. The original oath and declaration along with any supplementals. Information regarding the applicant. Requirements for the title of the invention, filing fees and proper disclosure are also discussed. Finally, the information disclose statement is discussed through a definition of what it is, what it does and how to file one.
For MPEP 700 – Examinations the following topics will be covered:The last section of the applications chapter deals with the examination of the patent applications pervasively discussed. This includes what requirements for information are allowed, the rejecting of claims by the examiner. The order in which the examination is conducted. Suspension of action situations are discussed included how to get one, how long the last and what effects they have on the examination. Proper periods for reply are covered included shortened statutory periods and what the maximum reply period is without letting an application go abandoned. If an application does go abandoned, information regarding how this happened along with how or if it can be revived are disclosed. Interviews with an examiner are included such as how to get one and how it can be performed. Any amendments to an already filed application including the ability to do so and the effect they have are covered. Rule 31 concerning an affidavit or declaration of prior invention get covered as well. The last parts of this chapter then deal with public use proceedings (how to determine if it has been used in public previously) in addition the topics of trade secrets, proprietary and protective order material and how to expunge any secret material can be completed. The end of this chapter deals with the basics of the examination process.
5.1 – MPEP 500 Receipt and Handling of Mail and PapersThis section discusses how the USPTO handles the receipt of papers mailed in from applicants or practitioners such as the proper date of receipt of correspondence, proper mailing methods, when facsimile is allowed, how to properly pay fees, how to deposit patent applications, proper reference information to be included, email usage, signature requirements, how to get a receipt proving delivery and what to do if the USPTO looses your files.
5.2 – MPEP 800 Restriction and Double PatentingThis section covers restriction requirements and what to do if the examiner requires one. How to deal with improper restriction requirements. How and when rejoinder is allowed. Finally, double patenting is discussed as well.
5.3 – MPEP 1200 AppealThis section discusses who and when an appeal can be made, the process of appealing, amendments allowed, the requirements of an appeal brief, examiner’s answer, oral hearings, decisions by the appeal board and what actions can be taken after a decision by the appeals board.
5.4 – MPEP 1300 Allowance and IssueThe allowance and issue section discusses what happens when an application goes into allowance and subsequently issuing and publishing. What happens if corrections or an examiner’s amendment is made to an application ready for issuance. What is the notice of allowance and how does this effect the patent prosecution? Are there additional procedures which need to be completed before issuance?
5.5 – MPEP 1400 Correction of PatentsThis chapter discusses correcting mistakes in patents which have already issued. These forms of correction can include certificates of correction, reissue applications and disclaimers (terminal and statutory). Each method is discussed.
5.6 – MPEP 1700 Document Disclosure ProgramThe document disclosure program is discussed in 5.6. This program is rarely used, but still available for use. This chapter also describes what the examiner is allowed to do during prosecution of a patent application and how employee’s of the USPTO are limited to partake in U.S. patent prosecution for a limited time after ending their employment.
5.7 – MPEP 1800 PCTThe Patent Cooperation Treaty section discusses the differences between a national and an international application. For international applications, the proper filing procedure and required documents for a filing date are included. Additionally, specifics as to the process of advancing an international application through to a national application. Different rules which must be adhered to compared to regular national stage patents are included.
5.8 – MPEP 1900 ProtestsProtests, which is the publics change of challenging a patent application are discussed in section 5.8. This discussion includes topics of timing of the protest and the rights which as protestor has during the process.
5.9 – MPEP 2200 Citation of Prior Art and Ex Parte Re-examinationTwo topics are covered in this section. The first citation of prior art addresses the major questions of what it is, why it is done, who can do it, when it should be done and what the restrictions are. Additional information regarding the filing procedure is included as well as how the USPTO handles these citations. For the Ex Parte Reexamination topic, a general definition of the procedure is included. Additional details include who can conduct this reexamination and what the procedure is when conducting this reexamination.
5.10 – MPEP 2300 InterferencesThis section deals with the procedure when either two patent applications or a patent application and granted patent both claim the same invention. When this happens an interference proceeding is conducted. This can also be provoked on purpose through means discussed in this section. Additionally, details are included as to the different status of the parties in an interference proceeding as well as who has the burden of proof.
5.11 – MPEP 2600 Inter Partes Re-examinationThe second reexamination proceeding similar to ex parte reexamination is called inter partes reexamination. There are some differences between the two procedures which is discussed in more detail in this chapter. Additionally, the idea of an Estoppel is covered with details on what it does and how it is obtained. Information on how to requested and the procedure of an inter partes reexamination is included. Finally, how an inter partes reexamination can effect other conjunctive proceeding is also discussed. - See more at: http://www.patentacademyonline.com/course/procedures/#sthash.CiMGr2Av.dpuf
- MPEP 500 – Receipt and Handling of Mail and Papers
- MPEP 800 – Restriction and Double Patenting
- MPEP 1200 – Appeal
- MPEP 1300 – Allowance and Issue
- MPEP 1400 – Correction of Patents
- MPEP 1700 – Document Disclosure Program
- MPEP 1800 – PCT
- MPEP 1900 – Protests
- MPEP 2200 – Citation of Prior Art and Ex Parte Re-examination
MPEP 100 Secrecy, Access, National Security & Foreign FilingsThis section discusses who can access the application content when it is filed. Who has the power to inspect the application. What rights the public has to inspect issued patents, pending applications, provisional applications, reissue applications, re-examinations, decisions of the PTO and petitions. Additionally, topics regarding secrecy orders, foreign filing licenses and issue pertaining to national security are covered.
MPEP 300 Ownership and AssignmentThis chapter deals with the patent as an intangible assets with regards to their personal property rights. How the rights to a patent can be assigned, the accessibility of these assignment records and how they are recorded with the USPTO and if they can be faxed to the USPTO are included. Assignment rights and how they relate to divisional, continuation, substitute, continuation-in-parts and provisional applications are discussed. Finally, certain restriction to employees of the USPTO and how they themselves can file and own patent rights is included.
MPEP 400 Representative of Inventor or OwnerThis section contains information regarding how to execute representation for patent application prosecution, proper correspondence with the USPTO and how to change or revoke representation. Additional material is included for when a representative resigns or for situations where representation ceases due to inventors death for example. The rights of a non-signing inventor at the end.
MPEP 900 Classification and SearchSection 6.4 provides an overview of how examiners search for prior art. It also provides some general search guidelines.
MPEP 1000 Matters Decided by USPTO Officials – PetitionsThe subject of petitions is contained in section 6.5 which includes information on timing, who has the authority, and what the different types of petitions are.
MPEP 2000 Duty of DisclosureThe duty of disclosure applied to each inventor, attorney/agent and other people substantially involved in the patent application is contained in section 6.7. This is includes information as to what is required to be disclosed, how it is to be disclosed and what the burden of proof is.
MPEP 2500 Maintenance FeesSection 6.8 deals with the necessary topic of maintenance fees. Sub-topics include what is required when sending the maintenance fees, who can sent the maintenance fees and what the timing is for paying the maintenance fees. Also, information regarding what happens if the fees are not paid are included along with how to remedy a non-payment.
MPEP 2700 Patent Terms and ExtensionsFinally, section 6.9 discusses the terms for an issued patent, how they are calculated and how they can be extended. This includes difference in patent terms for utility versus design patents.
- MPEP 100 – Secrecy, Access, National Security & Foreign Filings
- MPEP 300 – Ownership and Assignment
- MPEP 400 – Representative of Inventor or Owner
- MPEP 900 – Classification and Search
- MPEP 1000 – Matters Decided by USPTO Officials – Petitions
- MPEP 2000 – Duty of Disclosure
- MPEP 2500 – Maintenance Fees
- MPEP 2700 – Patent Terms and Extensions
Summary of the additional supplemental material:There are four pieces of additional material whose subject matter is included in the patent bar exam. These four include the topics of: Bilski Process Claims, Subject Matter Eligibility, 35 U.S.C. § 112 Paragraph 2 compliance and KSR Obviousness Inquiry. Each of these topics deal with recent court rulings which apply to patent law. - See more at: http://www.patentacademyonline.com/course/supplemental-material/#sthash.dfMZSxr6.dpuf
- Best Mode – America Invents Act
- Micro Entities – America Invents Act
- Prior User Rights Defense – America Invents Act
- Prioritized Examination – America Invents Act
- Citation of Prior Art and Written Statements – America Invents Act
- Inter Partes Review – America Invents Act
- Inventors Oath or Declaration – America Invents Act
- Post Grant Review – America Invents Act
- Pre-Issuance Submissions by Third Parties – America Invents Act
- Supplemental Examination – America Invents Act
- Derivation Proceedings – America Invents Act
- First Inventor to File – America Invents Act
- Misc Other 1 – America Invents Act
- Misc Other 2 – America Invents Act
- Misc Other 3 – America Invents Act
The derivation proceeding described in section 3 of the America invents act is intended to ensure the person obtaining a patent is a true inventor and did not derive the invention from another. If a question as to the true inventor arises between two applicants a derivation proceeding can be instituted before the patent trial and appeal Board. The derivation proceeding replaces the interference proceeding.
This Inter Parte Reexamination procedure is being phased out through the America Invents Act. Replacing this procedure is two new procedure called the Post Grant Review and the Inter Parte Review. The America invents act section 6 establishes a one-year time period in which inter partes re-examination is utilized with a different threshold for granting the examination. Previous inter partes re-examination required a substantial new question of patentability to initiate the inter partes re-examination. With the new inter partes review the requester must only show a reasonable likelihood that they will prevail with respect to at least one claim in the challenged patent. The effective date of the new procedures was September 16th, 2012.