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PEP 716.09 – Sufficiency of Disclosure

PEP 716.09 – Sufficiency of Disclosure

Once the examiner has established a prima facie case of lack of enablement, the burden falls on the applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would have been able to make and use the claimed invention using the disclosure as a guide.[1]      Evidence to supplement a specification which on its face appears deficient under 35 U.S.C. 112 must establish that the information which must be read into the specification to make it complete would have been known to those of ordinary skill in the art.[2]

Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite.[3]

Affidavits or declarations purporting to explain the disclosure or to interpret the disclosure of a pending application are usually not considered.[4]

[1] In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).

[2] In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981)

[3] In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991)

[4] In re Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 1944).

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MPEP 211 – Claiming The Benefit Of An Earlier Filing Date Under 35 U.S.C. § 120 And § 119(e):

MPEP 211 – Claiming The Benefit Of An Earlier Filing Date Under 35 U.S.C. § 120 And § 119(e):

Disclosure in an earlier filed application that provides an enabling disclosure per 35 U.S.C. § 112 can be used to claim priority by claiming the benefit of the earlier filed application.  A claim of benefit can be made to a national or an international application.  A provisional or non-provisional application can be used for another patent to claim the benefit to.

The following must be met to receive benefit: same disclosure, both co-pending, a specific reference to prior applications must be made in the first paragraph (and include relationship to the new application), one inventor should be in common, and it must be made in the proper time period.

For all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.

One can petition for unintentional delay if the benefit is not claimed within the later of: four months from the actual filing date of the application, 16 months from the filing date of the prior application (for 35 U.S.C. § 111(a) or national stage application), or no later than 12 months from the prior application for 35 U.S.C. § 119(e) provisionals. This must be accompanied by english translation if in foreign language and include statement that the translation is accurate for each application claiming the benefit of the provisional application.

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2.15 – 35 U.S.C. § 112 1st Paragraph

35 U.S.C. § 112 1st Paragraph

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such a full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

 

To summarize, the specification of the patent needs to contain a written description of the invention and the manner of making and using it in such full clear and concise language that one who is skilled in the art pertaining to the invention would be able to make and use the invention.  This must include the best mode contemplated by the inventor.

1) Written Description Requirement:

The written description requirement is intended to make clear what the applicant invented. Full disclosure is required.  The written description should be clear and concise with exact terms.

No New Matter:
“New matter” cannot be added by amendment to an applicant’s disclosure after its filing per 35 U.S.C. § 132 & 251.  New matter arises in information of an amendment to the claims, specification and drawings which are not included in the original disclosure.  It is not considered new matter if you simply reword a sentence  make explicit material incorporated by reference or make an inherent function explicit.

Specific Issues:

1) Amendment affecting a claim through the addition of material in an application:  Can be an amendment to the specification or the claims.  An amendment to correct an obvious error does not constitute new matter if one skilled in the art would recognize the error and the appropriate correction.  If there is a new claim being added it must be fully supported by the written description as originally filed.

2) Reliance on filing date of patent:  If claiming priority to earlier application, the subject matter must meet 35 U.S.C. § 112 1st paragraph requirement.  If claiming foreign priority, the subject matter must meet 35 U.S.C. § 112 1st paragraph requirements.

3) Changes to the scope of the claims: If the claims are narrowed or broadened care must be taken to ensure there is not a 35 U.S.C. § 112 error resulting from the change as this often happens.
This includes the altering of numeric ranges in a claim.

2) Enablement Requirement:

The specification must describe to one skilled in the art how to make and use the invention.  This is at the time the invention is filed.  If the enablement requirement is not met, the application ma be rejected under 35 U.S.C. § 112 for lack of enablement.

For a lack of enablement, one of the following conditions must be met:

1) Undue experimentation is required:  An individual skilled in the art should not have to conduct undue experimentation to make and use the invention.  Reduction to practice is not required if the disclosure enables one of ordinary skill in the art to make/use the invention without undue experimentation.  Complex experimentation is not necessarily undue experimentation if it is common in the art to which the invention applies.  This is as long as all the information necessary to perform the complex information is disclosed and one of reasonable skill in the art can make/use the invention.  Factors considered for determining if necessary experimentation is undue include: breadth of the claims, nature of the invention, prior art stat and level of ordinary skill.

2) Broadness of claims:  A specific reference in the specification to a feature of the invention which is crucial to its make/use which is not included in the claims can result in lack of enablement.  This makes the claims too broad.

3) Utility requirement is not met:  If a claim is not useful or inoperative it does not meet the enablement requirement due to lack of utility.  A claim can not be useful if it is inoperative or doesn’t provide a benefit of some sort.  The specification can not show how to use a useless invention.

3) Best Mode Requirement:

Since the act of patenting is a disclosure of a secret for a time limited monopoly on the secret, the law wants the patentee to disclose the best mode to use the invention.  This ensures that the applicant can not partially disclose his invention and receive a federal monopoly on the invention yet still retain the best way to use the invention as a trade secret.  Otherwise the patentee could disclose a less than desirable mode of usage in exchange for the monopoly yet still keep the best mode a secret for himself.  Examiner assumes the best mode is disclosed unless evidence proving other wise is discovered.  Evidence of concealment is the only relevant evidence.

Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority.

The best mode requirement is based on the time the application is filed.  A later finding of a better mode does not require disclosure.  The later finding of other superior modes also does not require disclosure.  This is only required at the time of filing the patent.

The disclosure does not have to point out the best mode as long as it is contained in the disclosure.  This can be subjective based on what outcome is wanted.  Updating of best mode after filing is not required even if perfecting priority to a previous application.

Failure to disclose best mode in the original application can not be corrected through an amendment.

A specific example is not required.  A preferred range of parameters could be good enough.

America Invents Act Update – Best Mode

Section 15 of the America invents act amended 35 USC 282 to provide that “the failure to disclose the best mode shall not be basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”  Although best mode is still required per 35 U.S.C. § 112(1) it can not be the basis for invalidating a granted patent.

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4.2 – MPEP 600 Parts, Form and Content

Parts, Form and Content Featured

MPEP 601: Content of Provisional and Non‐Provisional Applications

The following are general application requirements for provisional and non-provisional applications.

The size of the sheets used for the applications should be 8.5 X 11 inches with the following margins used: Top 3/4inch, Left 1inch, Right 3/4inch and Bottom 3/4inch.  There should be no holes in the sheet and the line spacing should be 1.5 or 2.0.  The pages should be numbered in the middle and the USPTO prefers the numbering to be at the bottom of the page.

For Non-Provisional applications filed under 35 U.S.C. § 111(a) the main items should be in upper case without underlining or bold type.  The preferred arrangement for the specification is as follows: Title of the invention (MPEP 606), Cross-reference to related applications (MPEP 201.11), Statement regarding federally sponsored research or development (MPEP 310), Names of the parties in a joint research agreement (37 C.F.R. § 1.17(g)), Reference to “Sequence Listing”, any tables, any computer program listings follow by any appendix or incorporation by reference material included on a CD.  Additionally, an utility patent application transmittal form or transmittal letter should also be included.

The background of the invention (MPEP 608.01(c)) should include the field of the invention with a description of related art including an information disclosure statement (reference 37 C.F.R. § 1.97 and § 1.98).  There should be a brief summary of the invention (MPEP 608.01(d)) and a brief description of several views of the drawing (MPEP 608.01(f)) followed by a detailed description of the invention (MPEP 608.01(g)).  The claims (MPEP 608.01(i)-℗)should follow the detailed description of the invention and should be included on a separate sheet.  A sequence listing should then follow the claims (if the sequence listing is on paper (37 C.F.R. § 1.821-825) and not CD).  Reference 37 C.F.R. § 1.53(b) for the filing of original, reissue, substitute non-provisional and continuing application.  The filing date of the application is assigned when the specification is received with a description, claims and any necessary drawings.

Reference 37 C.F.R. § 1.53(d), for continuation or divisional applications of a design application (not for continuation-in-part) they must be filed during the pendency of the original application and must include any required fees and an oath/declaration which can be filed after the filing date.  One cannot include new matter in the continuation or divisional application.

For provisional applications filed under 35 U.S.C. § 111(b), the same preferred order as a non-provisional application should be followed.  A filing date is given once the description and necessary drawings are received by the office.  An applicant must make it clear that the application is a provisional application or it will be treated as a regular non-provisional application.  Provisional applications require a cover sheet which includes: identification of the application as a provisional, residence of the inventor(s), title of the invention, name and registration number of the attorney or agent, docket number used by the person filing the application, a correspondence address, any government interest in the application.  Unlike non-provisionals an information disclosure statement cannot be included with the filing, if it is included it will not be accepted by the USPTO.

For applications filed without drawings, if no drawing is initially included the examiner will determine if there is a drawing referred to in the specification and if the drawing is necessary to understand the invention.  Usually drawings are not necessary for applications with: at least one process or method claim, composition applications, coated items/products, items made from particular material or composition, laminated structures, articles, apparatus or a system where the sole uniqueness is a specific material.  If there is a requirement for a drawing, the office will file a “Notice of Incomplete Application” and no filing date will be given until the “Notice of Incomplete Application” is fixed.

Power of Attorney (POA) must include the full address of the attorney or agent and their telephone and fax numbers.  This can be incorporated in the oath/declaration if given by the inventors or a separate power of attorney form can be used.

Application Data Sheet and Bibliographic Information

An application data sheet (ADS) contains information specific to the application and invention including the name, residence, mailing address and citizenship of each applicant.  Also contained should be the correspondence information for where any communications from the USPTO should be sent.  In addition to the applicant and correspondence information, the ADS should also contain some application information such as the title of the invention, the suggested classification (class and sub-class), the technology center to which the subject matter is assigned, the total number of drawing sheets, the suggested drawing figure for publication, the docket number assigned to the application and the type of application (plant, design, utility, reissue, CIP, etc…).  Any information pertaining to a secrecy order should be included as well.  If there is a representative for the case this should be noted along with their registration number.  Domestic priority information if any along with application number and filing date.  If there is benefit claimed to a different application, the ADS should describe the status and relationship of each application for which benefit is claimed under 35 U.S.C. § 119(e), § 120 and § 365c.  If there is any foreign priority this information should be included as well and this can include: the application number, the country and filing date of each foreign application for which priority is claimed.  Assignee information such as the name, address should be included.  Finally, the name(s) and citizenship(s) of the inventors can be included as well (these must be included in the oath and declaration but can also be included in the ADS).

Supplemental ADS Requirements:

The supplemental application data sheet should be titled as such and must be a full replacement copy of the original ADS.  Changes from the original ADS should be specified by underlining for additions and strikethrough or brackets for deletions.  The footer of the ADS should contain the word “supplemental”.  Finally, as with the original ADS, the supplemental should include the application number and filing date.

Incomplete Applications: If the application as submitted is incomplete one of the following will be sent out to the correspondence address.

Notice of Missing Parts: This is sent out if there is enough information for a filing date granting, but the oath/declaration, translation or fee is missing.

Notice of Incomplete Application: This is sent out if there is not enough information provided for a filing date granting and as such the application is not accorded a filing date.  The application is processed as incomplete under 37 C.F.R. § 1.53(e) if the period of the notice lapses and the applicant has not completed and filed the missing parts of the application or filed a petition under 37 C.F.R. § 1.53(e) with the requisite fee.

Notice to File Corrected Application Papers:  These applications can get a filing date, but only if the deficiencies are corrected within the time specified on the notice.  This will occur if the specification is non-complying and will be sent with 37 C.F.R. § 1.52.

Notice to Omitted Items:  The filing date depends on the form of correction required.  A notice is sent out if the application is missing a critical page.  AN application can choose to send in the missing page which readjusts the filing date to the date the page is received.  Or, the applicant can choose not to send in the missing information.  In this case the application will retain its original filing date, but the applicant can never submit the missing documents in the future.  A preliminary amendment of the specification is required to renumber the pages consecutively and cancel any incomplete sentences caused by the absence of the omitted pages.  The missing papers must be sent within 2 months of the date which is posted on the notice of omitted items.  An additional oath/declaration should be submitted referring to the omitted pages with a petition under 37 C.F.R. § 1.182.  An applicant can file a petition with a fee un 37 C.F.R. § 1.53(e) with evidence of deposit if they believe the missing items were originally deposited with the original disclosure.  Evidence of this original submittal is also accepted.  A filing date is granted once these items are received.

MPEP 602: Original Oath or Declaration

The following are requirements for the original oath or declaration:  The oath or declaration must be executed.  There is not limit on the age of a person to sign the oath or declaration as long as there is proof that they understand what they are signing.  Each inventor must be identified by full name that includes the last name with at least one given name.  The citizenship of each inventor should also be included.  A statement that each person making the oath or declaration believes the inventors named are the original and first inventor or inventors of the subject matter claimed to be patented should also be included.  The application to which the oath or declaration is directed to should be clearly stated.  Finally two statements should also be included which state that the persons making the oath or declaration have reviewed and understand the contents of the application including the claims and any amendments specifically referred to in the oath or declaration along with acknowledgement that the person making the oath or declaration knows the duty to disclose to the office all information known by the person to be material to patentability of the subject matter sought to be patented per 37 C.F.R. § 1.56.

If not included in an application data sheet, the oath or declaration should also include the mailing address and residence of the inventors.  Any foreign applications for patent or inventors certificate for which a claim for priority is made along with any foreign applications having a filing date before that of the application on which priority is claimed should also be included.

An oath or declaration can never be amended.  In place of an amendment, a new oath or declaration can be submitted if errors exist in the original.  Some errors in the oath or declaration can also be corrected in an application data sheet.

America Invents Act – Inventor’s Oath or Declaration Update

Section 4 of the America invents act affects requirements regarding the inventors oath or declaration.

Specifics

This change provides for the submission of an inventor’s declaration in place of an inventors oath.  The inventor no longer required to state his or her country of citizenship, that they are the first inventor, application is made w/o deceptive intent.  New requirements include the necessity to state that they are an original inventor of the claimed invention and that they authorized the filing of the application.

The new rules also allow for the applicant to provide a substitute statement explaining the situation in lieu of the inventors oath or declaration if the inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort, or the inventor is under an obligation to assign the invention but has refused to make the oath or declaration.

The changes allow for an examination to take place without the submission of an oath or declaration, however the office will likely not allow examination without these documents.  The office feels that the inventors oath or declaration is needed before examination so that 35 USC 102 issues can be adequately considered.  Also, true inventor should be established before a rejection based on double patenting can issue.

A non-inventor is allowed to file an application if: It is assigned to them; The inventors under an obligation to assign the invention; The non-inventor shows sufficient proprietary interest.  A company can be the applicant but the inventor must still sign the Oath/Declaration.

An Oath/Declaration substitute statement can only be used if the inventor: Refused to execute an Oath/Declaration; Can’t be found/reached (Diligent effort required); Is deceased or Is legally incapacitated.

If an assignee is the applicant the assignee can grant power of attorney. The assignee no longer is required to establish ownership before granting power of attorney.  A combination Oath/Declaration & assignment can be filed.

One final change regarding inventorship allows the office to grant a patent to “real party in interest” when the application is filed by a person other than the inventor.

This provision allows a Notice of Allowance to issue only if: Oath/Declaration is filed or; substitute statement for Oath/Declaration is filed or; assignment with Oath/Declaration and required signatures is filed and on record.

Applicant can file the Oath/Declaration upon filing the application or at issuance of notice of allowance.  However, if at the notice of allowance this must have a signed application data sheet identifying the inventive entities (each inventor, mailing addresses of inventors and residences).

If Oath/Declaration omitted and patent is in condition for allowance a Notice of Allowability will be filed requesting the Oath/Declaration or signed ADS.  If no Oath/Declaration or ADS is filed the office will send Notice to File Missing Parts to start the examination.

In CIP applications the original application’s declaration can be used to define the inventive entity.

If there is an additional new inventor on the CIP an ADS or additional declaration can be used to add the new inventor.  The old declaration can be used for the inventor from the original declaration, but it must conform to 35 U.S.C. 115.  The new declaration for a new inventor does not need to include the original inventor.

New statutory language for Oath/Declaration form:  “The application was made or authorized to be made by the affiant or declarant”; Penalties clause acknowledgement must include, “imprisonment of not more than 5 years”; the new Oath/Declaration form with the required language is on the USPTO website.

MPEP 605: Applicant

For applicants signature and name, the signature does not have to be in English letter.  If a separate party holds proprietary interest in the application and the inventor refuses to sign the applicant can sign on behalf of the inventor.  The inventor must be unable or refuse to sign however.

In the case of joint inventors on an oath or declaration the list is how they will appear on the issued patent.  To be an inventor the person must have contributed to at least one claim.  For provisionals, each inventor must have contributed to the subject matter since there are no claims.  Inventors can file a patent jointly even if they did not physically work together, did not work on the invention at the same time, did not make the same type or amount of contributions and each did not make a contribution to the subject matter of every claim.  Refer to 35 U.S.C. § 116.

MPEP 606: Title of the invention

The title of the invention should be descriptive, accurate and fewer than 500 characters.  The title can not start with “a”, “an” or “the”.  The examiner can require a new title if the original title is not descriptive enough.

MPEP 607: Filing Fee

Each of the following fees are separate and distinct fees: filing fee, search fee and examination fee.  They are due upon the filing of a non-provisional application.  Additionally, there is an application size fee fi the application is over 100 pages.  This application size fee is in addition to the basic filing fees.  For every 50 pages over the 100 page limit of the application size fee and additional fee is charged.  If the application is submitted through the electronic filing system (EFS), the page number count is 75% of the actual page numbers.  There is also an excess claims fee which is charged for each independent claim in excess of 3.  Each independent or dependent claim in excess of twenty will be charged this fee.  Canceled claims are not included in the total count.  Fees for proper multiple dependent claims (MDC) are calculated based on the number of claims from which they depend.  An improper MDC counts as one claim.

A fee payment is made in the following order: basic filing fee, application size fee, late filing surcharge, processing fee for non english applications, search fee, examination fee and excess claims fee.  The office can only refund fees which are paid by mistake or fees which are paid in excess of what is required.  If the applicant takes action by mistake and pays a fee that is not a “fee paid by mistake” a refund request must be filed within a two-year limit and the time period is not extendable.  Requests for refunds which are based on a later establishment of small entity status must be filed within three months of obtaining the small entity status.

MPEP 608: Disclosure

The following are rules pertaining to the disclosure requirements of U.S. Patent law:

Specification:

The specification is a description in writing of the invention which described how to make and use it.  The description should also explain its novelty and any improvements from the prior art.  This should be on a separate sheet with text in the form of non-script type font.  The spelling used in the description can be in British style English.  Hyperlinks are only acceptable when they are part of the invention itself.  One cannot incorporate subject matter by reference using hyperlinks.  The specification can contain tables and/or chemical formulas in place of formal drawings.  The written description can not contain: drawings, flowcharts or graphs.  The specification may not reserve future applications of the subject matter disclosed but must be limited to the known applications of the subject matter disclosed at the time of the filing.  Specifications can be filed in non-english language but they must be accompanied by an english translation which has a signed statement that the translation is accurate.  This is limited to emergent situations and they must be filed within the specified time perlod of 37 C.F.R. § 1.52 and accompanied with the proper fee.

The following is the preferred (but not required) arrangement of a non-provisional application: Title of the invention, cross-reference to related applications, statement regarding any federally sponsored research and/or development, names of the parties in any joint research agreement, any references to sequence listings, any tables, computer program listing appendix submitted on CD(s) incorporated by reference with the total number of CDs including any duplicates, background of the invention, field of the invention and description of the related art, brief summary of the invention, brief description of several views of the drawings, detailed description of the invention, claim(s), abstract of the disclosure and any sequence listings if on paper.  The section headers should be in uppercase without any underlining or bolding.

Abstract of the disclosure (MPEP 608.01(b)):  This should be in such clear wording that even one not skilled in the art can understand the nature and gist of the disclosure.  There should not be any comparisons to prior art in the abstract though.  It should include if it is a machine or apparatus, an organization and operation, an article, a method of making something, chemical compound (include it’s identity and use), a mixture (include it’s ingredients) or if it is a process (include it’s steps).  The abstract should be on a separate sheet of paper and be a single paragraph between 50-150 words and no more than 15 lines.  The language should be clear and concise and not repeat any information contained in the title.

Background of the invention:  Two parts are required for the background of the invention.  The first is the fuel of the invention which should include a statement of the pertinent field of art.  The second is the description of the related art which should include a brief description of the pertinent prior art and include any references where appropriate.

Brief summary of the invention:  This should define the exact nature, operation and purpose of the invention.  It should be consistent with the subject matter of the claims.

Brief description of the drawings:  Each drawing which is comprehendible should be thoroughly described in this section.  Every label on the drawings must be clearly defined.

Detailed description of the invention:  The description of the invention should be written so that one skilled in the art could easily know how to make and use the invention after reading it without extensive experimentation (unless extensive experimentation is common in the field of the art).  Table can be included in the description portion of the specification and if table are included in the description they are not allowed in the drawings.  It is either one location or the other not both.

Mode of operation of the invention:  The best mode of operation of the invention known at the time of filing the application needs to be included in the disclosure.

Claims:

The claims distinctly point out and define what the applicant is seeking legal protection for per MPEP 608.01(k).  The original claim numbering must be kept during prosecution of the patent application.  If claims are added or deleted during the applications prosecution they can be renumbered only after allowance.  As previously mentioned, the claims are located at the end of the specification.  If there is more than one claim is should be separated with a line of indentation.  Claims should be arranged from the broadest claim first to the narrowest claim last and similar claims should be grouped together.  For example product and process claims need to be grouped together.  A claim with is dependent on another claim should not be separated by a claim which does not also depend on that claim.  For measurements the proper units are metric, but this can be followed by english units.  The claims can contain tables if they meet the specification guidelines.  Duplicate claims are allowed covering the same subject matter.  The preamble of the claim should define the description of the art which allows for the disclosure of the elements or steps that make up the claim limitation.  A claim should begin with an expression defining the defined subject matter such as “I claim” or “The invention claimed is” and should begin with capital letters and end with a period.  Semicolon or commas should separate each paragraph.  If a claim has steps, the last step should use the “and” conjunction.

Aside from these general rules for claims there are also some specific claim types such as Markush claims, Jepson Claims and dependent claims.  Markush claims are used to describe a group of things when there is no generic term to describe the group.  A Markush claim uses the terms “consisting of” and “and” to define the group.  An example would be metals consisting of copper, zinc, tin and lead.  The consisting of term limits the coverage to only the items listed unlike the term comprising which is open ended.  Jepson claims are claims which include a preamble, which can be used as prior art, that defines what is old.  They have transitionary phrases to define the new improvement from the old.  Dependent claims refer back to preceding claims.  A dependent claim must always be after the claim from which it depends.  Another form of dependent claims is multiple dependent claims which refer back to preceding claims in alternative form.  Unlike a regular dependent claim, a multiple dependent claim refers back to multiple claims as the name suggests.  The preceding claims can be either in independent or dependent form but can not be another multiple dependent claim.  Multiple dependent claims can only refer to one set of claims and must be in alternative form (i.e. claims 1,2,3 or 4).  For fee calculation purposes multiple dependent claims are considered to be the number of dependent claims to which they refer.

For dependent claims one can use the infringement test to determine if the claim is properly constructed.  A proper dependent claim would not be infringed upon by anything that would not also infringe upon the basic claim upon which it depends.  A dependent claim includes every limitation of the claim from which is depends by nature of the claim.  This can depend on the language used such as consisting or comprising.  Consisting language defines an exclusive list contained to what is disclosed.  The exact combination must be present to infringe.  Comprising language defines a non exclusive list not only contained to what is disclosed.  The comprising language defines the minimum required to infringe.

Claim form and arrangement:  As noted above, dependent claims should not be separated from the claim to which they depend and can only be separated by another claim depending from the same claim.  When a base claim is canceled any dependent claims are rejected by the examiner.  If a base claim is rejected by the examiner the dependent claims are objected to by the examiner and not rejected.  Dependent claims which are objected to can be rewritten in independent form if desired.

An applicant cannot use derogatory remarks about prior art in the specification but general statements regarding the prior art can be referenced in the specification.  Trademarks can be used in the specification, but the language must be clear enough that there is no question to the identity of the item described through the trademark.  Trade names can be used, however if it is a trade name which is know to those skilled in the art and not the public the meaning of the trade name must be established by an accompanying definition which is precise and informative.

Drawings:

Drawings are usually required to fully disclose the invention.  The following types of inventions do not require drawings: coated items, items made from specific material or compositions, laminated structures and items which sole novelty is a particular material.  Applications which require a drawings but none are included are not granted a filing date until the proper drawing is received.  The drawings must show every feature of the invention as specified in the claims and any improvements from the prior art.  The drawings may include labels and symbols where they are appropriate.  Center lines and projection lines should not be included.  Arrows are okay if there meaning is clear and does not lead to confusion.  Any wording of size or scale should not be included and the size can alter with reproduction of the patent papers leading to inaccurate measurements.  Drawings are submitted on paper which is flexible, non-shiny, smooth, white, durable and strong and the size of the paper should be A4 or 8.5″ x 11″.  All pages have to be the same size.  Color drawings are sometimes allowed through way of a petition.  The petition needs to include the proper fee, 3 sets of the color drawings and a specification amendment directing the public to the color drawings.  If submitting drawings after the original application is filed one should include a sheet titled “Replacement Sheet” or “New Sheet”.  For drawings submitted after the original filing no new matter can be added through the drawings.  Corrected drawings can be submitted which include corrections of informalities or changes approved by the examiner.  Informal drawings do not comply with the drawing requirements and an examiner can require a correction to make these drawings acceptable.  If canceling a figure during the prosecution of a patent application a replacement sheet needs to be submitted.  If only a figure in the drawing is being canceled one must submit a marked-up copy of the drawing with some annotations stating the cancellation.  On some occasions, photographs are allowed if drawings do not sufficiently depict the invention.  They are usually black and white photographs.  These photos must be developed on the same size paper (A4 or 8.5″ x 11″) and meet the same margin requirements.  In rare occasions color photographs can also be accepted.

Tables:

which have a large length are required to be submitted on a CD or in e-form format.  These large tables are not published as part of the patent document, but are published on the sequence homepage of the USPTO.  The patent will contain a lengthy table statement directed the public to look for this additional information.  The default view for tables is portrait view unless landscape view is specified.

Models, exhibits or specimens:

These are usually not accepted unless requested by the examiner.  Biotechnology inventions sometime require specimen submittal so that they are available to the public for inspection.

New matter:

This is matter which is not adequately disclosed in the original specification or that was not disclosed all together.  Claims which have new matter will be rejected and can not be entered through an amendment.  Continuation-in-parts applications are the the only way to submit new matter after the filing date however the new matter contained in a continuation-in-parts application will be given a new filing date as of the continuation-in-parts submittal date and not the date of the original patent application.  If new matter is added through an amendment in the original application and the examiner rejects the new matter the applicant can petition for review of the decision but may not appeal the matter.  New matter added through a preliminary amendment which is present on the filing date is considered part of the original disclosure.  The applicant must ensure that the supplement oath or declaration is filed to support the preliminary amendment.  If the preliminary amendment is submitted after the original disclosure it is treated as new matter and will be rejected.

MPEP 609 – Information Disclosure Statement

For compliance on information disclosure statements reference 37 C.F.R. § 1.97 for timing and 37 C.F.R. § 1.98 for content.  If they do not comply with these rules they will not be considered by the office an a letter of noncompliance will be sent back from the office.  These requirement do not apply to information provided in response to office actions.

An information disclosure statement or IDS can be used in provisional applications however they will not be reviewed.  For non-provisional applications the applicants have a duty to disclose information which is material to patentability of the invention.  The duty is at the time the information is known or discovered and can not be postponed.  Only those people who are substantially involved in the application preparation have this duty of disclosure.  An information disclosure statement can not be submitted by a third party.  The submittal of an information disclosure statement is not proof that a patentability search has been performed.

For information disclosure statements in a continued examination or continuing application no new information disclosure statement is required upon their filing.  The only exemption to this is if the parent application is an international application.  The examiner considered the information already reviewed by the office when examining a continuation, divisional for continuation-in-parts application.  Resubmittal of an information disclosure statement is required if it wasn’t considered in the parent application when he child application was filed.

The content requirements for an information disclosure statement are: for patents identified in an IDS (patentee, patent number and issue date), for publications identified in an IDS (author, title, relevant pages, date of publication and place of publication), for non-english references the applicant must include a copy of the translation if it is available and if not available a concise explanation of its relevance is acceptable (if the explanation is part of the specification the IDS should reference the page or line numbers where the explanation is located in the specification).

There are three time periods when an information disclosure statement is considered by an examiner.  They can be filed freely during the first three months after filing or entry into the national stage and must be prior to the first office action on the merits of the application.  This three month grace period does not apply to request for continued examination applications for continued prosecution applications which are only restricted to before the first office action.  An information disclosure statement can also be filed before a final office action or notice of allowance or any other action which terminates the prosecution.  This must be accompanied by a fee and statement that the information was disclosed in communication with a foreign patent office no more than 3 months before the filing of the IDS or that no info was know 3 months prior to the filing.  If it is filed after the notice of allowance it must be accompanied by the fee and statement from above.

Usually the time periods for filing an information disclosure statement can not be extended, however if a bono fide attempt to submit a compliant information disclosure statement is made but there is an error there can be some leniency in a time extension to correct the error.

Once the issue fee has been paid no information disclosure statement is accepted but the IDS will be placed in the file jacket of the patent.  If this is the case the applicant will have to withdraw the patent from issue and filing a continuing application or a continued prosecution application to have the information disclosure statement considered.

Publication of patents

The norm is a publication after 18 months from the earliest priority date under any claim of foreign or domestic priority.  This is the case for any application filed on or after November 29, 2000 and includes continued prosecution applications but not request for continued examinations.

There are some exceptions to this publication rule.  Applications that are no longer pending such as issued or abandoned, applications subject to a secrecy order or applications for which publication would be detrimental to national security do not abide by this publication rule.  Additionally provisionals, designs and reissue patents do not take part in the 18 months publication rule.

Some situations allow for an exception upon request to avoid the 18 month publication.  This request must be made upon the filing of the application and must certify that the invention has not been and will not be the subject of a foreign patent application.  An applicant can file a petition with a fee to avoid publication of a currently pending application if it is not filed with the initial filing of the application.  However, a continuing application can not be filed with a non publication request.  If the application is filed abroad and a non publication request has been petitioned the applicant needs to notify the USPTO within 45 days or the application will become abandoned.

The publication format and process is as follows.  The applications must be in the proper condition for publication in that the filing fee and oath or declaration have been filed.  A proper specification, title and abstract in accordance with 37 C.F.R. § 1.72 should be filed and be in such condition that optical character recognition can be used to turn the published picture into text.  The drawings must be in acceptable condition for the patent application.  If the applicant wants the publication to reflect a filed amendment the applicant must timely file a copy of the application in proper amended form.

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6.0 – Everything Else

Everything Else Featured

As titled, this chapter contains everything else in the MPEP not previously covered which is a possibility to end up on the patent bar exam.  This chapter contains 13 sub categories which range from how the USPTO handles mailings, to the duty of disclosure to the rules related to the Patent Cooperation Treaty.  This chapter is much broader and spread out then the previous however they are generally much shorter in length and provide for a quick read.  The list below contains the sections grouped in this “Everything Else” chapter.

6.1 – MPEP 100 Secrecy, Access, National Security & Foreign Filings
6.2 – MPEP 300 Ownership and Assignment
6.3 – MPEP 400 Representative of Inventor or Owner
6.4 – MPEP 900 Classification and Search
6.5 – MPEP 1000 Matters Decided by USPTO Officials – Petitions
6.6 – SIR
6.7 – MPEP 2000 Duty of Disclosure
6.8 – MPEP 2500 Maintenance Fees
6.9 – MPEP 2700 Patent Terms and Extensions

Concerning each of the topics listed above, here is a brief summary of the content of each:

6.1 – MPEP 100 Secrecy, Access, National Security & Foreign Filings

This 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.

6.2 – MPEP 300 Ownership and Assignment

This 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.

6.3 – MPEP 400 Representative of Inventor or Owner

This 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.

6.4 – MPEP 900 Classification and Search

Section 6.4 provides an overview of how examiners search for prior art.  It also provides some general search guidelines.

6.5 – MPEP 1000 Matters Decided by USPTO Officials – Petitions

The 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.

6.6 – SIR

This section is a place holder for the Statutory Invention Registration.  However, this option has recently been repealed with the America Invents Act and is not longer used.  As such, it is not included on the patent bar exam.

6.7 – MPEP 2000 Duty of Disclosure

The 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.

6.8 – MPEP 2500 Maintenance Fees

Section 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.

6.9 – MPEP 2700 Patent Terms and Extensions

Finally, 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.

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6.7 – MPEP 2000 Duty of Disclosure

Duty of Disclosure Featured

The duty that those associated with a patents prosecution have to disclose material pertinent to a patents validity is discussed in MPEP chapter 2000.

The people who have a duty to disclose information to the USPTO include each inventor, attorney or other people who are substantially involved.  The public are limited only to prior art submissions in protest to pending applications.  These individuals need to submit all information which is material to patentability.  This excludes favorable material to a patents validity.  This includes material information which is known at the time of filing or that information who’s existence is found during the prosecution of the application.  The disclosure of this information must be in writing and if in a reissue application it should be filed with or within 2 months from the filing of the reissue application.  A preponderance of evidence is needed to prove un-patentability.  Examiners do not investigate deceptive intent and all claims become invalid or un-patentable where fraud or inequitable conduct is found to exist to any claim.