MPEP Updates

106

Changes made for consistency with section 4 of the AIA regarding who can apply for a patent.

201.06(c)

Revised to add information pertaining to the oath or declaration requirement under 37 CFR 1.63 for continuing applications filed on or after September 16, 2012, as necessitated by the provisions in the AIA.In subsection I, added discussion of requirements for filing a complete application on or after September 16, 2012, and explanation that in such applications, the filing of the inventor’s oath or declaration may be postponed until payment of the issue fee where the application contains an application data sheet under 37 CFR 1.76 identifying each inventor by his or her legal name, and a mailing address where each inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. Subsection I also revised to set forth that in applications filed on or after September 16, 2012, reference to a prior-filed benefit application indicating the appropriate relationship (i.e., continuation, divisional, or continuation-in-part) must be presented in the application data sheet, whereas in applications filed prior to September 16, 2012 such reference may be set forth in either the first sentence(s) of the specification or the application data sheet.
Subsection II revised to add an explanation of the inventor’s oath or declaration requirements for continuing applications filed on or after September 16, 2012, which claim the benefit of an application filed before September 16, 2012. Also revised to delete a statement regarding a power of attorney included in a signed oath or declaration. Revised to specify that a newly executed oath or declaration is required in a continuation or divisional application naming an inventor not named in the prior application, and in a continuation-in-part application, for applications filed before September 16, 2012.Subsection III revised to state that for continuing applications filed on or after September 16, 2012, claiming benefit of an application filed before September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16,2012. Also revised to indicate that in applications filed on or after September 16, 2012, reference to a prior-filed benefit application indicating the appropriate relationship (i.e., continuation, divisional, or continuation-in-part) must be presented in the application data sheet, whereas in applications filed prior to September 16, 2012 such reference may be set forth in either the first sentence(s) of the specification or the application data sheet.

Added explanation that for applications filed prior to September 16, 2012, if one or more claims are allowed in the continuation or divisional application which are directed to matter shown and described in the prior nonprovisional application but not claimed in the prior application, the applicant should be required to file a supplemental oath or declaration under 37 CFR 1.67(b). For applications filed on or after September 16, 2012, pursuant to 37 CFR 1.67(b), no supplemental oath or declaration will be required. Deleted indication that the examiner should require a new oath or declaration along with the surcharge when it is found that the continuation or divisional application contains new matter relative to the prior application.

Subsection V revised to add discussion pertaining to the filing of a continuation or divisional application without a newly executed oath or declaration when all, or fewer than all, of the previously-named inventors are listed.

Revised to indicate that for applications filed on or after September 16, 2012, the power of attorney may only be signed by the applicant (see 37 CFR 1.42) or patent owner (for reissue applications). Added explanation that with respect to the correspondence address for applications filed on or after September 16, 2012, 37 CFR 1.33(f) provides that where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted.

In subsection VIII, revised the title to “Small Entity or Micro Entity Status” and added indication that the filing of a continuing application requires a new certification of entitlement to micro entity status in the continuing application.

Added that if the filing date of the continuing application is on or after September 16, 2012, the inventor’s oath or declaration must comply with 35 U.S.C. 115 as revised effective September 16, 2012, even though the continuing application may claim the benefit of an application filed before September 16, 2012.

201.08

Revised to update terminology regarding “inventor” or “joint inventors” consistent with terms as defined by AIA.

201.11

Information pertaining to claiming the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 moved to new MPEP §§ 211 – 211.05 and updated for consistency with changes necessitated by the AIA.

210

Subsection III. Requirement for a Statement Under 37 CFR 1.55 or 1.78 for First Inventor to File Transition Applications provides an overview on how the effective filing date of each claimed invention affects whether an application is subject to examination under 35 U.S.C. 102 and 103 as effective on March 16, 2013 or under 35 U.S.C. 102 and 103 in effect on March 15, 2013 (i.e., pre-AIA 35 U.S.C. 102 or 103).Subsection III also provides guidance on whether a transition application must include statement in accordance with 37 CFR 1.55 and 1.78 and the particulars of the statement (i.e., when it must be filed, how the statement should be submitted).

211

Updated for consistency with changes necessitated by the AIA.

211.02(a)

Subsection II provides updated guidance on the procedure for adding a benefit claim, depending on whether the application was filed on or after September 16, 2012, or before September 16, 2012 (pre-AIA).Subsection III provides updated guidance on the procedure for deleting a benefit claim and the implications of doing so, depending on whether the application was filed on or after September 16, 2012, or before September 16, 2012 (pre-AIA).

213

Information herein moved from previous MPEP § 201.13, with revisions necessitated by the AIA.

213.02

Subsection I updates requirements for identifying foreign applications for which priority is claimed based on whether the application was filed on or after September 16, 2012 (AIA) or filed before September 16, 2012 (pre-AIA).

215

Subsection I provides updated guidance for submitting a certified copy of a foreign application, based on the applicability of AIA provisions.

301

Revised subsection V to add information that for applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”) and may be used as the oath or declaration if the assignment is made of record in the assignment records of the Office (consistent with the inventor oath or declaration provisions of section 4 of the AIA).

324

Title of section revised to “Establishing Right of Assignee to Take Action – Application Filed Before September 16, 2012” because the information therein is limited to applications not subject to section 4 of the AIA (provisions pertaining to who may apply for a patent, and to the inventor’s oath or declaration). Added cross-reference to new MPEP § 325 for information relating to the right of assignee to take action in an application filed on or after September 16, 2012.
Revised to explain that pursuant to 37 CFR 1.31, effective September 16, 2012, an owner or assignee who is a juristic entity must be represented by a patent practitioner, without regard to the filing date of the application. However, juristic entities may sign small entity assertions, disclaimers, and submissions under 37 CFR 3.73 to establish ownership, powers of attorney, and powers to inspect an application. Any other paper submitted on behalf of a juristic entity on or after September 16, 2012, must be signed by a patent practitioner.
Subsection II. Establishing Ownership revised to specify that the provisions therein apply to when an assignee first seeks to take action in a matter before the Office with respect to a patent application filed before September 16, 2012, or with respect to a patent or a reexamination proceeding relating to a patent that issued from an application that was filed before September 16, 2012.
Revised subsection III to clarify that when a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed in a design application, the statement filed under pre-AIA 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

325

New section added, “Establishing Right of Assignee to Take Action – Application Filed On or After September 16, 2012.” Added to explain implementation of the provisions of section 4 of the AIA pertaining to who may apply for a patent. Format of new section parallels that of MPEP § 324 which explains the right of assignee to take action in applications filed before September 16, 2012. Introductory portion of section explains that an assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. This portion further explains that a juristic owner or assignee must be represented by a patent practitioner, and describes the limited types of papers that may be signed by a juristic entity.

400

Revised title of chapter to “Representative of Applicant or Owner” for consistency with changes necessitated by section 4 of the AIA (provisions pertaining to who may apply for a patent and to the inventor’s oath or declaration).

402.03

New section added pertaining to signature requirements for papers filed in an application. Subsection I incorporates information previously in MPEP § 402 pertaining to the signature and certificate requirements of 37 CFR 11.18, and adds text emphasizing that pursuant to 37 CFR 11.18(a), every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party. Subsection II incorporates information previously in MPEP § 402 pertaining to acting in a representative capacity pursuant to 37 CFR 1.34, and revises such information for consistency with changes necessitated by section 4 of the AIA (provisions pertaining to who may apply for a patent, and to the inventor’s oath or declaration).

409.03(g)

Revised to clarify that proof of irreparable damage may be establish by a pre-AIA 37 CFR 1.47(b) applicant.

409.03(j)

Revised to indicate that an application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration provided the request for a Statutory Invention Registration was filed before March 16, 2013.

601.01

Revised to update 37 CFR 1.53 and to note that the substantive requirements under 37 CFR 1.53 for applications filed on or after September 16, 2012 as compared to those filed prior to September 16, 2012 (pre-AIA) are the same except for 37 CFR 1.53(f)(pertaining to the completion of a nonprovisional application subsequent to filing).

602

Moved information pertaining to an oath or declaration under pre-AIA 35 U.S.C. 115 and pre-AIA 37 CFR 1.63 in an application filed before September 16, 2012 to MPEP § 602.01(b).

602.01(c)(3)

New section added to discuss requests for correction of inventorship filed before September 16, 2012 (without regard to the filing date of the application). Information herein moved from previous MPEP § 201.03, with revisions as necessary to clarify the applicability of pre-AIA 37 CFR 1.48. For applications filed prior to September 16, 2012, where a 37 CFR 1.48 request is filed on or after September 16, 2012, the provisions of 37 CFR 1.48 in effect as of September 16, 2012 apply because it is the date of the request for correction that controls which version of the rule is applicable.

602.08(b)

New section added directed to inventor signature and name requirements. Includes, and updates for consistency with changes necessitated by the inventor’s oath or declaration provisions of the AIA, information previously in MPEP §§ 605.04(a) – 605.04(f).

701

Revised to include 35 U.S.C. 112 (among 35 U.S.C. 101, 102, and 103) as one of the statutes setting forth the main conditions precedent to the grant of a patent.Included 35 U.S.C. 100 as revised in the AIA and added a note explaining when it is applicable.Revised to include a note explaining when pre-AIA 35 U.S.C. 100(e) remains applicable.

706.02

Revised to include AIA and pre-AIA 35 U.S.C. 102 and 103 and Editor Notes explaining their applicability.Item (C) renumbered as item (D) and revised to include a discussion of applications subject to current 35 U.S.C. 102 in addition to pre-AIA 35 U.S.C. 102.
Subsection VII, revised the cross-reference to Chapter 2300 to mention derivation proceedings.

706.02(a)

Revised to include a cross-reference to MPEP § 2159 for guidance on determining whether the application is subject to the pre-AIA prior art regime.

706.02(a)(1)

New section applicable only to applications subject to examination under the first inventor to file provisions of the AIA.
Subsection I added including a discussion of the availability of a reference as prior art under 35 U.S.C. 102(a)(1).
Subsection II added including a discussion of the availability of a reference as prior art under 35 U.S.C. 102(a)(2).

706.02(c)(1)

New section added for applications subject to the first inventor to file provisions of the AIA.
Indicates that public use and on sale rejections may be based on uses and sales from anywhere in the world and must be “public.” Indicates that secret commercial sales should not be applied as “on sale” prior art under 35 U.S.C. 102(a)(1). Revised to include a cross-reference to MPEP § 2154.02 for uses or sales that are subject to the exceptions set forth in 35 U.S.C. 102(b)(1).

706.02(c)(2)

New section added for Public Use or On Sale under pre-AIA 35 U.S.C. 102(a) and (b). This section does not pertain to applications subject to the first inventor to file provisions of the AIA.

706.02(f)(2)

Revised to include a discussion of provisional rejections under 35 U.S.C. 102(a)(2) for applications subject to the first inventor to file provisions of the AIA.
Revised to indicate form paragraph 7.15.01.aia should be used when making a provisional rejection under 102(a)(2), and 7.15.01.fti when making a provisional rejection under pre-AIA 102(e).

707.07(j)

Revised form paragraphs ¶ 7.34.01, ¶ 7.34.02 regarding allowable subject matter, claims under 112(b) or pre-AIA 112, second paragraph, and ¶ 7.34.04 regarding suggestion of allowable drafted claims, pro se.

710.02(c)

Revised text to indicate that an applicant may be required to add a claim to provoke an interference for an application subject to pre-AIA 102(g).

715

Revised to include an Editor Note indicating the section and the provisions of 37 CFR 1.131(a) are not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).
37 CFR 1.131 updated to reflect AIA revisions.Changed reference to “MPEP § 201.13” to “MPEP § 213.01” regarding WTO countries. Revised to indicate that affidavits or declarations under 37 CFR 1.131 may be used to overcome rejections in applications subject to pre-AIA 35 U.S.C. 102, and to overcome rejections under pre-AIA 35 U.S.C. 102(g) in applications subject to pre-AIA 35 U.S.C. 102(g) and current 35 USC 102.
Changed all references to “35 U.S.C. 102(a)” to “pre-AIA 35 U.S.C. 102(a),” “35 U.S.C. 102(b)” to “pre-AIA 35 U.S.C. 102(b),” “35 U.S.C. 102(e)” to “pre-AIA 35 U.S.C. 102(e),” and “35 U.S.C. 102(g)” to “pre-AIA 35 U.S.C. 102(g).”

715.01

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

715.05

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

715.07

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

715.07(a)

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

715.07(b)

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

715.07(c)

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

715.1

Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

716.1

Revised title to insert “Affidavit or Declaration to Overcome Rejection Under Pre-AIA U.S.C. 102 or 103.”
Revised to include an Editor Note indicating this section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

717.02

Added section “Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C)” which is only applicable to applications subject to the first inventor to file provisions.

717.02(a)

Added section “Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked” which is only applicable to applications subject to the first inventor to file provisions.

717.02(c)

Added section “Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)” which is only applicable to applications subject to the first inventor to file provisions.

717.02(d)

Added section “Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)” which is only applicable to applications subject to the first inventor to file provisions.

718

Revised to indicate that 37 CFR 1.131(c) cannot be used to overcome rejections under pre-AIA 35 U.S.C. 102(b).
Revised to indicate that a terminal disclaimer cannot overcome statutory double patenting.
Changed “prior inventor under 35 U.S.C. 104” to “prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.”

1120

Revised to update 37 CFR 1.211, as necessitated by the AIA, for publication of applications; retained pre-AIA 37 CFR 1.211 as instructions for publication of applications filed before September 16, 2012.
Added, in subsection III, the Office may delay publication until an application includes an executed oath or declaration under 37 CFR 1.63 and/or an application data sheet for applications filed on or after September 16, 2012. In subsection IV, updated the name of the Office of Data Management – Patent Publication Branch.

1130

Revised subsection A, item (D), granting a request for corrected publication for a material mistake by the Office, by adding, for consistency with the AIA, for applications filed on or after September 16, 2012, a material mistake example of missing the benefit claim in an application data sheet (ADS). Also, the previous material mistake example of missing the benefit claim was updated to state “for applications filed before September 16, 2012” (pre-AIA).
Revised subsection B, item (C), denying requests for corrected publication when there is a non-material mistake, by adding, for consistency with the AIA, where the priority claim was not timely filed or not properly submitted in an application data sheet (ADS) for applications filed on or after September 16, 2012. Also, the previous example of the priority claim was not timely filed was updated to state “for applications filed before September 16, 2012” (pre-AIA).

1216

Revised to clarify that pre-AIA 35 U.S.C. 315 continues to apply to inter partes reexamination proceedings in accordance with the Leahy-Smith America Invents Act, Pub. L. No. 112-29 § 6(c)(3)(C) and 37 CFR 90.1.
Revised to insert sub-section heading “III. Judicial Review of Inter Partes Review, Post-Grant Review, Covered Business Method Review, and Derivation Proceedings”.

1412.02

In subsection II, added that certain continuing broadening reissue applications claiming the benefit of a prior filed broadening reissue application filed within two years of grant of the original patent may take advantage of pre-AIA 35 U.S.C. 103(b).

1414.02

Added discussion of reissue oath or declaration in reissue applications filed before September 16, 2012.
Subsection II explains that the oath/declaration must comply with pre-AIA 37 CFR 1.63 and that the Office of Patent Application Processing reviews for compliancy.

1444

Clarified the review required of reissue oaths and declarations by separately explaining the review of oaths and declarations filed in applications on or after September 16, 2012 and applications filed before that date.

1449.02

Revised to limit the reissue applications that may be placed into interference to reissue applications subject to pre-AIA 35 U.S.C. 102(g).

1481.02

Modified to discuss the changes to 35 U.S.C. 256 by the AIA.Updated to include subsections on current 35 U.S.C. 256 and pre-AIA 35 U.S.C. 256 for requests for correction filed before September 16, 2012.Added new text in subsections I and III to provide guidance on filing and processing requests filed on or after September 16, 2012.

1503.01

Revised to recite current 37 CFR 1.153 regarding title, description and claim, oath or declaration to reflect and revised prior version to recite“Pre-AIA” (for applications filed prior to September 16, 2012).Revised to replace, in form paragraph 15.05 item (5), “descriptive statement” with “feature description” for design patent specification arrangement.In subsection I, updated references to 35 U.S.C. 112, by incorporating 35 U.S.C. 112(a) and/or 35 U.S.C. 112(b) for applications filed on or after September 16, 2012 and former 35 U.S.C. 112 first and/or second paragraphs for applications filed before September 16, 2012.

1504.02

Revised by updating 35 U.S.C. 102, Conditions for patentability; novelty, for consistency with changes in the provisions of the AIA.Revised by updating 35 U.S.C. 172, Right of priority, for consistency with changes in the provisions of the AIA and newly added 35 U.S.C. 102.Revised to insert “fti” (first-to-invent) to form paragraph 15.03.01 to become 15.03.01.fti for foreign filing more than 6 months before U.S. filing.Revised to insert form paragraphs 15.09.02.aia and 15.09.03.aia, directed to Statement of Statutory Bases, 35 U.S.C. 171 and 35 U.S.C. 115 – Improper Inventorship and rejections for failure to set for the the correct inventorship.

Revised to insert form paragraph 15.24.05.fti, Identical Claim: Common Assignee, in order to update now-deleted form paragraph 15.24.05 for consistency with changes in the provisions of the AIA.

Revised to incorporate form paragraphs for provisional rejections under 35 U.S.C. 102(a)(2), “aia”, and pre-AIA 35 U.S.C. 102(e), “fti” to provide an explanation of the rejection.

1504.03

Revised to insert 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter, for consistency with changes in the provisions of the AIA, that focus on the prior art at the time of effective filing date of the claimed invention” instead of the prior art at the time of the invention that was set forth by the previous version of 35 U.S.C. 103.

1504.04

Revised to add 35 U.S.C. 112 Specification, (a) In general and (b) Conclusion, for consistency with changes in the provisions of the AIA.Revised occurrences of 35 U.S.C. 112, by incorporating 35 U.S.C. 112(a) and (b), as necessitated by the AIA, and specifying that 35 U.S.C. 112, first and second paragraph, is applicable for applications filed prior to September 16, 2012, 35 U.S.C. 112, when necessary.Revised to update form paragraph 15.21, Rejection, 35 U.S.C. 112(a) and (b), as necessitated by the AIA, or pre-AIA 35 U.S.C. 112, First and Second Paragraphs.Revised to update form paragraph 15.20.02, Suggestion to Overcome Rejection under 35 U.S.C. 112(a) and (b), as necessitated by the AIA, or pre-AIA 35 U.S.C. 112, First and Second Paragraphs.

1504.05

In subsection II. A., revised occurrence of 35 U.S.C. 112, by incorporating 35 U.S.C. 112(a), as necessitated by the AIA, and specifying that 35 U.S.C. 112, first paragraph, is applicable for applications filed prior to September 16, 2012, 35 U.S.C. 112.

1504.06

Revised to update the prior rejections that must be considered in addition to the double patenting rejection in view of the changes in the AIA.

1504.1

Revised to add 35 U.S.C. 172, Right of priority, for consistency with changes in the provisions of the AIA.

2152.02(d)

Discusses that there is no geographical limitation of where the on sale activity occurs under 35 U.S.C. 102(a)(1).Briefly mentions the pre-AIA case law concerning on sale activities and states that on sale activities under current 35 U.S.C. 102(a)(1) have the same substantive scope under pre-AIA 35 U.S.C. 102(b), except for secret activities.

2152.02(f)

Explains that a key difference between pre-AIA 35 U.S.C. 102(a) and current 35 U.S.C. 102(a)(1) is that the latter eliminated the “by others” requirement of the former.

2158

Discusses some differences between current 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a), such as obviousness is determined as of the effective filing date for the former instead of at the time the invention was made. Explains that the provisions of pre-AIA 35 U.S.C. 103(b) and (c) have been eliminated.

2159.01

Explains that for applications filed before March 16, 2013, pre-AIA 35 U.S.C. 102/103 applies even if a request for continued examination is filed after March 16, 2013.Similarly, pre-AIA 35 U.S.C. 102/103 applies to a PCT international application filed before March 16, 2013 even if it enters the national stage after March 16, 2013.

2159.02

Discusses when 35 U.S.C. 102/103, as changed by the AIA, are applicable to applications filed on or after March 16, 2013. For example, if such an application contains, at any time, a claim that has an effective filing date after March 16, 2013, it is subject to AIA 35 U.S.C. 102/103. Provides an explanation for how claims that contain new matter are treated for purposes of determining whether the claims have an effective filing date on or after March 16, 2013.

2159.03

Explains that even if AIA 35 U.S.C. 102 and 103 apply to an application, pre-AIA 35 U.S.C. 102(g) may also apply if the application contains, at any time, a claimed invention having an effective filing date before March 16, 2013 or is designated as a continuing application of an application that contains such a claim.

2159.04

States that if an application is filed on or after March 16, 2013, claims the benefit of, or priority to, an application filed before March 16, 2013, and also contains a claim having an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.

2800

 New Chapter Added “Supplemental Examinations”

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