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MPEP 2273 – Appeal from Ex Parte Reexamination

MPEP 2273 – Appeal from Ex Parte Reexamination

The patent owner may appeal to the Board a decision from the ex parte reexamination proceeding only after the claim is finally rejected.  This requires a notice of appeal being filed within the required time.  However, the appeal option is limited to the patent owner only and not a third party.  A third party does not have a say in the ex parte proceedings.

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MPEP 2217 – Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302

MPEP 2217 – Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302

The request must include an identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.  In the case of the patent owner filing this can include arguments as to how the claims distinguish over the prior art.  The prior art relied upon may only consist of prior art patents or printed publications.[1]  Other matters, such as public use or on sale, inventorship, conduct will not be considered and should not be presented in the request.  A third party may not submit admissions of the patent owner made outside the record of the file or the court record, unless such admissions were entered into a court record.

[1] See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App & Inter. 1988)

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MPEP 2212 – Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302

MPEP 2212 – Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302

Any person may file a request for Ex Parte Reexamination.  This includes corporations and/or governmental entities.  The only person barred could be someone under the estoppel from inter partes review and post grant review once the estoppel is attached.  The director can even request an Ex Parte Reexamination under the directors own initiative.

Examiners should not discuss or answer inquires from third parties in reexamination proceedings.

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MPEP 2210 – Request for Ex Parte Reexamination Under 35 U.S.C. 302

MPEP 2210 – Request for Ex Parte Reexamination Under 35 U.S.C. 302

The request for Ex Parte Reexamination must be in writing and must be accompanied by payment of a reexamination fee.  The request must also describe the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.  The director will send a copy of the request to the patent owner.

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MPEP 1901.07 (a) – Filling of Multiple Protest Papers Relating to Same Issues

MPEP 1901.07 (a) – Filling of Multiple Protest Papers Relating to Same Issues

Add stayed above the protestor is not allowed to complete any incomplete protests.  If a new protest is submitted it must show (1) why the new issues are significantly different than those in the previous protests, (2) why the new issues were not presented earlier, and (3) a processing fee.

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MPEP 1901.06- Examiner Treatment of Protest..

MPEP 1901.06- Examiner Treatment of Protest..

The filing of a protest does not relieve the examiner of their duty to examine the application in the merits.  Evidence submitted in a protest are considered on the same basis as ex parte evidence.  [Cit]

Initial Review

The examiner first checks to make sure the protest was served to the applicant or the applicants attorney.  If not the examiner will call the applicant to determine if the servicing wad made.  The examiner must not contact the protester to confirm.   If no servicing is made the examiner forwards such issue to their TC director.

If the examiner believes a response from the applicant will aid response on the protest the examiner can set a period of usually 1 month for the applicant to reply.  However the examiner cannot require a reply to questions of fraud, inequitable conduct or violation of the duty of disclosure.  A protest filed after the application is published can be admitted to the file if approval is obtained by the applicant.   There must be express written consent.

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MPEP 1895 – Continuation, Divisional or Continuation-In-Part Application of a PCT Application Designating the US

MPEP 1895 – Continuation, Divisional or Continuation-In-Part Application of a PCT Application Designating the US

During the pendency of an international application a new divisional, continuation or continuation-in-parts application can be filed. This can be done without completing the requirements for entering the national stage for applications filed under 35 U.S.C. § 111(a). When desiring to claim the benefit of the prior international application (which designates the US) under 35 U.S.C. § 120 or § 365(c) the continuing application needs to: Include specific reference to the prior international application, be co-pending with the international application, have one inventor in common with the international application and a claim for priority under 35 U.S.C. § 119(a)-(d) needs to be made in the continuing application.

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MPEP 1480 – Certificates of Correction – Office Mistake

MPEP 1480 – Certificates of Correction – Office Mistake

Whenever a mistake in a patent, incurred throughout he fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents.  A printed copy thereof shall be attached to each printed copy of the patent, and such certificate shall be considered as part of the original patent.  Every such patent, together with such certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such correct form.  The director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.

Third parties do not have standing to demand that the Office issue, or refuse to issue, a Certificate of Correction.[1]

The office will expedite processing and granting of patentee requests where such requests are accompanied by evidence to show that the error is attributable solely to the Office.

[1] See Hallmark Cards, Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 1997).

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MPEP 1416 – No Physical Surrender of Original Patent

MPEP 1416 – No Physical Surrender of Original Patent

Surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted.

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MPEP 1414 – Content of Reissue Oath/Declaration

MPEP 1414 – Content of Reissue Oath/Declaration

The reissue oath/declaration as required is an essential part of a reissue application and must be filed with the application, or within the time period set under 37 CFR 1.53(f) along with the required surcharge in order to avoid abandonment.

All reissue oaths or declarations must contain the following:

(A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid.[1]

(B) A statement of at least one error which is relied upon to support the reissue application as the basis fro the reissue.

An error to be corrected under 35 U.S.C. 251 may be the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims.[2]

The error must be explicitly identified in the patent.  Such identification as a broad statement that “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure”, or a reproduction of the claims with brackets and underlining stating that the errors are identified are not sufficient.[3]

Applications filed before September 16, 2012 need a statement in the reissue oath or declaration that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant.

[1] See In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984)

[2] See In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011)

[3] See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987)

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MPEP 1302.14 – Reasons for Allowance

MPEP 1302.14 – Reasons for Allowance

Reasons for allowance

Reasons for allowance are not mandatory on the examiner.  They serve to clear up the record ensuring the reasons are evident in the record.  Each statement should include: the major not found in the prior art and the reasons why the differences patentability distinguish over the prior art.

Applicants comments on the reasons for allowance

The examiners reasons for allowance is an important source of prosecution file history.  The applicants statement on the reasons of allowance and not the examiners should create an e-stopple.  The failure of the applicant to content on the reasons for allowance should not be treated as acquiescence to the examiners statement.

Citations

The applicant may set forth their position if they don’t agree work the reasons of allowance.  Any comments on the reasons of allowance should be submitted before the payment of the issue fees.  They should be labeled comments on statement of reasons for allowance.

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MPEP 1214.07 – Reopening of Prosecution

MPEP 1214.07 – Reopening of Prosecution

Sometimes an amendment is filed after the Board’s decision which presents a new or amended claim or claims. In view of the fact that prosecution is closed, the appellant is not entitled to have such amendment entered as a matter of right. However, if the amendment is submitted with a request for continued examination (RCE) and the fee, prosecution of the application will be reopened and the amendment will be entered.  If the amendment obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner should recommend that the amendment be entered, and with the concurrence of the supervisory patent examiner, the amendment will be entered.  Where the amendment cannot be entered, the examiner should write to the appellant indicating that the amendment cannot be entered and stating the reason why.  In the event that claims stand allowed in the application the application should be passed to issue.  Petitions to reopen or reconsider prosecution of a case after decision by the Board, where no court action has been filed, are decided by the Technology Center Director.

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MPEP 1208.01 – Fee for Forwarding Appeal to the Board

MPEP 1208.01 – Fee for Forwarding Appeal to the Board

The examiner’s answer should provide notice that the appeal forwarding fee must be paid within the requisite time period or the appeal will stand dismissed.  Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was reduced to $0 and a new fee was added for forwarding the appeal to the Board after the mailing of an examiner’s answer. Failure to pay this appeal forwarding fee results in the dismissal of the appeal.

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MPEP 1207 – Examiner’s Answer

MPEP 1207 – Examiner’s Answer

After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may:

  • (A) reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner;
  • (B) allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or
  • (C) maintain the appeal by conducting an appeal conference and drafting an examiner’s answer

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MPEP 1205.02 – Appeal Brief Content

MPEP 1205.02 – Appeal Brief Content

Only one copy of the appeal brief is required.  The appeal brief must include the following:

▪       Real party in interest.

▪       Related appeals, interferences, and trials.

▪       Summary of claimed subject matter.

▪       Argument.

▪       Claims appendix.

The arguments must be responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken.  No arguments to a claim waives the appellants right to challenge the rejection.  In accordance with the above, the brief must be directed to the claims and to the record of the case as they appeared at the time of the appeal.  If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application.

The examiner’s answer may withdraw the rejection of claims, if appropriate. The examiner, with supervisory approval, may also determine that it is necessary to reopen prosecution to enter a new ground of rejection.

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MPEP 819 – Office Generally Does Not Permit Shift

MPEP 819 – Office Generally Does Not Permit Shift

The general policy of the Office is not to permit the applicant to shift to claiming another invention after an election is once made and action given on the elected subject matter. Note that the applicant cannot, as a matter of right, file a request for continued examination (RCE) to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right).

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MPEP 802.01 – Meaning of “Independent” and “Distinct”

MPEP 802.01 – Meaning of “Independent” and “Distinct”

35 U.S.C. 121 quoted in the preceding section states that the Director may require restriction if two or more “independent and distinct” inventions are claimed in one application.

The term “independent” (i.e., unrelated) means that there is no disclosed relationship between the two or more inventions claimed, that is, they are unconnected in design, operation, and effect.

Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design (e.g., structure or method of manufacture), operation (e.g., function or method of use), or effect. Examples of related inventions include combination and part (subcombination) thereof, process and apparatus for its practice, process and product made, etc. In this definition the term related is used as an alternative for dependent in referring to inventions other than independent inventions.

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MPEP 716.04 – Long-Felt Need and Failure of Others

MPEP 716.04 – Long-Felt Need and Failure of Others

The Claimed Invention Must Satisfy a Long-Felt Need Which Was Recognized, Persistent and Not Solved By Others.

Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art.[1]

Second, the long-felt need must not have been satisfied by another before the invention by applicant.[2]

Third, the invention must in fact satisfy the long-felt need.[3]

Long Felt Need is Measured From the Date the Problem is Identified and Efforts are Made to Solve it.

Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references.[4]

Other Factors Contributing to the Presence of a Long-Felt Need Must be Considered

The failure to solve a long-felt need may be due to factors such as lack of interest or lack of appreciation of an invention’s potential or marketability rather than want of technical know-how.[5]

[1] In re Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967);  Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983)

[2] Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988)

[3] In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).

[4] Texas Instruments Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).

[5] Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir. 1977).  See also Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) and In re Tiffin, 443 F.2d 344, 170 USPQ 88 (CCPA 1971)

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MPEP 716.02(e) – Comparison With Closest Prior Art

MPEP 716.02(e) – Comparison With Closest Prior Art

An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness.[1]  “A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference.”[2]  Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained[3], and if not explained should be noted and evaluated, and if significant, explanation should be required.[4]

The Claimed Invention May Be Compared With Prior Art That Is Closer Than That Applied By the Examiner

Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. [5]

Comparisons When There Are Two Equally Close Prior Art References

Showing unexpected results over one of two equally close prior art references will not rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other that the testing of one showing unexpected results would provide the same information as to the other. [6]

The Claimed Invention May Be Compared With The Closest Subject Matter That Exists In the Prior Art

Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art.[7]

[1] In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).

[2] In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978)

[3] In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949)

[4] In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960)

[5] In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961)

[6] In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1264 (Fed. Cir. 1984)

[7] In re Geiger, 815 F.2d 686, 689, 2 USPQ2d 1276, 1279 (Fed. Cir. 1987)

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MPEP 716 – Affidavits or Declarations Traversing Rejections

MPEP 716 – Affidavits or Declarations Traversing Rejections

The purpose of the affidavit or declaration is to demonstrate any fact to justify patentability. For example this could be commercial success, unexpected results or cited reference is the applicants own work or was derived from the applicants own work. This is needed when claims are rejected or objected to.

The evidence must be objective in nature and can include: comparative date, unexpected results, commercial success, long felt but unsolved need, failure of others, skepticism of experts.

  • Objective evidence must be considered when timely present[1]
    • Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103.[2]
    • To be of probative value, any secondary evidence must be related to the claimed invention[3]
    • To be of probative value, any objective evidence should be supported by actual proof.

⁃        Includes evidence of: unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant.[4]

  • Attorney’s arguments can not take the place of evidence.[5]
  • Opinion evidence[6]
  • In making a final determination of patentability, evidence supporting patentability must be weighed against evidence supporting prima facie case.[7]

In A Prima Facie Case:

The 37 C.F.R. § 1.132 affidavit may be filed to traverse the rejection, for example the same person invented the prior art being used as reference or that the new invention is non-obvious. The evidence must be weighed against the prima facie case that the invention is obvious. This must include a preponderance of evidence of 51%.

After the prima facie case is established, the burden of proof moved to the applicant to change the weight of the evidence in their favor. Opinion evidence is also entitled to be considered.

This may not be submitted if the rejection is based on US patents to others claiming the same patentable invention as this would be an interference.

These must be filed in a timely manner before the final rejection, before the appeal, after the final rejection, and submitted with a first reply after the final for overcoming a new ground of rejection or with a satisfactory showing under 35 U.S.C. § 116 or 35 U.S.C. § 195. And they are filed under 35 U.S.C. § 129.

Attorney arguments cannot take the place of objective evidence. Presumptions of validity must be rebutted by a preponderance of evidence.

[1] Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 172 USPQ 126 (CCPA 1971); In re Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA 1973).

[2] The Court of Appeals for the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983)

[3] United States v. Adams, 383 U.S. 39,148 USPQ 479 (1966);  Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42, 227 USPQ 657, 673-674 n. 42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).  Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988).

[4] See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.1984)  See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991)

[5] In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).

[6] In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962);  In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967)

[7] In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992);  In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987);  In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990)

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MPEP 715.07(c) – Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country

MPEP 715.07(c) – Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country

The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a NAFTA country or WTO member country.

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MPEP 714.16 – Amendment After Notice of Allowance

MPEP 714.16 – Amendment After Notice of Allowance

An amendment after a mailing of a notice of allowance must be filed on our before the date the issue fee is paid, unless required by office of data management. After the mailing of an notice is allowance the application is no longer under the jurisdiction of the examiner. Amendments after allowance must comply with CFR 1.312.  However the ability to file an amendment after allowance is not to be used for continued prosecution.  No amendments are allowed after the payment of the issue fee.

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MPEP 708.02(c) – Patent Prosecution Highway Program (PPH)

MPEP 708.02(c) – Patent Prosecution Highway Program (PPH)

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating countries by allowing examiners to reuse search and examination results. The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating countries by allowing examiners to reuse search and examination results. Examination will not entitle the applicant to a refund of applications filed in the OSF. The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in The PPH will leverage fast-track examination procedures already available in the OSF to allow applicants to obtain patents faster and more efficiently. For example, the OSF can use the OFF’s work products – such as allowances or search reports – to streamline patent processing.

 

 

America Invents Act – Prioritized Examination For Important Technologies

Section 25 of the America Invents Act allows the office to establish a procedure for prioritize examinations of applications for products, processes, or technologies that are important to the national economy or national competitiveness.

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MPEP 708.02(b) – Prioritized Examination

MPEP 708.02(b) – Prioritized Examination

A new prioritized examination is allowed by the America invents act through section 11 (Track 1). Prioritized examination provides for the final deposition on applications within 12 months of the granting of prioritized examination. This is available for utility and plant patents and also for a request for continued examination in a plant or utility patent. The prioritized exam does not replace accelerated examinations (if applicant meet special requirements). Only 10,000 prioritized examinations are allowed per year, which is the sum of regular and RCE prioritized examinations.

Requesting and filing for prioritized examination: RCE request for prioritized examination must be made before the first office action on the RCE. This prioritized examination request must be concurrent or subsequent to the RCE request. This can be amended to meet the claim limitations below. It must be filed through EFS-Web for utility RCEs and through paper submission (mailing or in-person) for plant RCEs.

For international applications, a patent owner may achieve prioritized examination if they have done or amend to: claim benefit under 35 U.S.C. § 365(c); claim right of priority under 35 U.S.C. § (a); claim priority under 35 U.S.C. § 119(a)-(d) and (f). However, this cannot happen for 35 U.S.C. § 371 national stage applications.

Only one request for prioritized examination allowed (if dismissed cannot re- request).

Refusal of one joint inventor to execute Oath/Declaration can be remedied by petition filed with the application. If the petition is dismissed for any reason the prioritized status is removed.

There is an extra fee of $4,800 (50% off for small entity) for the prioritized examination. A non-publication request of a prioritized examination can be requested, however the publication fee will still need to be submitted. If the applicant inadvertently omits required any information on initial filing the supplemental information can be added only on the same day as the initial filing via EFS-Web. Remember, only registered users allowed to file via EFS-Web.

All formal requirements must be met before prioritized examination will be acted upon. This includes the submission of the specification, required drawings (if any), executed oath or declaration, and the fees.

Pre-examination notice will delay the prioritized examination until the applicant has filed a complete (and timely) reply to any notice. The application cannot contain more than four independent claims, 30 total claims, and cannot have a single multiple dependent claim.

Color drawings are allowed in EFS-Web submitted new applications for non-provisional utility applications (includes reissue utility applications) and 35 U.S.C. 371 national stage applications. However, a petition is still needed for color drawing approval.

Preliminary amendments can be added after request for prioritized examination if the amendment does not exceed the before mentioned claim limitations.

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MPEP 706.07(c) – Final Rejection, Premature

MPEP 706.07(c) – Final Rejection, Premature

Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by petition.

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MPEP 706.03 – Rejections Not Based on Prior Art

MPEP 706.03 – Rejections Not Based on Prior Art

         Rejections under 35 U.S.C. § 101:  Not all new and useful inventions receive a patent as all inventions must also fall within the boundaries set forth in 35 U.S.C. § 101.  The following bounds of 35 U.S.C. § 101 must also be met: No double patenting, it must fall within the subject matter eligibility guidelines, it must have utility and it must name the proper inventors.

         Inventions bared by the Atomic Energy Act:  No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.

         Rejections under 35 U.S.C. § 112(a):  A non prior art rejection for lack of utility can be applied under 35 U.S.C. § 112(a).  Additionally, new matter added after the initial filing date will be rejected under 35 U.S.C. § 112(a).  In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.[1]

         Rejections under 35 U.S.C. § 112(b):  A non prior art rejection for failure to point out and distinctly claim applicant’s invention, terminology inconsistent with accepted meaning, relative terminology, broad and narrow limitations in the same claim, lack of antecedent basis, use claims, omnibus claims, trademark or trade names and omission of essential steps or materials…to name a few…can be made under 35 U.S.C. § 112(b).

         Duplicate Claims:  Inasmuch as a patent is supposed to be limited to only one invention or, at most, several closely related indivisible inventions, limiting an application to a single claim, or a single claim to each of the related inventions might appear to be logical as well as convenient. However, court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

         Foreign Filing without a License:  An applicant cannot file an application in the US if a foreign application is already filed that appears to be filed more than 6 months before the US application wherein the invention was made in the US.

         Claims are Disclaimed:  Claims may be rejected on the ground that applicant has disclaimed the subject matter involved.  This can occur if the applicant fails to:

(A) make claims suggested for interference with another application

(B) copy a claim from a patent when suggested by the examiner

(C) respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent.

The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.

         After Interference or Public Use Proceedings:  Claims may be rejected after losing an interference.  The outcome of public use proceedings may also be the basis of a rejection.[2]

         Res Judicata: This deals with a matter that has been adjudicated by a competent court and may not be pursued further by the same parties.

         Broadening Reissue: 35 U.S.C. 251 forbids the granting of a reissue “enlarging the scope of the claims of the original patent” unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue application properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant). This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent.

[1] Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).

[2] See 37 CFR 1.292 in effect on September 15, 2012, and In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983).

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MPEP 702 – Requisites of the Application

MPEP 702 – Requisites of the Application

Initial review of a patent is looking for informalities and sufficiency of disclosure (the MPEP 600 requirements).  For example the office will see if something resembling a disclosure, claims and a drawing are included.  The office will then see if the application includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings.  As stated in the preceding MPEP 600 section an application can receive a filing date without the filing of the fees, however this will not be considered a “complete” application and the office will send out a “Notice of Omitted Items”.  In the event that a claim, disclosure or drawing (if required) are not submitted to obtain a filing date the office will send out a “Notice of Incomplete Application”.

If the application passes this initial review and is forwarded to the examiner for a first office action, but later an incomplete disclosure is found the following procedure is applied: First a reasonable search is completed or as much searching that can be done given in the errors in the disclosure; Second if there is not enough in the disclosure for even a search the office will inform the applicant that no search was made. There will be a citation of the objects of invention, claims and any pertinent art cited.

Deficiencies or informalities found by the OIPE (Office of Initial Patent Examination) are communicated by attachments to the office action. If the claims are informal as required by 35 U.S.C. § 112 they will be rejected as failing to define the invention. A blanket rejection is usually sufficient.

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MPEP 609 – Information Disclosure Statement

MPEP 609 – Information Disclosure Statement

Information Disclosure Statements (IDSs) are not permitted in provisional applications.  Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.

In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information that is material to patentability.  Applicants and other individuals substantively involved with the preparation and/or prosecution of the patent application also may want the Office to consider information for a variety of other reasons; e.g., to make sure that the examiner has an opportunity to consider the same information that was considered by these individuals, or by another patent office in a counterpart or related patent application filed in another country.

Third parties cannot file information disclosure statements.  Third parties may only submit patents and publications in applications published.  For unpublished, pending applications, any member of the public, including private persons, corporate entities, and government agencies, may file a protest prior to the mailing of a notice of allowance.  Alternatively, third parties may provide information to the applicant who may submit the information to the Office in an IDS.  The Office will review any submission in an application filed by a third party to determine whether the submission is in compliance.

For compliance on information disclosure statements reference 37 C.F.R. § 1.97 for timing and 37 C.F.R. § 1.98 for content.  These requirements do not apply to information provided in response to office actions.

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).

An information disclosure statement filed properly will be considered by the examiner assigned to the application.  Individuals associated in a substantive way with the filing and prosecution of a patent application are encouraged to submit information to the Office so the examiner can evaluate its relevance to the claimed invention. The procedures for submitting an information disclosure statement under the rules are designed to encourage individuals to submit information to the Office promptly and in a uniform manner. These rules provide certainty for the public by defining the requirements for submitting information disclosure statements to the Office so that the Office will consider information contained therein before a patent is granted.

The filing of an information disclosure statement shall not be construed as a representation that a search has been made.  There is no requirement that an applicant for a patent make a patentability search. Further, the filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability.

In order to have information considered by the Office during the pendency of a patent application, an information disclosure statement must be (1) in compliance with the content requirements, and (2) filed in accordance with the procedural requirements.

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 cannot be extended, however if a bona 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.

Once the minimum requirements are met, the examiner has an obligation to consider the information. There is no requirement that the information must be prior art references in order to be considered by the examiner. Consideration by the examiner of the information submitted in an IDS means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. The initials of the examiner placed adjacent to the citations on the PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the examiner to the extent noted above. In addition, the following alternative electronic signature method may be used by examiners in information disclosure statements to indicate whether the information has been considered. Examiners will no longer initial each reference citation considered, but will continue to strikethrough each citation not considered. Each page of reference citations will be stamped by the examiner with the phrase “All references considered except where lined through” along with the examiner’s electronic initials, and the final page of reference citations will include the examiner’s electronic signature. Information submitted to the Office that does not comply with the requirements will not be considered by the Office but will be placed in the application file.

Multiple information disclosure statements may be filed in a single application, and they will be considered, provided each is in compliance with the appropriate requirements.  Use of form PTO/SB/08A and 08B, “Information Disclosure Statement,” is encouraged as a means to provide the required list of information.

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MPEP 602.06 – Non-English Oath or Declaration

MPEP 602.06 – Non-English Oath or Declaration

The oath or declaration should be submitted in a language that the applicant understands and comprehends.  If the applicant doesn’t understand English a foreign language oath or declaration can be submitted but it must be accompanied with a statement that the applicant understands the content of any documents to which the oath or declaration relates.  The documents can also be explained to the applicant so that they understand them.

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MPEP 601.01(g) – Notice Of Incomplete Application:

MPEP 601.01(g) – 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.

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MPEP 601.01(a) – Nonprovisional Applications Filed Under 35 U.S.C. § 111(a)

MPEP 601.01(a) – Nonprovisional Applications Filed Under 35 U.S.C. § 111(a)

A filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (USPTO).  A Notice to File Missing Parts is sent if an application under 37 CFR 1.53(b) did not contain the basic filing fee, the search fee, or the examination fee, or the inventor’s oath or declaration.  These items need to be filed within the time period set in the notice to avoid abandonment.

37 CFR 1.53(d) may be used to file either a continuation or a divisional application (but not a continuation-in-part) of a design application. The prior nonprovisional application must be a design application that is complete as defined by 37 CFR 1.51(b). Any application filed under 37 CFR 1.53(d) must disclose and claim only subject matter disclosed in the prior nonprovisional application and must name as inventors the same or less than all of the inventors named in the prior nonprovisional application.  An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

(A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;

(B) abandonment of the prior application; or

(C) termination of proceedings on the prior application.

The filing fee , search fee and examination fee for an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or declaration for an application filed under 37 CFR 1.53(b) can be submitted after the filing date. However, no amendment may introduce new matter into the disclosure of an application after its filing date.

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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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MPEP 202 – Cross Noting

MPEP 202 – Cross Noting

To cross note another application the first page of a printed patent identifies all prior applications for which priority is claimed. The patent owner should make certain that the information is correct. The addition of this information entitle the new patent the filing date of that which is cross noted.

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MPEP 2186: Relationship to the Doctrine of Equivalents

MPEP 2186: Relationship to the Doctrine of Equivalents

         Doctrine of equivalents arises in the context of an infringement action. When product or process does not specifically infringe a protected invention. The item may still be found to infringe though the doctrine of equivalents. All words of the claim are considered when judging patentability of a claim against the prior art. Doctrine of equivalents operates to expand claim coverage beyond the literal scope of the claim language.

This can be supported by the following:

(A) the prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification.[1]

(B) a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.[2]

(C) there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification.[3]

A finding of nonequivalence prevents a prior art element from anticipating a means- (or step-) plus-function limitation in a claim, it does not prevent the prior art element from rendering the claim limitation obvious to one of ordinary skill in the art.

[1] Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir. 2000)

[2] Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000); Al-Site Corp. v. VSI Int’ l, Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus. Inc., 145 F.3d 1303, 1309, 46 USPQ2d 1752, 1757 (Fed. Cir. 1998); Lockheed Aircraft Corp. v. United States, 193 USPQ 449, 461 (Ct. Cl. 1977); Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1 USPQ2d 2052 (Fed. Cir. 1987).

[3] IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54 USPQ2d 1129, 1138 (Fed. Cir. 2000); Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 117 S. Ct. 1040, 41 USPQ2d 1865, 1875 (1997); Valmont Industries, Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 25 USPQ2d 1451 (Fed. Cir. 1993). See also Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000)

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MPEP 2165: Best Mode

MPEP 2165: Best Mode

There is no statutory requirement for the disclosure of a specific example — a patent specification is not intended nor required to be a production specification.  There is no requirement in the statute that applicants point out which of their embodiments they consider to be their best.  It is not necessary to update the best mode in applications claiming the benefit of an earlier filing date under 35 U.S.C. 119(e) or 120 or to a foreign filing.  If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such a defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the patent application was originally filed.  This would be considered new matter.  The best mode requirement is a separate and distinct requirement from the enablement requirement.  The examiner should assume that the best mode is disclosed in the application, unless evidence is presented that is inconsistent with that assumption.

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MPEP 2145: Consideration of Applicant’s Rebuttal Arguments

MPEP 2145: Consideration of Applicant’s Rebuttal Arguments

If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case.[1]  Rebuttal evidence and arguments can be presented in the specification,[2] by counsel[3], or by way of an affidavit or declaration under 37 CFR 1.132[4].  However, arguments of counsel cannot take the place of factually supported objective evidence.[5]  Applicant can submit a rebuttal which may include evidence of “secondary considerations” such as commercial success, long felt but unresolved need, and failure of others.[6]

Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.[7]  “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”[8]  “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference…. Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”[9]  To rebut obviousness rejections one cannot argue against individual references[10], the number of references combined[11], limitations not claimed[12], economic infeasibility[13], age of references[14].

[1] See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990).

[2] In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995),

[3] In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995),

[4] e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984).

[5] See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).

[6] Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success)

[7] In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)

[8] Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)

[9] In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983)

[10] In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

[11] In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991)

[12] In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993)

[13] In re Farrenkopf, 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983)

[14] In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977)

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MPEP 2142: Legal Concept of Prima Facie Obviousness – Relevant to § 103 Rejections

MPEP 2142: Legal Concept of Prima Facie Obviousness – Relevant to § 103 Rejections

Prima Facie Obviousness:

The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process.[1]  The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show non-obviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of non-obviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art.

The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 418, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that “rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”[2]

         Exemplary rationales that may support a conclusion of obviousness include:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Suggestion Or Motivation To Modify The Reference:

Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so.[3]  The mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art.[4]

A statement that modifications of the prior art to meet the claimed invention would have been “‘well within the ordinary skill of the art at the time the claimed invention was made’” because the references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references.[5] Examiner proposed modification to the prior art for establishing obviousness cannot render the prior art unsatisfactory for its intended purpose.

If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.[6]  If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.[7]

Reasonable Expectation Of Success Is Required:

A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art.[8]  Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success.[9]

Obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness.[10]  Applicants can show evidence of no reasonable expectation of success.[11]

[1] See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).

[2] In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)

[3] In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)

[4] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)

[5] Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).

[6] In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)

[7] In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959)

[8] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).

[9] In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986)

[10] In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976)

[11] See also Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1207-08, 18 USPQ2d 1016, 1022-23 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991)

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MPEP 2141 – Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103 Framework for Obviousness Analysis

MPEP 2141 – Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103

Framework for Obviousness Analysis

This was already covered in the 35 U.S.C. § 103 section above.  However, since it is so important we will cover it again.

To properly support an obviousness rejection an examiner must utilize the following objective analysis as defined in Graham v. John Deere Co.[1]:

  1. Determining the scope and content of the prior art; and
  2. Ascertaining the differences between the claimed invention and the prior art; and
  3. Resolving the level of ordinary skill in the pertinent art.
  4. Reviewing any evidence of secondary considerations (If provided by applicant)

It should be noted that the arrangement of the analysis steps doesn’t matter.[2]

Graham Step 1 – Determining the scope and content of the prior art

In determining the scope and content of the prior art, Office personnel must first obtain a thorough understanding of the invention disclosed and claimed in the application under examination by reading the specification, including the claims, to understand what the applicant has invented. The scope of the claimed invention must be clearly determined by giving the claims the “broadest reasonable interpretation consistent with the specification.”  [3]Additionally, Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.”[4]  Admitted prior art can also be used in an obviousness rejection even if the prior art would not have otherwise been considered prior art.[5]

Analogous Art

In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention.[6]  The examiner must determine what is “analogous prior art” for the purpose of analyzing the obviousness of the subject matter at issue. “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed.”[7]  As such, even a patent that is not in the same classification it can be analogous art if it solves a similar problem.  This is supported in the courts decision in the Ellis case where the court stated that “differences in structure and function of the inventions to carry far greater weight”[8].

Graham Step 2 – Ascertaining the Differences Between the Claimed Invention and the Prior Art

Ascertaining the differences between the claimed invention and the prior art requires interpreting the claim language and considering both the invention and the prior art as a whole.  In an office action the examiner will usually write in a proper 103 rejection, what is taught by a primary reference and what isn’t taught by the primary reference.  This is followed by what is taught by each modifying reference.  In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious.[9]  Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.”[10]  A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.[11]  However, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….”[12]

Graham Step 3 – Resolving the Level of Ordinary Skill in the Art

Any obviousness rejection should include, either explicitly or implicitly in view of the prior art applied, an indication of the level of ordinary skill. A finding as to the level of ordinary skill may be used as a partial basis for a resolution of the issue of obviousness.  “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”[13]

The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include: (1) “type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology; and” (5) “educational level of active workers in the field.”[14]

“[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”[15]  Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.”[16]

References which do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the time the invention was made.[17]

Graham Step 4 – Reviewing any evidence of secondary considerations (If provided by applicant)

Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel.[18]  Such evidence, sometimes referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness.

[1] Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)

[2] KSR, 550 U.S. at 407, 82 USPQ2d at 1391

[3] See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)

[4] Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)

[5] Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003)

[6] In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).

[7] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420, 82 USPQ2d 1385, 1397 (2007).

[8] In re Ellis, 476 F.2d 1370, 1372, 177 USPQ 526, 527 (CCPA 1973)

[9] Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)

[10] W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983)

[11] W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)

[12] In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004)

[13] Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed. Cir. 1991).

[14] In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995).

[15] Id. at 420, 82 USPQ2d at 1397

[16] Id. at 418, 82 USPQ2d at 1396.

[17] Ex parte Erlich, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992)

[18] Id. at 17-18, 148 USPQ at 467.

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MPEP 2129: Admissions as Prior Art

MPEP 2129: Admissions as Prior Art

Admissions By Applicant Constitutes Prior Art:

A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102.[1]  Where the specification identifies work done by another as “prior art,” the subject matter so identified is treated as admitted prior art.[2]

Jepson Claims:

         Reference 37 C.F.R. § 1.75(e). These include:

  • A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
  • A phrase such as “wherein the improvement comprises,” and those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

A jepson claim is taken as an implied admission that the subject mater of the preamble is the prior art work of another.[3]  This is used to avoid a double patenting rejection. If the preamble is the work of the applicant it can’t be used against him.[4]

Information Disclosure Statements (IDS):

Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.[5]

[1] Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988).

[2] In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975)

[3] In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982)

[4] Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.

[5] Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003)

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MPEP 2124: Exception to the Rule that the Critical Reference Date Must Precede the Filing Date

MPEP 2124: Exception to the Rule that the Critical Reference Date Must Precede the Filing Date

If a reference shows a universal fact, the date of the reference does not need to be prior to the effective date to be used as prior art.[1]  Examples of this are: scientific principal, material properties and material characteristics.

America Invents Act Update – Tax Strategies Deemed Within Prior Art

Section 14 of the America Invents Act limits what can be used to differentiate claimed inventions from prior art under 102 or 103.

Specifics

A strategy for reducing, avoiding, or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.

This does not apply to the component of the invention that is a method, apparatus, technology, computer program product, or system that is used solely for preparing a tax or information return or that is used solely for financial management.

Claimed inventions that include this tax strategy are still able to be patented however this cannot be the basis for non-obviousness or its uniqueness.

[1] In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962).

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MPEP 2123: Rejections Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

MPEP 2123: Rejections Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

What is prior art in a patent? Everything that is disclosed is considered prior art even what is not claimed, alternate embodiments, and non-preferred embodiments.[1]  The disclosure of these does not constitute “teaching away” from these embodiments.[2]

[1] Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)

[2] In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).

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MPEP 2121: Prior Art, General Level of Operability Required to Make a Prima Facie Case

MPEP 2121: Prior Art, General Level of Operability Required to Make a Prima Facie Case

Prior Art Is Assumed To Be Operable/Enabling:

The burden is on the applicant to prove that prior art is inoperable.[1] This pertains to a 35 U.S.C. § 103 rejection. The level of disclosure is the same for any reference to make it an enabling disclosure. The prior art type doesn’t matter and one skilled in the art must be able to carry out the claimed invention.[2]

Use Of Prior Art In Rejections Where Operability Is In Question:

35 U.S.C. § 102 rejections must have a reference that teaches every element of a claim, however, the reference does not need to teach how to practice the invention. One can use secondary evidence that teaches how to make or use the invention.[3]  35 U.S.C. § 103 rejections can use prior art reference that is non-enabling.[4]

Compounds And Compositions:

What constitutes Enabling Prior Art? Enabling prior art must allow one skilled in the art to make/synthesize the invention from the disclosure.[5] If the attempts to create the invention in the disclosure were unsuccessful the reference is non-enabling.[6]

Plant Genetics:

What Constitutes Enabling Prior Art?  When the claims are drawn to plants, the reference, combined with knowledge in the prior art, must enable one of ordinary skill in the art to reproduce the plant.[7]

Apparatus And Articles:

What Constitutes Enabling Prior Art?  Pictures and drawings may be sufficiently enabling to put the public in the possession of the article pictured. Therefore, such an enabling picture may be used to reject claims to the article. However, the picture must show all the claimed structural features and how they are put together.[8]

[1] In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980).

[2] In re Moreton, 288 F.2d 708, 129 USPQ 227 (CCPA 1961).

[3] In re Donohue, 766 F.2d at 533, 226 USPQ at 621

[4] Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991).

[5] In re Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 1968).

[6] In re Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA 1971)

[7] In re LeGrice, 301 F.2d 929, 133 USPQ 365 (CCPA 1962)

[8] Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928)

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Welcome to the Study Blog

The Patent Bar exam is a government issued exam required become a practitioner to pursue patents before the USPTO.  USPTO registration is granted after passing the Patent Bar exam and makes the individual a patent practitioner.  One must be a patent practitioner if they wish to pursue patents for others who do not wish to represent themselves on a pro se basis.  A law degree is not required to  pass the patent bar exam only a technical degree from an accredited university.  Generally, a person with a law degree who passes the patent bar exam becomes a patent lawyer and one who does not have a law degree becomes a patent agent.  A patent agent can represent clients before the USPTO but cannot represent clients before a state or federal court.

Please try and answer the question below:

Intro Question

Tick….
Tick…..
Tick……
Which of the answers above did you choose?  If you chose (C) then you’re correct!

(A) is wrong because a dependent claim can not be broader than a claim from which it depends.  Since claim 1 only lists a square shaped base member the dependent claim 3 can not have any base member which is not square.  This is per 37 C.F.R. § 1.75(c).  (B) is wrong because the previous claims 1 and 2 did not mention any wheels.  Hence, there is no antecedent basis for the wheels.  This is per MPEP § 2173.05(e).  (D) is wrong because a multiple dependent claim must refer back to preceding claims in alternative form only (i.e. “as in claim 1 OR 2” not “any of the preceding”).  This is per MPEP § 608.01(n).  However, (C) properly narrows the invention from it’s parent claims and is correct.  Since (C) is correct, (E) is not correct.

If your not familiar with patent law you may have wondered what the 37 C.F.R. § 1.75(c), MPEP § 2173.05(e) & § 608.01(n) references are.  As explained in more detail later, these are references to codes, laws and procedures used in patent law by both examiner and practitioners.  These laws and codes are created by the government to define patent law and the proper way to practice it before the United States Patent and Trademark Office.

Download the free mind mapping software call “XMIND” if you haven’t already .  I prefer to use this software to help understand the different elements of certain topics we will run across while studying for the patent bar exam.  I’ll embed some of my mind maps into the blog as I progress through the topics, but this is also a handy tool for your own note taking/concept retention.

 

 

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1.1 – Summary of the MPEP

Definition

What is the MPEP?

Its actual title is the Manual of Patent Examining Procedures and it is a multi *thousand* page manual that employee’s of the United States Patent and Trademark Office (“USPTO”) use in their job examining patents as patent examiners.

The manual is published by the USPTO and is constantly changing based on law and procedure updates.  Currently, the manual is on it’s 9th revision of the 8th edition which is updated based on the America Invents Act (as of 11/25/2012).  The bases for the manual is Title 37 of the Code of Federal Regulations (“37 C.F.R.”).  Title 37 of the C.F.R. is derived from Title 35 of the United States Code (“35 U.S.C.”) which governs all aspects of patent law.

What is it for?

The MPEP is used by patent attorneys, agents, examiners and pro se applicants.

The MPEP describes all the laws and regulations to be followed in US patent application examination.  It also provides specific situational examples of the application of these laws and regulations.  As such, this manual is not only used by patent examiners but also by patent attorneys and agents to aid them successfully practicing before the USPTO.  Additionally, this manual also provides guidance for patent seeker to persuasively argue to the patent examiner why the application should be granted or not.

In essence if you work in the patent field be it as an examiner or as an attorney/agent or as a pro se filier the MPEP is your bible.  Everything you will need to prepare, file and pursue a patent is included in this massive text.

Chapters in the MPEP

Included below are the chapters of the MPEP.  In addition to the main chapters (0100 – 2700) also included are seven appendixes.  These appendixes are very help in looking up specific 35 U.S.C. or 37 C.F.R. items (appendix L and R) which might otherwise be hard to find in the normal chapters of the MPEP.

0100, Secrecy, Access, National Security, and Foreign Filing
0200, Types, Cross-Noting, and Status of Application
0300, Ownership and Assignment
0400, Representative of Inventor or Owner
0500, Receipt and Handling of Mail and Papers
0600, Parts, Form, and Content of Application
0700, Examination of Applications
0800, Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
0900, Prior Art, Classification, and Search
1000, Matters Decided by Various U.S. Patent and Trademark Office Officials
1100, Statutory Invention Registration (SIR) and Pre-Grant Publication (PG Pub)
1200, Appeal
1300, Allowance and Issue
1400, Correction of Patents
1500, Design Patents
1600, Plant Patents
1700, Miscellaneous
1800, Patent Cooperation Treaty
1900, Protest
2000, Duty of Disclosure
2100, Patentability
2200, Citation of Prior Art and Ex Parte Reexamination of Patents
2300, Interference Proceedings
2400, Biotechnology
2500, Maintenance Fees
2600, Optional Inter Partes Reexamination
2700, Patent Terms and Extensions
Appendix I, Partial List of Trademarks’
Appendix II, List of Decisions Cited
Appendix L, Patent Laws
Appendix R, Patent Rules
Appendix T, Patent Cooperation Treaty
Appendix AI, Administrative Instructions Under The PCT
Appendix P, Paris Convention
Index, Subject Matter Index

Included below is a link to a interactive MPEP online provided by the USPTO.

For the test…

The MPEP is used extensively on the patent bar exam.  When I say extensively I mean EXTENSIVELY!  As a test taker you are allowed access to a digital version of the MPEP.  This digital version has a search capability similar to adobe acrobat but searches chapter by chapter.  Since there are so many chapters you must know which chapter the topic you are looking for is in to avoid wasting time.  The best bet is to try and memorize the MPEP chapters that way you can go directly to the chapter that the topic is in and proceed from there.

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1.2 – Summary of 35 U.S.C

What is it?

35 U.S.C. is a title of the United States Code which governs all US patent law.  This text is created by the U.S. government and is a type of “living text” in that it is changed when new laws are made regarding patent law.  An example of this would be the recent enactment of the America Invents Act (AIA).

Contents:

35 U.S.C. contains 37 chapters with 376 sections.

There are four parts of the title:

Part I–United States Patent and Trademark Office

Part II—Patentability of Inventions and Grant of Patents

Part III—Patents and Protection of Patent Rights

Part IV–Patent Cooperation Treaty

Part one of 35 U.S.C. establishes the United States Patent and Trademark Office (USPTO) and gives it the powers necessary to run the patent system for the USA.  Part two deals with patentability of inventions and the granting of patents.  Part two contains four main sections used in the patent bar exam: section 101 (What can be patented?), section 102 (Has it been done before?), section 103 (Is it obvious?) and section 112 (What form and content must be used?).  Part three addresses patent and protection of patent rights and deals mainly with activities after a patent has actually issued.  Finally part four is the patent cooperation treaty (PCT) which is an international treaty detailing how patent rights in one country are dealt with in another country.

Why is it important?

35 U.S.C. is tested heavily on the patent bar exam as it is the basis for the MPEP.  The important laws should be memorized (101, 102, 103, 112) if you want to pass the exam.  Also, a good reference for these laws is appendix L of the MPEP which lists all of the different 35 U.S.C. laws.

 Referencing 35 U.S.C. laws:

Below is an example of how a reference to a 35 U.S.C. code is made.  This is important to understand since as you progress through the study guide you will see many of these references.

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1.3 – Summary of 37 C.F.R.

What is it?

Chapter 37 of the code of federal regulations contains regulations concerning patents, trademarks, and copyrights.  It contains an exhausted list of patent rules from 35 U.S.C..

Contents:

37 C.F.R. contains hundreds of regulations from every aspect of patent law.  The codes start at 1.1 and end at 150.6 (there are some empty gaps in between).  These codes contain very detailed rules for practicing patent law.

Why is it important?

The contents of 37 C.F.R. are tested heavily on the patent bar exam.  Memorization of all its content is not practical, however mastery of searching through appendix R of the MPEP which contains these codes is recommended for the patent bar exam.

Referencing 37 C.F.R. Codes:

Below is an example of how a reference to a 37 C.F.R. code is made.  This is important to understand since as you progress through the study guide you will see many of these references.


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1.4 – Summary of Additional Material

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.

Bilski Process Claims

The Interim Bilski Guidance provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. § 101. Under the Interim Bilski Guidance, factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied, and factors that weigh against patent-eligibility neither satisfy the criteria of the machine-or-transformation test nor provide evidence that the abstract idea has been practically applied.

SME Instructions

The subject matter eligibility instructions contained in the supplemental material define a two step process for determining eligibility.

Step 1 encompasses reviewing the claims to determine if they fall into one of the four categories defined by 35 U.S.C. § 101.

Step 2 encompasses cross-referencing these claims and their respective subject matter against judicial exemptions to the 35 U.S.C. § 101 subject matter.  Step 2 is only undertaken if the claims pass step 1.

Additional instructions are included for analyzing product and process claims.

35 U.S.C. §112 Paragraph 2 compliance

This supplemental material includes a 3 step test for determining compliance with 35 U.S.C. § 112(2).  To properly complete this analysis one must give the claims their broadest reasonable interpretation, determine whether the claim language is definite and finaly complete compact prosecution procedures for resolving any 35 U.S.C. § 112 issues.

KSR Obviousness Inquiry

The KSR Obviousness Inquiry involves an analysis on obviousness which can also be found in the Graham vs. Deere court ruling.  This analysis consists of determining the scope and content of the prior art, the difference between the prior art and the claimed invention, the level of ordinary skill in the art and any secondary considerations.

Every obviousness rejection must also contain an appropriate finding of fact, reasoned explanation and a legal conclusion of obviousness.

Additionally, there are many cases also contained in the supplemental material which were chosen to provide
examiners with examples of both obvious and non-obvious claims.  These
cases are shown in the KSR Obviousness post.

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2.16 – 35 U.S.C. § 112 2nd Paragraph

35 USC 112 2nd Paragraph

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

Basically in the application the applicant must use claims to define what was invented.  These claims must distinctly define and particularly point out the boundaries of what the applicant seeks to obtain patent protection on.

1) Terminology of claims:

Any wording and terms can be used to define the invention through the claims.  However, the terms must not use a meaning which is contrary to the accepted meanings of those terms in the field of the art of the patent.

Relative terms in claims are factual and subjective and not objective.  The specification should define the exact meaning of these terms to avoid any question as to meaning.  Can include: essentially, similar, relatively, type, substantially, about, etc…

Trademarks and/or trade names can be used in the claim language under certain circumstances.  They are considered indefinite if they are used as limitation as they are intended to be used as a description of material.  Their usage can cause confusion as to the scope of the claims.  These are usually used to define the source of goods and not the goods themselves.

Claims should be self-contained and shouldn’t reference tables or figures unless necessary.

Markush Groups:  These types of claims limit the claim to a member of a selected group of individual elements.  They are okay to use in claims and an individual can select from any of the elements of the markush group.  However, if a markush group is used the individual is limited to only those items listed.  This is closed-ended and creates definiteness.  The syntax of a markush group reads with the word “consisting” coupled with the “and” conjunction.  An example is “shape consisting of a circule, square and rectangle.”

Omnibus Claims: These claims are indefinite as they do not adequately define the protection sought from the application for patent.  As such they are not allowed in US patents.  Usually read as “a device substantially as shown and described”.

2) Consistency:

If there are any inconsistencies between the claims and the specification then the disclosure does not particularly point out and distinctly claim the invention.  This should be fixed if possible.  See reference MPEP § 2173.03.

3) Breadth of Scope:

The breadth of the scope of the claims must be clearly defined as stated in 35 U.S.C. § 112 2nd paragraph.

Numerical range statements in claims usually do not raise definiteness issues except if there are narrow and broader ranges in the same claim or open ended numerical ranges.  For example a preferred range with a non preferred range and the numerical range with statement “at least”.

4) Antecedent Basis or lack of:

This is referencing to a term which is not previously defined in the claim or specification.  It creates uncertainty as to what is being referred to.  This results in indefiniteness if one of ordinary skill in the art can not reasonably understand what is meant.

5) Product and Process:

This is when there is a claim for a product defined by a process used to make it.  These are not indefinite unless both the product and process are indefinite.  If there is a claim to a process but no steps are included to carry out the process it is usually held as indefinite.

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2.18 – MPEP 2100 Patentable Subject Matter

MPEP 2100 - Patentable Subject Matter

MPEP 2100 - Patentable Subject Matter

MPEP Chapter 2100 deals with the fundamental issues of patentability.

The previously discussed 35 U.S.C. § 101, 102, 103 and 112 laws are covered here.  The prometric patent bar tests MPEP 2100 heavily and care should be observed when reviewing this matter to ensure thorough knowledge of the subject matter.  This will help to ensure a successful test day once it comes time.

MPEP 2105: Patentable subject matter – Living subject matter

In reference to the courts views on patentable subject matter.  Patentable subject matter is nonnaturally occurring manufacture or composition of matter – a product of human ingenuity – having a distinct name, character and use.”  Non-patentable subject matter includes the laws of nature, physical phenomena and abstract ideas.

America Invents Act Update – Human Organism Prohibition

Section 33 of the America invents act makes certain that claimed invention encompassing a human being are not patentable subject matter under 35 USC 101.

MPEP 2106: Patentable subject matter eligibility

This chapter is strongly tied to 35 U.S.C. § 101.  To define what is patentable:

1) Product: A new, useful and non-obvious machine, manufacture or composition of matter

2) Process: A new useful and non-obvious way of doing, making, using something.  A new process for an unpatentable product can still be patentable.  A process claim must utilize steps to obtain the product, not just the result of the process without any steps.

3) Product-by process: The product is patentable not the process.  The product is independent of the process used to create the product.  If prior art depicts the same product but by a different process the product is still unpatentable even though the processes differ.

4) Living subject matter is patentable: Must use human ingenuity to invent the new matter.

Patenting of claims to practical applications of natural phenomenon are also allowed.

To define what isn’t patentable:

1) Naturally occurring materials and organisms.

2) An invention which encompasses a human being at its broadest reasonable interpretation.

3) Laws of mathematics, physics, processes which depend on these laws but are abstract.  They must claim a practical application of these laws.

4) Computer related descriptive material.  This is copyrightable not patentable.

America Invents Act Update – Tax Strategies Deemed within Prior Art

Section 14 of the America Invents Act limits what can be used to differentiate claimed inventions from prior art under 102 or 103.

Specifics

A strategy for reducing, avoiding or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.

This does not apply to the component of the invention that is a method, apparatus, technology, computer program product or system that is used solely for preparing a tax or information return or that is used solely for financial management.

Claimed inventions which include this tax strategy are still able to be patented however this can not be the basis for non-obviousness or its uniqueness.

Utility RequirementUtility Requirement for Inventions

Utility requirement is an absolute must.  The invention must have practical applications.  The simple presentation of information or data is not patentable.  If the invention does not meet the claimed results it is not useful.  It needs to be completely incapable of achieving the results to violate 35 U.S.C. § 101.  Even if it crudely achieves the results it is okay.

Rejection under 35 U.S.C. § 101:

A Prima Facie showing of lack of utility is required.  This must be accompanied by sufficient evidence for the assumptions relied upon.  This must include an explanation with the reasoning for finding the utility not credible, support for factual findings relied upon, evaluation of the evidence of record (includes utility taught in the closest prior art).

MPEP 2111: Claim interpretation; Broadest reasonable interpretation

1) General interpretation of claims: The claims must be given their broadest reasonable interpretation consistent with the specification.  They must be consistent with what those skilled in the art would determine.  Limitations shown in the specification should not be applied to the claims unless the claims themselves utilize the limitation. Applicant can assign their own meaning to a term as long as it is defined in the specification.  If not, the examiner uses the general meaning of the term.  They can also not be completely incorrect with the usual meaning of the term (can’t use the word circle to describe a square).  One skilled in the art should be able to easily ascertain the meaning of the term.

2) Effects of the preamble: The preamble does not always limit a claim.  This is determined on a case-by-case basis.  Any wording in the preamble which does limit the claim should be treated as such.

3)  Transitional Phrases: The transitional phrases “comprising”, “consisting essentially of”, and “consisting of” define the scope of a claim with respect to what unrecited additional components if steps, if any, are excluded from the scope of the claim.

  • Comprising: Is non-exclusive language.  Also non-exclusive is: “including” or “Characterized by”.
  • Consisting essentially of: Is limiting language.  Limits the claim to the specified materials/steps and to those which do not materially effect the claimed invention.  This can be construed as “comprising” if there is no specific indication in the specification or claims to what the basic/novel characteristics are.
  • Consisting of: Is exclusive language.  This limits the claim to those items which are specified in the claim. One cannot add additional elements or steps after a consisting limitation.  When this is used in the clause of a claim it limits only the elements set forth in the clause (does not effect the preamble).

MPEP 2112: Requirements of rejection based on inherency, the burden of proof

1) Inherency:  Inherent features can be relied upon in a 35 U.S.C. § 102 or 103 rejection whether they are implicit, express or inherent in a prior art disclosure.  They do not need to be recognized a the time of the invention, only need to be inherent.  Old inventions do not become patentable simply because of a newly discovered inherent feature.  Prior art items which would perform the function desired under normal operation would anticipate the new invention through inherency.

2) Burden of Proof: Once the examiner has presented evidence/reasoning showing inherency from a prior art reference the burden moves to the applicant to prove non-obvious difference.

MPEP 2113: Product-by-Process Claims

The product of the product by process claim must be similar to prior art to be unpatentable and not the process used to achieve the product.  The same product by a different process is not patentable unless the product made by the new process is an improvement over the old product.  They are limited by the structure implied by the steps and not the manipulations of the recited steps.

MPEP 2114: Apparatus and Article Claims – Functional Language

Apparatus Claims:  The structure of the apparatus must be different from the prior art to be patentable.  A similar apparatus reference can perform the same function but not infringe if the structure is different.  These cover the device itself and not what the device does.  Operation method between apparatus claims is not a differentiating factor.

MPEP 2115: Material or Article Worked Upon by Apparatus

There is no limitation through the material or article which is worked on by the apparatus.

MPEP 2116: Material Manipulated in Process

For process or method claim obvious determination, all of the claims must be considered in weighing the differences between the new invention and the prior art.

MPEP 2121: Prior Art, General Level of Operability Required to Make a Prima Facie Case

1) Prior art is assumed to be Operable/Enabling:  The burden is on the applicant to prove that prior art is inoperable.  This pertains to a 35 U.S.C. § 103 rejection.  The level of disclosure is the same for any reference to make it an enabling disclosure.  The prior art type doesn’t matter and one skilled in the art must be able to carry out the claimed invention.

2) Use of Prior Art in Rejections Where Operability is in Question: 35 U.S.C. § 102 rejections must have a reference that teaches every element of a claim.  The reference does not need to teach how to practice the invention.  One can use secondary evidence which teaches how to make or use the invention.  35 U.S.C. § 103 rejections can use prior art reference which is non-enabling.

3) Compounds and Compositions: What constitutes Enabling Prior Art: Enabling prior art must allow one skilled in the art to make/synthesize the invention from the disclosure.  If the attempts to create the invention in the disclosure were unsuccessful the reference is non-enabling.

4) Plant Genetics: What Constitutes Enabling Prior Art: A person skilled in the art must be able to grow and cultivate the plant based on the prior art.

5) Apparatus and Articles: What Constitutes Enabling Prior Art:  A picture is okay if it shows all of the claimed structural features including how they put together.

MPEP 2123: Rejections Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

What is prior art in a patent?  Everything that is disclosed is considered prior art even what is not claimed, alternate embodiments and non-preferred embodiments.  The disclosure of these does not constitute “teaching away” from these embodiments.

MPEP 2124: Exception to the Rule that the Critical Reference Date Must Precede the Filing Date

If a reference shows a universal fact, the date of the reference does not need to be prior to the effective date to be used as prior art.  Examples of this are: scientific principal, material properties and material characteristics.

MPEP 2125: Drawings as Prior Art

Drawings can be used as prior art if they show all the claimed structural features and how they are put together.  This would be a 35 U.S.C. § 102 anticipation rejection.  Proportions of features in a drawing are not evidence of actual proportions when the drawings are not to scale.  Measurements of a drawing can not be used against an invention if there is no scale provided.

MPEP 2126: Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. § 102(a), (b) and (d)

“Secret” patents can be used as prior art as of the date they are made available to the public.  For a 35 U.S.C. § 102(d) rejection it is the grant date that is used.  Foreign patents are usually available as prior art when they are granted their patent rights and not the application filing date.

MPEP 2127: Domestic and Foreign Patent Applications as Prior Art

Abandoned applications including provisional applications use the date an abandoned application is available to the public for its prior art date.  Examples of this are: when it is voluntarily disclosed, is in a publication or when referenced in another patent.

Applications which have issued as patents: Canceled matter of a patent is available as prior art when the patent is granted.  This is when the file history becomes available to the public.  35 U.S.C. § 102(e) rejections can’t rely on matter canceled from an application, however 35 U.S.C. § 102(b) rejections can rely on information canceled prior to publication.

Foreign applications open for public inspection (Laid Open Application) constitute published documents.  An example would be being published in the official gazette.

MPEP 2128: “Printed Publications” as Prior Art

A reference is a “printed publication” if it is accessible to the public.

1) Electronic Publications as Prior Art: Web pages and online content are available as prior art.  “printed publication within the meaning of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to persons concerned with the relevant art.”  If there is no date included with the electronic publication it is not available under 35 U.S.C. § 102(a,b).  It can still be used to show the state of the art.  One does not have to how proof that someone viewed the publication as long as it was accessible to the public.

2) Level of public accessibility required:

Examples of publicly accessible documents:

  • Thesis placed in university library in indexed and shelved
  • Orally presented paper if written copies are available without restriction
  • Publicly displayed documents if only displayed for a few days.  These don’t have to be indexed, disseminated or filed in a database.  A person skilled in the art should be able to view them and they must be able to copy the information if desired.  Determining factors include: length of time displayed, target audience expertise, expectations that the material would not be copied and the ease at which the material could have been copied.

Not publicly accessible documents:

  • Internal documents of an organized marked confidential
    • The number of copies distributed internally are not important
    • There must be an existing policy of confidentiality in the organization

3) Date a publication is available as a reference: This can be shown through routine business practice.  Specific date of actual accessibility is not always necessary.  Publications become available as prior art the date they are received by a member of the public.

MPEP 2129: Admissions as Prior Art

1) Admissions by application constitute prior art: Admission on the record of a reference as prior art can be relied upon for a 35 U.S.C. § 102 or 103 rejection.  Even if the reference would not have been considered prior art otherwise.

2) Jepson Claims: reference 37 C.F.R. § 1.75(e).  Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

  1. A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
  2. A phrase such as “wherein the improvement comprises,” and
  3. Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

The preamble of a jepson claim is an implied admission of prior art and can be used to avoid a double patenting rejection.  If the preamble is the work of the applicant it can’t be used against him.

3) Information Disclosure Statements (IDS):  A reference on an information disclosure statement is not admitted prior art.

MPEP 2131: Anticipation – Application of 35 USC § 102(a), (b), and (e)

As a general rule, to anticipate a claim only one reference may be used.  The single reference must teach every element of the claim.  If the claim covers several structures or compositions the claim may be anticipated if any of the structures or compositions are disclosed in the prior art.

Exceptions to the general rule: anticipatory rejection using multiple references can be okay if the additional references are used to:

1) Prove the primary reference contains an “enabled disclosure”.  Extra references and extrinsic evidence can be used to show that the primary reference contains an enabled disclosure such as where one reference fully anticipates a machine or composition but does not provide and enabling disclosure of the invention.

2) Explain the meaning of a term used in the primary reference.  Extra references or other evidence can be used to show meaning of a term used in the primary reference buy may not be used to expand the meaning of term(s) used in the primary reference.

3) Show that a characteristic not disclosed in the reference is inherent.  Additional evidence may be used to show an inherent characteristic of the thing taught by the primary reference, such that it makes clear that the missing descriptive matter is necessarily present in the thing described in the reference.

Genus-Species Situations:  A species can anticipate a genus.  The reference need only disclose one species if multiple listed to anticipate the claim.

For range anticipation:

Single anticipated point: For a claimed range to be anticipated by a reference only a single point within the claimed range need to be disclosed in the reference.

Overlapping ranges: Usually is considered anticipated if any of the claimed ranges overlap.  However, this may not always be the case.  If the claim has a narrow range and the reference has a broad range.  No proof of success in the reference for the claimed range can nullify anticipation.

Nearly the same range:  Does not anticipate the claimed range if it is “nearly the same”.

The following are not used in anticipation rejections:

1) Secondary Considerations: Used in obviousness rejections (i.e. unexpected results), but not used in anticipation rejections.

2) Non-analogous or Disparaging Prior Art: This is irrelevant for 35 U.S.C. § 102 rejection.  This includes arguments of non-analogous art, disparaging, not recognized as solving the problem or that the reference teaches away.

MPEP 2142: Legal Concept of Prima Facie Obviousness – Relevant to § 103 Rejections

Prima Facie Obviousness: Determines who has the burden of proof on producing evidence during the examination process.  For obviousness the examiner has the initial burden of supporting an obviousness rejection.  Analysis in support of prima facie case must be made explicit.

Some examples of this include: Teaching, suggestion, or motivation in the prior art that would have led
one of ordinary skill to modify the prior art reference or to combine
prior art reference teachings to arrive at the claimed invention; “Obvious to try” – Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; Substitution of one known element for another to obtain predictable results; Applying a known technique to a known device ready for improvement to yield predictability; Use of known technique to improve similar devices in the same way; Combining prior art elements according to known methods to yield predictable results.

Suggestion or Motivation to Modify the Reference:

If there is some teaching, suggestion or other motivation to combine or modify the teachings of a prior art reference obviousness can be established.  The fact that two references can be combined/modified is not enough to establish prima facie obviousness.  Statement that prior art is within the capabilities of one of ordinary skill in the art is not sufficient by itself to establish prima facie obviousness.  Examiner proposed modification to the prior art for establishing obviousness cannot render the prior art unsatisfactory for its intended purpose.  Can not change the principal operation of a reference.

Reasonable Expectation of Success is Required:

Obvious rationale must show ALL claimed elements were known in the prior art.  One skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions.  There must be a reasonable expectation of success for obviousness.  Some degree of predictability is required and predictability is determined at the time the invention is made.  Applicants can show evidence of no reasonable expectation of success.

MPEP 2144: Supporting a Rejection Under 35 USC § 103

What rational is needed?

In order to support a rejection under 35 U.S.C. § 103 there must be legal precedent, scientific principles, logic, reasoning from common knowledge in the art, in a reference or art recognized equivalents.

For legal precedent, the facts of the case must be sufficiently similar to those in the application.  For reasoning from common knowledge in the art, the rationale may be different for an examiner compared to an application in order to show obviousness.

The rationale for combining references is strongest when showing an advantage.

Graham factors for an examiner to determine obviousness are:

  1. Determine the scope and contents of prior art
  2. Ascertain the differences between the prior art and the claims in issue
  3. Determine the level of ordinary skill in the pertinent art
  4. Evaluate any evidence of secondary considerations

MPEP 2145: Consideration of Applicant’s Rebuttal Arguments

Burden of proof is shifted to the applicant once the examiner establishes prima facie obviousness.  Applicant can submit a rebuttal which may include evidence of “secondary considerations” such as commercial success, long felt but unresolved need and failure of others.

Rebutting evidence can be submitted to overcome an obviousness rejection.  Argument cannot replace evidence where evidence is needed.  Prima facie obviousness can not be rebutted by merely recognizing additional advantages or latent properties in prior art.  Arguments of not being physically combine-able can not rebut an examiner’s rejection.  The test is designed to see what the combined teachings of those references would have suggested to those of ordinary skill.  Not simply if they can be physically combined.

To rebut obviousness rejections one can not argue against individual references, the number of references combined, limitations not claimed, economic in-feasibility, age of references or that the prior art is non-analogous.

MPEP 2183: Making a Prima Facie Case of Equivalence

This is when an element in prior art is equivalent to the corresponding element disclosed in the specification.  The examiner can find prior art element which performs the function specified in the claim.  This is not excluded by any explicit definition provided in the specification for an equivalent.  Examiner should assume the prior art element is an equivalent.

MPEP 2186: Relationship to the Doctrine of Equivalents

Doctrine of equivalents arises in the context of an infringement action. When product of process does not specifically infringe a protected invention.  The item may still be found to infringe though the doctrine of equivalents.  All words of the claim are considered when judging patentability of a claim against the prior art.  Doctrine of equivalents operates to expand claim coverage beyond the literal scope of the claim language.

 

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3.3 – MPEP 1500 Design Patents

Design Patents Featured

A design patent is the protection of the ornamental look of an item.  Not all of the same rules as utility patents apply to design patents, most notable the PCT rules for utility patents do not apply to design patents.

MPEP 1502 – The Definition of a Design

A design embodied in or applied to the article of manufacture is protected in a design patent, the article itself is not protected by a design patent.  The design protected by a design patent is inseparable from the article which it is applied to as the design cannot exist alone as a surface ornamentation.

Both design and utility patents can be obtained on a new invention if the uniqueness resides both in the utility and ornamental appearance.

Some key differences between a design patent and a utility patent are:

Utility Patent:

  • Term is 20 yrs from US filing date or earliest effect US filing date.
  • Maintenance fees are required for utility patents
  • Utility patents can have multiple claims
  • A restriction in a utility patent is at the discretion of the examiner
  • 1 year is allowed to claim foreign priority
  • Can claim the benefit of a provisional application
  • Continued Prosecution Application (CPA) is not available
  • Applications are published unless there is a non-publication request

Design Patent:

  • Term is 14 years from date of grant
  • No maintenance fees
  • Only a single claim is allowed
  • Restriction is mandatory in design patents
  • Only 6 months are available to claim foreign priority
  • Cannot claim benefit to a provisional application
  • Request for Continued Examination (RCE) is not available
  • Continued Prosecution Applications are available
  • Not subject to application publication

MPEP 1503 – Elements of a Design Patent Application

35 U.S.C. § 171 provides rules for design patent applications.  Essentially there are the same elements in a design patent as a utility patent notably the drawing and claim requirement.

For the specification the following are required:

Preamble/Title: Should include name of applicant, title of the design and brief description of the nature and intended use of hte article in which the design is embodied.

Description: Brief description of the drawing is usually required

Claim: Only a single claim is allowed.  Usually design patent claims are written as “the ornamental design for the article which embodies the design or to which it is applied as shown.”  Statements that describe or suggest another embodiment of the claimed design having a shape and appearance that would be evident from the one shown are permitted in the specification of an issued design patent.

Drawing:  Must include either a drawing or photograph of the claimed design, but it cannot contain both.  There cannot be inconsistencies between different views of the drawing or it will be objected to.  Drawings should have sufficient number of views to convey the complete appearance of the design claimed.  Broken lines can not be used in the drawings since everything claimed is important.

MPEP 1504 – Examination

The following are required to obtain granting on a design patent:

Novelty: The design must be original and not jest a simulation of an existing object or person.  There will be a 35 U.S.C. § 171 rejection if the subject matter in the claimed design lacks originality.

Non-obviousness: Graham factual inquires are applicable to design patent obviousness as well.  They are:

  1. Determine the scope and content of the prior art
  2. Ascertaining the differences between the claimed invention and the prior art
  3. Resolving the level of ordinary skill in the art
  4. Evaluating objective evidence of non-obviousness

Enablement and Definiteness also apply.

There are three types of patentable design:

  1. Designs for ornament, impression or for print/picture applied to an article or manufacture
  2. Designs for the shape or configuration of an article of manufacture
  3. A combination of the above two

What isn’t patentable?

A picture standing alone, offensive subject matter or an article that will be hidden from view as this lack ornamentation.

The design visible in its ultimate use which is primarily functional based on the evidence of record or a design not visible in its ultimate hidden end use which is itself evidence that the design is primarily functional.

Overcoming a 35 U.S.C. § 171 rejection:

One must submit a 37 C.F.R. § 1.132 declaration explaining in depth and specifically which areas of the claimed design were created for primarily ornamental reasons and show that the design was completed with the “thought of ornament”.

MPEP 1504.05 – Restriction:

If more than one patently distinct invention resides in a design patent a restriction will be required by the examiner.  Design inventions are independent if there is no apparent relationship between two or more disparate articles disclosed in the drawings. An example would be a foot ball and scissors or a computer and a flower.  If there is a restriction requirement made on the application, a divisional continuation application is available for the item not elected in the original application.  To overcome a restriction requirement the invention must have overall appearances with basically the same design characteristics, and the differences between the embodiments must be sufficient to patently distinguish one design from the other.

MPEP 1504.06 – Double Patenting

To determine if a double patenting rejection is correct the following must be true:

  1. Is the same design being claimed twice?  –  (Statutory double patenting)
  2. Are the designs directed to patently indistinct variations of the same inventive concept? – (Non-Statutory double patenting)

If there is a non-statutory rejection a terminal disclaimer may be used to overcome the rejection, but this is not true for statutory double patenting.

For a non-statutory type double patenting a rejection is appropriate if:

1) The difference in scope is minor and patentably indistinct between the claims being compared;
2) Patent protection for the design, fully disclosed in and covered by the claim of the reference, would be extended by the allowance of the claim in the later filed application; and
3) No terminal disclaimer has been filed.

MPEP 1504.10 – Foreign Priority

35 U.S.C. § 172 defines the right of priority for design patents.  The right of priority provided for design patents is six months unlike the twelve months provided for utility patents.  Additionally, a design patent cannot claim the benefit of another application under 35 U.S.C. § 119(e).  If there is no statement in the design application as originally filed incorporating by reference the disclosure of an earlier filed application, the disclosure in a continuing application may not be amended to conform to that of the earlier filed application.  The material must be explicitly incorporated into reference in the application.

MPEP 1505 – Allowance and Term of Design Patent

The term of a design patent is 14 years from the date of issuance and not from the filing date.

MPEP 1509 – Reissue of a Design Patent

The patent term of a design patent cannot be extended through reissue.  In a reissue application on a design patent a copy of all the drawing views must be included regardless of if the views are being cancelled or amended.

MPEP 1510 – Reexamination

Reexamination rules as in MPEP 2200 for utility patents apply to design patents.

MPEP 1511 – Protest

Protest rules as in MPEP 1900 also apply for design patents.

MPEP 1512 – Relationship Between Design Patent, Copyright, and Trademark

In addition to protection of a design patent, the ornamental design may also be protected through copyright and trademarks.

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3.4 – MPEP 1600 Plant Patents

Plant Patents Featured

MPEP 1600 – Plant Patents

A plant patent is protection for an inventor who has invented or discovered an asexually reproduced distinct and new variety of plant.

This can’t be tuber propagated plant a plant found in an uncultivated state or bacteria.  However, it can be a plant capable of sexual reproduction if they themselves were asexually reproduced or where produced from seed.

The patent term for a plant patent is 20 years.

The same rules for a utility patent apply to plant patents unless otherwise noted in 37 C.F.R. § 1.161.

MPEP 1601 – Introduction: The Act, Scope, Type of Plants Covered

Reference 35 U.S.C. § 161 for patents for plants.  Specifically this states, whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tube propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.

Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc…  Plants capable of sexual reproduction are not excluded from consideration if they have also be asexually reproduced.

With reference to tuber propagated plants, for which a plant patent cannot be obtained, the term “tuber” is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch.  Such plants covered by the term “tuber propagated” are the Irish potato and the Jerusalem artichoke.  This exception is made because this group alone, among asexually reproduced plants, is propagated by the same part of the plant that is sold as food.

MPEP 1603 – Elements of a Plant Application

Filing requirements for a plant application should occur in the following order:

  1. Plant application transmittal form
  2. Fee transmittal form
  3. Application data sheet
  4. Specification
  5. Drawings (in duplicate)
  6. Executed oath or declaration
  7. Elements of each of the above are the same as utility patents

MPEP 1605 – Specification and Claim

The specification should include:

  • Complete detailed description of the plant and the characteristics that distinguish it from known existing plants.
  • The origin or parentage
  • The genus and species designation of the plant variety to be patented
  • The latin name of the genus and species of the plant claimed preceded by the heading
  • Where and in what manner the variety of plant has been asexually reproduced
  • A distinctive reference to color – if it is a distinguishing feature
  • One claim – as only the entire plant can be patented so only one claim is needed

MPEP 1606 – Drawings

Two copies are required if color drawings and/or photos.  These are not required to get a filing date for the application.  However, these must be submitted before the application can be forwarded to the examiner.  The photo requirements of utility patents are waived for plant patents.

MPEP 1607 – Specimens

Specimen examples are not required unless requested from the examiner.

Misc Other

The language of the claim must refer to a “new and distinct variety of plant.”  No claim should be directed to a new variety of flower or fruit.  No laudatory remarks should be used in the claims (i.e. “prettiest orange flower”).

 

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3.5 – MPEP 2400 Biotechnology

Biotechnology Patent Law

Biotechnology Patent Law

MPEP 2420 – Requirements for Nucleotide Sequences and/or Amino Acid Sequence Disclosures

Diversity and complexity of nucleotide and amino acid sequence data created problems with searching and analysis both inside and outside the office.  This complexity problem was solved with a creation of the sequence rules which creates:

  1. A standardized format for descriptions of nucleotide and amino acid sequence date.
  2. A requirement that sequence data be submitted in a computer readable form.

These rules went into effect on October 1, 1990 and was revised on July 1, 1998.

MPEP 2421.02 – Sequence Rules Requirements Summary

The sequence rules define a set of symbols and procedures that are both mandatory and the only way that an applicant is permitted to describe information about a sequence that falls within the definitions used in the rules.

These sequence rules include:

Nucleotide Sequences: All unbranched, All branched with ten or more bases and they must have four specifically defined nucleotide sequences.

Amino Acid Sequences: Non-D amino acid sequences with four or more amino acids.  There must be at least 5 specifically defined amino acid sequences.

MPEP 2425 – Form and Format for Nucleotide and/or Amino Acid Sequence Submissions in Computer Readable Form

Reference 37 C.F.R. § 1.824 which sets forth the requirements for sequence submissions in computer readable form.

Any computer operating system may be utilized to produce a sequence submission, provided that the system is capable of producing a file having the characteristics specified in 37 CFR § 1.824, and is capable of writing the properly formatted file to one of the acceptable electronic media.

If a given sequence and its associated information cannot practically or possibly fit on the electronic media required in 37 CFR § 1.824(c), an exception via a non-fee petition to waive this provision will normally be granted.

As set forth in 37 CFR § 1.824(d), the computer readable forms that are submitted in accordance with these rules will not be returned to the applicant. 37 CFR § 1.824(a)(6) requires the labeling, with appropriate identifying information, of the computer readable forms that are submitted in accordance with these rules.

(a) The computer readable form required by 37 C.F.R. § 1.821(e) shall meet the following requirements:

1) The computer readable form shall contain a single “Sequence Listing” as either a diskette, series of diskettes, or other permissible media.
2) The “Sequence Listing” shall be submitted in American Standard Code for Information Interchange (ASCII) text. No other formats shall be allowed.
3) The computer readable form may be created by any means, such as word processors, nucleotide/amino acid sequence editors’ or other custom computer programs; however, it shall conform to all requirements.
4) File compression is acceptable when using diskette media, so long as the compressed file is in a self-extracting format that will decompress on one of the systems described in (b).
5) Page numbering must not appear within the computer readable form version of the “Sequence Listing” file.
6) All computer readable forms must have a label permanently affixed thereto on which has been hand-printed or typed: the name of the applicant, the title of the invention, the date on which the data were recorded on the computer readable form, the operating system used, a reference number, and an application number and filing date, if known. If multiple diskettes are submitted, the diskette labels must indicate their order (e.g., “1 of X”).

(b) Computer readable form submissions must meet these format requirements:

1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or Macintosh;
3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
4) Pagination: Continuous file (no “hard page break” codes permitted).

(c) Computer readable form files submitted may be in any of the following media:

1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits per inch, 9 track; Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
3) 8mm Data Cartridge: Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
4) Compact disc: Format: ISO 9660 or High Sierra Format.
5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.

(d) Computer readable forms that are submitted to the Office will not be returned to the applicant.

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4.0 – Applications

Applications Featured Image

Part number 4 of the study blog deals with applications and their type and status, parts form and content and their examinations.  The major sections of the MPEP covered here is MPEP 200 – Type and Status, MPEP 600 – Parts, Form and Content and MPEP 700 – Examinations.  Each of these chapters will be covered in more detail in the following posts.

For MPEP 200 – Types and Status the following topics will be covered:

  1. Types of Applications
  2. Cross-Noting
  3. Status of Application
  4. Inventorship
  5. Correction of Inventorship Not Required
  6. Other Ways to Correct Inventorship
  7. Foreign Priority Claims
  8. Publication of Patent Applications

For MPEP 600 – Parts, Form and Content the following topics will be covered:

  1. Parts, Form and Content of Application
  2. Content of Provisional and Non Provisional Applications
  3. Original Oath or Declaration
  4. Supplemental Oath or Declaration
  5. Applicant
  6. Title of Invention
  7. Filing Fee
  8. Disclosure
  9. Information Disclosure Statement

For MPEP 700 – Examinations the following topics will be covered:

  1. Requirements for Information
  2. Rejection of Claims
  3. Order of Examination
  4. Suspension of Action
  5. Period for Reply
  6. Abandonment and Revival of Patent Application
  7. Interviews
  8. Amendments
  9. Affidavit or Declaration of Prior Invention
  10. Affidavits or Declarations Traversing Rejections
  11. Public Use Proceeding
  12. Trade Secret, Proprietary, and Protective Order Material
  13. Petition to Expunge Information
  14. The basics of the examination process

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4.1 – MPEP 200 Type and Status

Type and Status Featured

MPEP 201 – Types of Applications

There are two types of patent applications which can be filed regarding geography they are country specific or national applications and international applications.  National applications for the U.S. are filed with the USPTO under 35 U.S.C. § 111.  The rules for national applications varies based on what country the application is filed in.  The other type of application is an international application which is filed under the patent cooperation treaty (PCT).  The international applications select a country to which the application will be progressed to at the national stage.  When the international application enters the national stage it is considered a national application.  The filing date of these applications for the U.S. is the U.S. filing date if it is directly filed with the USPTO or when the application enters the national stage if it is an international application.

Sometimes the inventorship in an application can be incorrect.  If this is the case it can be corrected through the guidance of 37 C.F.R. § 1.48(x) depending on what the circumstances are.  The following is a list of the different circumstances and what 37 C.F.R. code should be followed to correct.

37 C.F.R. § 1.48(a) – for when an innocent error occurred from the beginning in an oath or declaration.  This is for non-provisional applications.  Can be used for issued patents.

37 C.F.R. § 1.48(b) – can be used to correct inventorship during prosecution do delete one or more inventors.  This is for non-provisional applications.  Can be used for issued patents.

 37 C.F.R. § 1.48(c) – can be used if adding an inventor during prosecution and for amending claims.  This is for non-provisional applications.

37 C.F.R. § 1.48(d) – can be used to add an inventor to a provisional application.

37 C.F.R. § 1.48(e) – can be used to delete an inventor from a provisional application.

37 C.F.R. § 1.48(f) – can be used in an oath or declaration or cover sheet was not submitted.  Inventor will be corrected with the proper form submittal.

37 C.F.R. § 1.53 – can be used in a continuing application to correct inventorship.  Must include the application number and filing date.

Terminology of patent applications.

Commonly patents are referred to as parent applications or original applications.  A parent application is used to define applications which a later application claims the benefit of.  The later application is call the “offspring application” or “child application”.  They claim the benefit to the parent application through 35 U.S.C. § 120.  Provisional applications are never referred to as “parent applications”.  Original applications are applications which are not reissue applications but the original application as the name infers.  An original appellation can be an offspring application.

U.S. national applications

There are various types of applications which can be used such as: Non-provisional (regular), provisional, reissue, divisional, continuation, continued prosecution application and substitute.  Each will be discussed in more detail below.

Non-Provisional Application: These applications are filed under 35 U.S.C. § 111(a).  A filing date is acquired once the minimum required filings of the specification, claims, drawings are received by the patent office.  An oath or declaration and filing fee are also required but not to obtain a filing date.  These applications may claim the benefit of a provisional or another non-provisional application.

Provisional Applications: These applications are filed under 35 U.S.C. § 111(b) and 37 C.F.R. § 1.53©.  The applicant must specify whether the application is a provisional application to obtain that status.  Provisionals are only available for utility patents and not design or plant patents.  The required filings for a provisional application is the specification, drawings, cover sheet and filing fee.  A provisional application can not claim the benefit of the earlier file application.  They are also not examined by the patent office.  They expire after 12 months.  A notice of missing parts is sent out if the cover sheet is missing or incomplete or the fee is not paid.  The notice of missing parts needs to be corrected within 2 months or it will go abandoned.  An english translation is not required since they are not reviewed by the patent office.

A provisional application can be converted to a non-provisional application and must be converted within 12 months from the filing or before the provisional expiration.  The conversion request should be accompanied by a conversion fee and an amendment with at least one valid.  A converted application has the filing date of the provisional application.  As a result of this filing date it is often not the wisest decision to convert but to claim priority to the provisional application in a new non-provisional application.  Claiming the benefit adjusts the patent term start to the new application and not the previously filed provisional application.  Basically an applicant could loose one year of coverage if converting rather than claiming the benefit.

A non-provisional application can also be converted to a provisional application.  This must happen within 12 months of filing the non-provisional application as the newly created provisional application still needs to have pendency.  To convert an applicant must submit a petition requesting conversion and the appropriate fee.

Reissue applications: These applications take the place of an unexpired patent which is defective.  It can be defective in more than one way.  The reissue patent will expire wen the original agent term ends and is usually requested by the patent owner.  They can be filed any time during the patent term.  If the intent is to broaden claims it must be filed within 2 years of the granting of the original patent but the claims must not have been narrowed or changed to allow the original’s granting.  Multiple reissue applications for the same patent can be made, but they must issue simultaneously.

Divisional applications: These are used when more than one invention is claimed in an application.  The applicant will be instructed to choose one invention to remain in the original application and the other invention can be moved to a divisional application.  The divisional application will have the same filing date as the original application.  The divisional application can only contain subject matter from the original application.  Additionally, there must be at least one common inventor between the two applications.  The claims in the original application do not act as a statutory bar until one year from the issuance of the original patent.  Divisional are filed under 37 C.F.R. § 1.53(b)(d).  A new oath or declaration is only required for new inventions added to the divisional.  Small entity status must be claimed again during the filing of a divisional application.

Continuation application: Continuations are a second application for the same invention claimed in a prior non-provisional application.  Continuations are filed under 37 C.F.R. § 1.53(b) or (d).  They are filed during the pendency of the parent application.  A continuation application claims the benefit of the prior non-provisional application under 35 U.S.C. § 120.  Prior applications can’t be abandoned when filing a continuation and a new oath or declaration is not required.  If one is claiming small entity status the claim to such status must be reasserted.  There needs to be one common inventor with the parent application and no new matter can be added during a continuation application.  The disclosure should be the same as the original application.

Continued prosecution applications (CPA): CPAs are only for design patents after July 14, 2003.  They can be filed by facsimile and must be filed while the design patent application is still pending which is prior to the payment of the issue fee, abandonment or termination of proceedings.  There can be a request for suspension filed at the same time as the continued prosecution application.  When filing a continued prosecution application the prior application becomes abandoned and the filing date is the date the continued prosecution application is filed, but the application can claim benefit to the original earlier filed application.  A continued prosecution application must identify the prior application, disclose the same subject matter and name the same or few inventors (no additional inventors are allowed).  Terminal disclaimers are carried over to the continued prosecution application and small entity status must be reestablished if desired.

Substitute applications:  These are entirely new applications with the same disclosure as the earlier application.  The old application becomes abandoned and the new application is the duplicate of the earlier filed application.  A substitute application is never co-pending with the original application and it has it’s own filing date.

Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. § 120 and § 119(e)

Disclosure in an earlier filed application which 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 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.  One can petition for unintentional delay if the benefit is not claimed within the later of: 4 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.

Title to an Application Claiming Benefit of an Earlier Application

Assignment records of the USPTO only reflect assignments of divisional or continuation applications if a request for recordation in compliance with 37 C.F.R. § 3.28 accompanied by the required fee is made.

Right of Priority of Foreign Application

The following are rules for filing for foreign priority. It must be filed in countries which afford similar privileges for applications filed in the US, citizens of the US or in a WTO member country.  There must be at least one common inventor.  Domestic applications must be filed within 12 months of the foreign application or within six months for a design application.  They must also be for the same invention.  If filed under 35 U.S.C. § 111(a) the claim of priority should be made during the pendency of the application within the later of 4 months of the actual filing date or 16 months from the filing date of the prior foreign application.  For appellations entering the national stage the claim for priority must be presented during the pendency of the application within the limit set forth in the PCT.  If the basis of the claims is an application for inventors certificate the requirements of 37 C.F.R. § 1.55(b) must also be met.

Using Certificate of Correction to Perfect Claim for Priority Under 35 U.S.C. § 119 (a)-(d) or (f)

Reissue application can be used to correct failure to perfect a claim to foreign priority benefit prior to patent issuance.  A certificate of correction can also cure a failure to perfect a claim to benefit only under certain circumstances if okayed by the commissioner.  Additional to reissue or certificate of correction an applicant can also seek correction of priority through a petition to accept delayed claim for priority under 35 U.S.C. § 119(a)-(d), or (f).  This should be accompanied with a fee and a statement that the delay was unintentional.

Incorporation by Reference Under 37 C.F.R. § 1.57(a)

In the case where all or a portion of the specification or drawing(s) are inadvertently omitted from an application and under 37 C.F.R. § 1.55 there is a claim for priority to a prior filed foreign application or under 37 C.F.R. § 1.78 there is a claim for the benefit of a prior-filed provisional, non-provisional or international application that was present on the filing date of the application and the omitted portion is completely claimed in the prior filed application the claim for priority or benefit can be considered an incorporation by reference of the prior-filed application.  However, the following must be met: the applications must have been filed on or after September 21, 2004, the missing portions must have been omitted inadvertently and the claim for priority or the claim for benefit must have been present on the filing date of the application.  An amendment must be filed to include the omitted portion within the time period set by the office.  A petition must also be filed following 37 C.F.R. § 1.17(f) if the application is not otherwise due a filing date.  The fee must also be paid.  A copy of the prior application should be provided but not if it is filed under 35 U.S.C. § 111.  An english translation should be provided for any prior filed application in another language.  The application needs to identify where the omitted portion is found in the prior filed application.

MPEP 202 – Cross Noting

To cross note another application the first page of a printed patent identifies all prior applications for which priority is claimed.  The patent owner should make certain that the information is correct.  The additional of this information entitle the new patent the filing date of that which is cross noted.

MPEP 203 – Status of Application

There are different status that an application can have during its prosecution.  They are new, rejected, amended, allowed or in issue, abandoned or incomplete.

A New application is a non-provisional application which the examiner has not yet issued an office action for.  If there is a preliminary amendment to the new application the status of the application does not change.

Rejection applications are non-provisional applications which have not received a reply to an examiners action.  It will remain in rejected status until a proper response is received by the examiner from the applicant(s) or until it is abandoned.

Amended applications are non-provisional applications which have been acted on by the applicant in response to an examiners action.  The reply can be an amendment to the application or another attempt to overcome the examiners rejection.  In the case where a reply is made back to the office based on an examiners action and no reply is heard for six months from the reply an applicant is encouraged to inquire as to the status of the application as to avoid potential abandonment of the application.

Allowed or in issue applications are applications that have progressed through prosecution and have been allowed to issue as an enforceable patent.  The issuance is conditional upon the payment of the issuance fee.  Its status continues until is it abandoned, issues as a patent or is withdrawn from issue.

Abandoned applications are applications which are removed from the office docket of prosecution due to formal abandonment, implied abandonment, failure to pay an issuance fee or in the case of provisional applications the 12 month life has expired.

Finally, incomplete applications are applications which are not entitled to a filing date for one reason or another.

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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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4.3 – MPEP 700 Examinations

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MPEP 701 – Statutory

The main laws followed during the examination and subsequent granting of rejection of a patent are set for in 35 U.S.C. § 101, 102 and 103.

MPEP 702 – Requisites of the Application

Initial review of a patent is looking for in-formalities and sufficiency of disclosure (the MPEP 600 requirements).

If the application passes this initial review and is forwarded to the examiner for a first office action, but later an incomplete disclosure is found the following procedure is applied:  First a reasonable search is completed or as much searching that can be done given in the errors in the disclosure; Second if there is not enough in the disclosure for even a search the office will inform the applicant that no search was made.  There will be a citation of the objects of invention, claims and any pertinent art cited.

Deficiencies or in-formalities found by the OIPE (Office of Initial Patent Examination) are communicated by attachments to the office action.  If the claims are informal as required by 35 U.S.C. § 112 they will be rejected as failing to define the invention.  A blanket rejection is usually sufficient.

MPEP 704 – Requirements for Information

The examiner may require the submission of information which is reasonably necessary to properly examine or treat any issues.  This includes during reissues, reexaminations, initial applications, abandoned applications or applications entering the national stage.  The request can be made by the examiner to the applicant or assignee of the patent application and is completely at the examiners discretion.  The examiner can compel the disclosure of information if it is reasonably necessary.  The information requested does not have to be the same type of info that is already required to be disclosed in an IDS.  Any reply that states that the information required to be submitted is unknown or is not readily available will be accepted as a complete reply (safe harbor).  This burden of disclosure is much lower that that which is required under 37 C.F.R. § 1.56(c).  An applicant usually has 3 months to reply (whether with an office action or separately from an office action).  Extension of time can be used in this circumstance.  If there is no reply the application will become abandoned.  After the applicant’s reply the examiner must respond within 2 months of receipt.  The examiner may not make the next action a final rejection if it involves the new matter. The applicant can also petition under 37 C.F.R. § 1.181 that a request for information is unfair.  However, the petition is not a response to the request and does not stop the time period for reply while the petition is being considered.

MPEP 706 – Rejection of Claims

The rejection of a claim or claims is based on subject matter (or their substance) and is subject to appeal.  An objection, on the other hand, is based on form and may be reviewed only by petition to the director.  If there is new matter added to an application it will be objected to.

Remember:

Rejection -> Appeal

Objection -> Petition

The following is the USPTO claims treatment sequence: Examine the patent and search the prior art; if rejection is proper a first rejection is issued; applicant can then rebut the rejection or amend the claims; second rejection is issued if it is not accepted by the examiner.  This decision is appealable under 37 C.F.R. § 1.116.

The two most common forms of rejection are 35 U.S.C. § 102 and 103:

If a claim is properly made and supported usually there are two reasons for a rejection either the claim is anticipated or is obvious in view of prior art reference(s).

Anticipation 35 U.S.C. § 102: States that even if a single reference which establishes valid prior art to a claim exists the claim may be rejected.  Possible prior art includes granted patents, published patent applications (U.S. or Foreign), publications describing the invention (usually in english) or sale of the invention.

Obviousness 35 U.S.C. § 103: States that where there is not one single source showing the invention but there are many sources each showing parts of the claimed invention and when put together they would be obvious to one skilled in the art it can be rejected for obviousness.

Prior Art – The Effective Filing Date

If an applicant is filing a continuation/divisional application of one or more U.S. or international applications and the applications are valid on their own for having fling dates under 35 U.S.C. § 120/ §365 for international application the effective filing date is the earliest filing date in the line of continuation or divisional applications.

If the application is a Continuation In Part of a proper U.S. application or an international application, any new matter added in the Continuation In Part application not supported in the original application has the effective date of the new Continuation In Part application.  Claims that are supported in the original application have an effective date of the earlier filed application.

If the applicant is claiming foreign priority under 35 U.S.C. § 119(a)-(d) or 35 U.S.C. § 365(a),(b) then the effective filing date is the date of the U.S. application unless it is claiming priority to a different U.S. application.  Foreign priority dates are not the same as claiming benefit they have fewer privileges.

If an application is claiming priority of a 35 U.S.C. § 119(e) provisional application, the effective filing date is the same as the filing date of the provisional application.  The claims must be fully supported by the provisional application.

102 Rejections – Anticipation

35 U.S.C. § 102 embodies the law on prior art.

An inventor is entitled to a patent unless…

(a)  The invention was known or used by others in the U.S. or patented or described in a printed publication in this or a foreign country before the invention by the applicant.

(b) The invention was more than one year prior to the date of the application for patent in the United States patented or described in a printed publication in this or a foreign country, in public use in this country or on sale in this country.

(c) The inventor abandoned the invention

(d) The applicant already patented or applied for patent on the invention in a foreign country more than one year prior to the date of the application for patent in the United States

(e) somebody else filed a U.S. patent application or international patent application that has an effective filing date before the effective filing date of the current patent application that claims the same invention.

For applications in the U.S. the earliest U.S. fling date is the effective date (including the earliest filing where an application is able to claim the benefit of theearlier filing date).  For international applications there is the possibility of getting a date earlier than the U.S. date with these caveats for a date cutoff of November 29th 2000.  Before November 29th 2000 there is no claiming back to a previous international application either by bringing the international application onto the national stage or by filing a new U.S. application and claiming foreign priority to the international application.  On or after November 29th 2000 it depends on the original international applications filing date.  If the international application specifies the U.S. and if the PCT/WIPO publishes it in english then the original filing date of the international application will be effective for a 35U.S.C. § 102(e) rejection.  The PCT/WIPO publication must be in english to be used however.

MPEP 706.02(b) – How to protest a rejection based on prior art

For 102(a), (b) prior art there are 4 major ways to fight a rejection:

A. Persuasively argue that the claims are patently distinguishable from the prior art.
B. Amending the claims to make them patently distinguishable.
C. Perfecting Priority (35 U.S.C. 120) within the time period of 37 CFR 1.78(a).

Amend the specification to include a specific reference to a prior application.  File an application data sheet with the reference included.  Need to be at least one common inventor/assignee.  Claims must be supported by the prior valid application.  Must establish that the prior application meets the enablement and description requirements of 35 U.S.C. § 112.

D. Perfecting a priority claim under 35 U.S.C. 119(e) for a prior provisional application.

Application has to be filed within 12 months of the original provisional application.  Can’t have a lapse of the 12 month period, may need to file another provisional application to get the chain going.

For a 102(e) there are 6 ways to fight the rejection:

A. Persuasively argue that the claims are patently distinguishable from the prior art.
B. Amending the claims to make them patently distinguishable.
C. Filing an affidavit under 37 CFR 1.132 to show the earlier app is not by “another” (Needs to be one inventor/assignee in common).

D. File an Affidavit under 37 CFR 1.131 showing that this applicant actually invented the invention before the other prior applicant (Partially eliminated through the AIA first-to-file system).

E. Perfecting Priority (35 U.S.C. 120) within the time period of 37 CFR 1.78(a).

Amend the specification to include a specific reference to a prior application.  File an application data sheet with the reference included.  Need to be at least one common inventor/assignee.  Claims must be supported by the prior valid application.  Must establish that the prior application meets the enablement and description requirements of 35 U.S.C. § 112.

F. Perfecting a priority claim under 35 U.S.C. 119(e) for a prior provisional application.

Application has to be filed within 12 months of the original provisional application.  Can’t have a lapse of the 12 month period, may need to file another provisional application to get the chain going.

103 Rejections – Obviousness

Prima Facie case of obviousness needed for proper rejection.  There are three elements which must be met:

A.  Some suggestion or motivation in the references themselves, or on generally available knowledge to modify the reference or combine teachings of the reference.

Invention is just putting two items together, or someone skilled in the art would easily know to put the items together.

B. There must be a reasonable expectation of success.

If an unexpected result is achieved through simply adding two items together this may be not be obvious.

C. Prior art reference(s) must teach or suggest all the limitations that are in the claim.

The reference must teach the combination of the items in the claim, and suggest that success would be likely.  Can’t be simply based on applicants disclosure.

35 U.S.C. § 103(c)
A claim that has been rejected under any of 102(e)(f)(g) can have the rejection overcome if it is found that there was a common owner of the prior inventions which created the prior art and if the common owner also owned the new invention at the time it was actually invented.

After 11/29/1999:  If Joe has the rights to application 1 and then Joe invents 2 which is derived/obvious from 1, 1 can not be used in 102(e)(f)(g).

Before 11/29/1999:  If Joe has the rights to application 1 and then Joe invents 2 which is derived/obvious from 1, 1 can not be used in 102(f)(g).

Common Ownership
A party or multiple parties had 100% ownership in both the prior application and the new application at the time the new invention was invented.

There are three major needs for common ownership:  Prior art to the claimed invention must be commonly owned (100% by the same party or joint parties), must be subject to assignment to the common owner, or there was a joint research agreement in place.

What evidence is needed to prove common ownership?

The evidence must prove there was a common ownership at the time of the later invention.  It is not enough to just show the applicant owns both inventions at the present time.  In order to prove this the following must met: The applicant(s) attorney or agent of record must make a statement that the prior inventions and the new invention were all commonly owned; The statement should be clear, straight forward and on a separate sheet of paper.

A joint research agreement is different than common ownership in that multiple parties do not have to share or assign ownership of inventions back & forth.  There are three major points needed for the joint research agreement: The claimed invention was made on behalf of the parties to the joint research agreement; The invention was made due to activities of the joint research agreement; The application has to be amended to clearly disclosed the names of the parties to the joint research agreement.

Common ownership is not always necessary if there is a joint research agreement between parties.  But, if there is a joint research agreement that comes into effect after the new invention is made the new invention is not covered.  Joint research agreements are often narrow so a joint research agreement covering one invention will not allow the partner to make a new invention based on the partner’s previous invention.

What is needed to prove the joint research agreement?

Once the examiner has made a prima facie case of obviousness the burden of overcoming the obviousness is back to the applicant.  Similar
to common ownership, the applicant needs to clearly show that the invention is within the scope of the joint research agreement and that
the joint research agreement was in effect before the later invention was made.

Non-patentable inventions MPEP 706.03

Some subject matter cannot be patented.  Some examples of this are: Printed matter (text in a book is not patentable but can be copyrighted); Naturally Occurring Articles (One cannot patent items found to be naturally occurring in nature, however, a genetically engineered item could be patented); Scientific Principles (Theoretical discoveries can not be patented).

Items which lack utility also cannot be patented.  Usually this is only used to stop blatantly unpatentable inventions.  Inventions which may be considered immoral or illegal still have utility and could be patented. Inventions only used for making nuclear weapons are not patentable.

Foreign Filing License:

US application will be rejected if the applicant files in another country before receiving a foreign filing license (assuming the invention was made in the US).  A license is obtained automatically six months after the filing date.  They can also be obtained retroactively with a petition and fee if the following is included: countries which it was filed in, dates of filing, proof the application was not made secret, statement that a license was diligently sought and the filing was in error and without deceptive intent.

Final Rejection:  

A final rejection is any second or later rejection unless it is a new rejection of a claim that was not added or substantively amended. Or, if the rejection is based on newly cited art other than info submitted in an IDS.

A final rejection can be in the first office action if it is part of a continuing or substitute application and all the claims are to the same invention as the parent application which could have been finally rejected in the parent application.

A final rejection is not proper if it is the first office action in a Continuation-In-Parts application and at least one claim includes subject matter not present in the parent application. Or, if it is the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter.

Appeal:

An applicant can appeal after two or more office actions based on the merits of the application.  Or after any final rejection.  Filing an Request for Continued Examination during the appeal process stops the appeal process and starts a new examination.

Request for Continued Examination (RCE):

Request for Continued Examination (RCE) provides a way for an applicant to obtain continued examination of an application after prosecution has closed by filing a submission and paying a fee.  If a subsequent action is made final, an applicant can get continued examination again by filing submission and fee.  No limit as long as done before abandoned.

RCE is not available for adding new matter (CIP), provisionals, design, patents under reexaminations, patents before June 8, 1995 or applications after the filing of a notice of appeal or civil suit unless the appeal or suit is terminated while the application is still pending.

What is needed to get RCE?

Prosecution must be CLOSED as in the application is under appeal, the last office action was final, a notice of allowance has issued or any other action which closes prosecution.  An applicant must request the RCE by filing a submission and fee prior to the earliest of: payment of the issue fee, abandonment of the application, filing of a notice of appeal or the start of a civil suit (unless terminated while the application is still pending).

RCE is entitled to benefit of a certificate of mailing (CPAs are not).  A request for a CPA filed in an application having a filing date on or after May 29, 2000 for which CPA practice is not available will be treated as a RCE.

Submissions with a request for RCE
Allowed material includes information disclosure statements and arguments from a previously filed appeal or reply brief submitted in reply to a final rejection.

Material not allowed include appeal briefs under 37 C.F.R. § 1.192 and reply briefs under 37 C.F.R. § 1.193(b).

If a reply to an Office Action is outstanding, submission must meet requirement of 37 C.F.R. §1.111 in order to continue prosecution.  Payment of the fee for an RCE does not toll the running of any time period set for reply.

What does an RCE do? 

The PTO will withdraw the finality of any Office action.  It will be treated as a request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to a decision.  If it is filed after a decision but before filing an appeal it will serve to reopen prosecution.  However, the applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board of Patent Appeals should be removed.  RCE is not the same thing as a 37 CFR 1.53(b) continuation.

When should an RCE be filed?

As stated above an RCE has to be filed when prosecution of an application is closed.  This can include the application being under appeal, having a final rejection in the last office action, notice of allowance or any other action which closes prosecution.  There are certain deadlines for filing an RCE.  They must be filed before the earliest of: payment of the issue fee (extension possible under 37 C.F.R. § 1.313), abandonment of the application, the filing of a notice of appeal to the federal circuit court  or commencement of civil action.  RCE is not allowed to proceed while a court proceeding is taking place, but once the proceeding is terminated the RCE can be filed assuming the patent is not then abandoned.

What to submit with an RCE?

RCE submissions usually have and IDS and an amendment to the written description, claims, drawings new arguments or evidence supporting patentability and a required fee per 37 C.F.R. § 1.17(e).

It is important to note that new matter should not be submitted with an RCE.  New matter can be introduced through a CIP instead.

Proper/Improper RCE

Improper RCE

The office will notify the applicant that the RCE is improper.  The time given for reply is not effected by an improper RCE (i.e. the due date is the same as before the RCE submission if improper).

Proper RCE

The office will withdraw the finality of the action and begin re-examination of the application including the amendments added through the RCE.  A proper RCE addresses every ground of rejection in the final rejection.
If the RCE does not address EVERY ground of rejection the attempt must be a bona fide attempt to get 3 month extension.  If not the office gives notice of 1 month extension to complete the reply.

Appeal & RCE

An RCE is a new examination and as such can not occur concurrently to an appeal.  An appeal will be withdrawn if the RCE is filed before the final decision even if the RCE submission is improper.

MPEP 708 – Order of Examination

The first filing usually consists of: Description, Claims, Drawings, Information Disclosure Statement, Application Data Sheet, Oath/Declaration, Small Entity Status (if applicable) and Petition to Make Special (if applicable).

Applications are examined in the order in which they are filed in the U.S., unless a request for prioritized examination or petition to make special is made.

America Invents Act – Prioritized Examination

A new prioritized examination is allowed by the America invents act through section 11 (Track 1).  Prioritized examination provides for the final deposition on applications within 12 months of the granting of prioritized examination.  This is available for utility and plant patents and also for a request for continued examination in a plant or utility patent.  The prioritized exam does not replace accelerated examinations (if applicant meet special requirements).  Only 10,000 prioritized examination’s are allowed per year which is the sum of regular and RCE prioritized examinations.

Requesting and filing for prioritized examination:

RCE request for prioritized examination must be made before the first office action on the RCE.  This prioritized examination request must be concurrent or subsequent to the RCE request.  This can be amended to meet the claim limitations below.  It must be filed through EFS-Web for utility RCEs and through paper submission (mailing or in-person) for plant RCEs.

For international applications, a patent owner may achieve prioritized examination if they have done or amend to: claim benefit under 35 U.S.C. § 365(c); claim right of priority under 35 U.S.C. § (a); claim priority under 35 U.S.C. § 119(a)-(d) and (f).  However, this can not happen for 35 U.S.C. § 371 national stage applications.

Only one request for prioritized examination allowed (if dismissed cannot re-request).

Refusal of one joint inventor to execute Oath/Declaration can be remedied by petition filed with the application.  If the petition is dismissed for any reason the prioritized status is removed.

 There is an extra fee of $4,800 (50% off for small entity) for the prioritized examination.  A non-publication request of a prioritized examination can be requested, however the publication fee will still need to be submitted.  If the applicant inadvertently omits required any information on initial filing the supplemental information can be added only on the same day as the initial filing via EFS-Web.  Remember, only registered users allowed to file via EFS-Web.

All formal requirements must be met before prioritized examination will be acted upon.  This includes the submission of the specification, required drawings (if any), executed oath or declaration and the fees.

Pre-examination notice will delay the prioritized examination until the applicant has filed a complete (and timely) reply to any notice.  The application cannot contain more than 4 independent claims, 30 total claims and can not have a single multiple dependent claim.

Color drawings are allowed in EFS-Web submitted new applications for Non-provisional utility applications (includes reissue utility applications) and 35 U.S.C. 371 national stage applications.  However, a petition still needed for color drawing approval.

Preliminary amendments can be added after request for prioritized examination if the amendment does not exceed the before mentioned claim limitations.

Prioritized examination stopped if:

The prioritized examination will be stopped if the applicant or practitioner: files a petition for extension of time; files a request for continued examination; files a request for a suspension of action; files a notice of appeal; or introduces an amendment to the application which adds more than four independent claims, more than 30 total claims or a multiple dependent claim.  There are no refunds granted if prioritized examination stopped.  A petition can be filed if they believe the prioritized examination was stopped for improper reasons.

Fees for filing a prioritized examination:

The fees for a prioritized examination include: basic filing fee, search fee, examination fee, publication fee, Track 1 processing fee, Track 1 prioritized examination fee, size fee (if applicable) and any excess claims fee (if applicable).  Fees for RCE prioritized examination include: publication fee, prioritized examination processing fee and the prioritized examination fee.

If a required fee is unpaid at the time of filing this will result in prioritized examination being dismissed.  The explicit authorization to charge fees from a deposit account can help safeguard against this.

Fee for prioritized examination will be refunded if dismissal of the prioritized examination is requested.  This can include search and excess claims fee can be refunded via petition with express abandonment and publication fee (if not published pursuant to 35 U.S.C. 122(b)).  All other fees are non-refundable.

America Invents Act – Prioritized Examination for Important Technologies

Section 25 of the America invents act allows the office to establish a procedure for prioritize examinations of applications for products, processes, or technologies that are important to the national economy or national competitiveness.

Petition to Make Special

Petitions to make special allow an earlier examination compared to non-special applications if the petition is accepted.  There are certain reasons which a petition can be made special including: the patent will enable the manufacture of the invention, the patent is being infringed, one of the inventors is over the age of 65, one of the inventors is ill and they may not be available to assist in the prosecution, the head of a government agency requests an application be made special, the patent relates to superconductivity, cancer, HIV/Aids or terrorism, or the applicant wishes to take part in the accelerated examination.

A petition to make an application special must include a petition in writing with identification of the application by application number and filing date.  There are fees that must be paid if a petition is made special.  Some instances require a fee and some do not.  The instance where no fee is required include: For applicants health (must include doctor’s certificate), Applicant is over 65 years of age (proof required), Invention materially enhances the quality of the environment, Invention materially contributes to energy resource development or conservation, Invention is related to superconductivity, Invention is related to counter-terrorism.  Situations where a fee is required to make an application special include: Invention for the safety of recombinant DNA research, Invention for HIV/AIDS or Cancer, Biotechnology, Prospective manufacture (must include statement), There is actual infringement (must include statement) or any new application in which the claims are to a single invention as long as a search has been completed the USPTO is provided copies and a detailed discussion of the references and why the claims are patentable relative to the references is included.

The statement for prospective manufacture should indicate that: there is sufficient capital and facilities available to start manufacture; manufacture will not start without a granted patent; manufacture is obligated in quantity in the U.S. and will begin immediately if the patent is granted; A prior art search as been conducted or there is a good knowledge of the prior art and include copy of each reference found if not already on record with the USPTO.

The statement for actual infringement should include: the infringing product or method is on the market and in use; A rigid comparison to claims should be made and show unquestionable infringement; A search of prior art conducted or good knowledge of prior art.

MPEP 709 – Suspension of Action

Suspension of action can be initiated by the application, the USPTO and can also be completed with overlapping applications by the same applicant or assignee.

If from the applicant:

37 C.F.R. § 1.103(a) – The suspension of action may be allowed through petition if there is good and sufficient cause.  The applicant must specify the time of the requested suspension which cannot exceed 6 months.  A fee must also be paid unless it is the result of an error by the USPTO.  No responses to office actions can be due from the applicant at the time of the petition.  The petition must include the fee per 37 C.F.R. § 1.17(g).  The petition must be included on a separate piece of paper.

37 C.F.R. § 1.103(b) – The suspension of action may be allowed through request if it is filed along with a request for continued prosecution application.  The requestor must specify the time of the requested suspension which cannot be more than 3 months.  A fee must also be included.

37 C.F.R. § 1.103(c) – The suspension of action may be allowed through request if it is filed along with a request for continued examination.  The requester must specify the time of the requested suspension which cannot be more than 3 months.  A fee must also be included.

37 C.F.R. § 1.103(d) – Deferral of examination of application.  This can be used on utility, plant and international applications which have entered the national stage with a filing date on or after November 29, 2000.  The max time limit is 3 years from the earliest filing date from which the benefit is claimed and this must be a whole number of months.  This can not be granted after the notice of allowance or the mailing of an office action has taken place.  The patent must be ready for publication and can not have a non-publication request filed.  There is a fee that must be included as well.

If from the USPTO:

The maximum period is 6 months and the office will notify the applicant.  There can be a suspension for public safety or defense if the application is owned by the US, the publication of the invention could be detrimental to public safety or if an appropriate agency requests the suspension.

The procedural requirements for a suspension are as follows.  If there is a continued prosecution application or a request for continued examination on the application the request should be filed along with the filings for these applications.  This can be done on the transmittal form or on a separate sheet of paper.  If it is given with a request for continued examination, the request for continued examination must be valid under 37 C.F.R. § 1.114 and the 37 C.F.R. § 1.17(e) fee cannot be deferred.  The RCE will still need the filing date.  If the request is filed with a continued prosecution application, the office must still give a filing date to the CPA which means the CPA must be a valid submittal to the office.  The assumed time period for the suspension is 3 months unless otherwise specified.  If a time period is specified it must be given in whole-numbers for the month value and cannot exceed 3 months.  The request needs to include the processing fee per 37 C.F.R. § 1.17(i).

MPEP 710 – Period for Reply

There is a six month statutory period for reply.  Shortened statutory periods are allowed by the USPTO and are commonly used.  All the due dates are calculated from the USPTO mailing date.  An extension of time cannot exceed the six month statutory period for office actions.  If a timely reply is not filed the application will be considered abandoned per 37 C.F.R. § 1.135.  An authorization to charge all required fees to a deposit account is treated as a constructive petition for an extension of time.

Notice of allowability time is not extendable for submitting an oath/declaration or for submitting formal drawings.

Computation of statutory periods – MPEP 710.01(a):

If the end of the statutory period for reply falls on a weekend or a federal holiday the period will end on the next business day that the USPTO is open.  The last day of any month corresponds to the last day of the target month, this is only if the first month has more days than the last month.

Shortened Statutory Periods – MPEP 710.01(b):

The default is six months but others are more commonly used.  Commonly the following are used:

1 month deadlines:  Requirements for restriction or election of species in a patent; replies to an office action are bona fide attempts however there is an inadvertent omission and the examiner allows one month to correct.

2 month deadlines: The winning parties response in a termination interference, reply to an Ex Parte Quayle action, a multiplicity rejection.

3 month deadline:  Reply to an office action on the merits.

The time period for reply is reset if there is an error made by the office and this is brought to the office’s attention within one month of the mailing of the office action.

Extensions of time are allowed but they can not exceed the six month statutory limit per 37 C.F.R. § 1.136.  Extensions are automatic if properly made and accompanied with a fee (reduction of fee for small entity status).  The request does not have to be made within the shortened statutory period as long as it is within the six month maximum statutory period.  The request for an extension of time can be filed before, with or after the reply and the date of the reply will be considered the date the request for an extension was filed.  The procedure of 37 C.F.R. § 1.136(b) can be used in place of 37 C.F.R. § 1.136(a).  To use 37 C.F.R. § 1.136(b) one must show good cause as to why the extension should be granted.  This method also cannot exceed the 6 month maximum limit.

If there is a problem in communications which results in a need for a reply period change refer to MPEP 710.06.  This can include errors in office actions such as incorrect citations or references.  The office will correct any errors and restart the full time period fro the date of the corrected office action.

If there are substantial delays in the applicant receiving the office action the office will reset the original time period for reply to run from the actual receipt date by the applicant.  This is if the petition is filed within 2 weeks of the office action receipt and a substantial portion of the reply period has already elapsed.  The petition must include evidence showing the actual date of the receipt of the office action and a statement setting forth the date of the receipt of the office action with a statement showing how the evidence shows the receipt was on the later date.

If the postmark on the office action is later than the actual date stamped on the office action, the time period will be reset if there is a petition filed within 2 weeks of receipt of the office action.  The reply period must be for payment of the issue fee and the period should only be a 1 months period.  The petition should include evidence showing the actual date of receipt at the address, a copy of the original envelope with the postmark date and a statement that the office action was received on the date shown by the evidence and that the envelope actually contained the office action.

MPEP 711 – Abandonment and Revival of Patent Application

Abandonment is of the application and not of the invention.

Abandonment can arise from failure to reply if: An applicant fails to respond within the appropriate time periods; Applicant replies within the time period but the reply is not fully responsive (Extension can be given for a bona fide attempt to respond); Applicant does not pay the issue fee when it is due (Is abandoned at midnight on the due date); Application was part of an interference and lost on all claims (Abandoned on date an appeal or review was due); Application was before the Board of Patent Appeals and Interferences and proceedings are terminated; There was a court decision and proceeding are terminated.

Express Abandonment:

As the term implies, this is an action taken by the applicant to explicitly abandon his/her invention.

How to do this?

This is done by filing a written declaration identifying the application.  Express abandonment of the application may not be recognized by the office unless it is actually received in time to act before the date of issue or publication.  For express abandonment after receipt of the notice of allowance, the applicant should submit a declaration along with a petition to withdraw the application from issue and a include a fee.  If it is filed after the issue fee is paid the applicant will have to issue an express abandonment letter with the 37 C.F.R. § 1.313(c) petition and 37 C.F.R. § 1.17(c) fee.

Who can do it?

The applicant can file express abandonment.  If there is an assignee on the application the assignee must consent to it.  The owner of the patent rights or the assignee can also directly file the express abandonment.  An attorney or agent of record can as well, or an attorney or agent not of record who acts in a representative capacity when filing a continuing application.

There can be a special abandonment situation such as at the termination of proceedings.  The application is abandoned when the issue fee is not paid when it is due however this can be revived through a fee along with a petition.  Also, if the application is in an interference proceeding and all the claims corresponding to the count loose.  Lastly, if there is a decision by the board or a court.

MPEP 711.03 – Revival of Abandoned Applications

To get an abandoned patent application revived the applicant must first show that the application was abandoned due to:

Unavoidable Circumstances – 37 C.F.R. § 1.137(a): Unavoidable implies that it was not possible to file a response up to the time the petition is filed which should include a proper response.  Petition fee 37 C.F.R. § 1.17(l) should be included and a terminal disclaimer may be have be used.  There is a higher burden of proof required for unavoidable circumstances relative to unintentional oversight.

Unintentional oversight in not replying – 37 C.F.R. § 1.137(b):  Unintentional oversight implies that the applicant unintentionally failed to respond to an office action.  Applicant can provide proof or swear a statement that the delay was unintentional.  Petition fee per 37 C.F.R. § 1.17(m) is required.

For both of these the petition must be accompanied by the proper response for the underlying reason that created the abandonment.  If the abandonment was due to insufficient reply, the applicant can argue that the reply was actually sufficient.  If the abandonment was due to a late reply, the applicant can argue the reply was on time if there was disagreement with the actual due date calculation.  If there is not question that the reply was late or did not happen there is no further appeal.

Petition to withdraw holding of abandonment 37 C.F.R. § 1.181(a).

No fee is required to file these petitions.  This is also where an applicant can allege that an office action was never received by the applicant from the office.  An applicant can also include proof that a reply was actually sent to the USPTO on time through a post card receipt which establishes a prima facie case for the USPTO receiving documents.  A certificate of mailing may also be used as well.  The statements made must be based on the personal knowledge related to the mailing.

There is a 2 month deadline.  If the applicant fails to file the petition to withdraw the abandonment within 2 months of the mailing date of the Notice of Abandonment the petition will not be considered timely and can be dismissed outright.

If none of these options work for reviving an application, a request reconsideration of the revival under 37 C.F.R. § 1.137(e) can be made within 2 months of the denial of the petition.  This can extent with 37 C.F.R. § 1.136(a).  Also, the applicant might be able to file a substitute application which mirrors the original application, but the substitute application cannot benefit from the original applications filing date.

MPEP 713 – Interviews

An examiner may require that an interview be scheduled in advance.  After an interview, the applicant must ensure the substance of the interview is made of record in the application and give notice within one month under 37 C.F.R. § 1.135(c) if it is incorrect.  A full response to any office actions are still required after an interview.  If the examiner thinks the applicant’s statement is not complete, they may give the applicant a 1 month time period to correct and complete the reply.

Who can interview?

The inventor/applicant can interview with the examiner.  Also, a registered attorney or agent of record, or one who is using the attorney or agent of records file or an attorney or agent of record known by the examiner to be the local representative of the attorney of record can interview.

When can an interview occur?

An interview can occur after the first office action but before the final office action.  This is where most interviews take place.  Also, after the final office action but there is not right to an interview at this time.  In certain circumstances such as in a continuation or substitute application application can the interview occur before the first office action.

Interviews cannot occur before filing or the first office action (if not a continuation or substitute application).  They are also not allowed after an appeal brief is filed or after the application has issued.

Interviews are most common as face to face interviews.  However, video conferences are allowed along with phone interviews.  Email is not used for interviews unless there is prior written consent of the applicant or attorney/agent of record.  Video tapes can be used during an interview but the applicant must be able to show the content of the video has a bearing on outstanding issues related to the application.

MPEP 714 – Amendments

Requirements of the Response:

Every response must reply to every rejection or objection in an office action.  They must be bona fide attempts to advance the case to a final action and be in writing, typed or written in permanent ink on the proper sized paper.  Finally, they must be properly signed by the applicants(s), owner(s), attorney of record or attorney not of record but acting in a representative capacity.  Entry of second or supplemental responses is discretionary with the USPTO.

Non-responsive replies, if they are intentional, must be remedied within the statutory period to avoid abandonment.  If they are unintentional the examiner can either accept it or require a proper reply within the remaining period or set a new one month time limit.  This time limit can be extended as long as it is not after the final office action.

What types of amendments are there?

MPEP 714.01(e) described preliminary amendments or amendments which are received by the USPTO before the first office action is mailed.  Refer to 37 C.F.R. § 1.115 for more details.  These preliminary amendments can be filed with the original filing and they are not considered part of the original disclosure unless they are filed with the original application and a later filed oath refers to the amendment.  They should be filed with the original application if claims are canceled to reduce the filing fee.  If they are not filed with the original application, they should be filed after the application gets and application number and filing date.  One should not wait too long to file a preliminary amendment since the examiner may reject the preliminary amendment if it is too close the the first office action.  This is because too much time may already have been spent on the office action preparation.  For continued prosecution applications, the preliminary amendments must be filed on the filing date of the continued prosecution application.  A preliminary amendment will not be entered if it cancels all the claims and fails to simultaneously submit any new claims.

Generally, a preliminary amendment will be approved if it is filed no later than: 3 months from the filing date, the filing date of a continued prosecution application or 3 months from the date the application enters the national stage.  These time periods cannot be extended.

There are some factors which should be considered in whether a preliminary amendment “unduly interferes” with the preparation of a first office action such as the nature of the changes to claims or the specification that would result from entry of the amendment and the state of preparation of the first office action as of the date of receipt of the preliminary amendment.

MPEP 714.12 and 714.13 Amendments after final rejection.

There is no unrestricted right to entry of an amendment after the final rejection.  Refer to 37 C.F.R. § 1.116.  The applicant no longer has the right to file an amendment after a final rejection, but they still may be allowed to.  For example, one might be able to cancel claims making the application valid for issue, or amending the application to conform to formal requirement such as fixing typos and other errors which do not materially effect the application.  Additional, an amendment may be allow to change the claims into a better form for a future appeal.  The amendment may also be made to adopt any suggestions made by the examiner.

If an amendment affects the merits of the application it will only be accepted if a good and sufficient reason is provided for not submitting earlier per 37 C.F.R. § 1.116(c).  If the amendments do not fit the above categories the office will issue an advisory action informing the applicant that the amendments are not allowed.

Period for reply cannot be extended more than 6 months from the date of the final action.  If the applicant replies within 2 months from the date of mailing of the final rejection and the USPTO does not issue an advisory action until after the end of the 3 month shortened statutory period for reply any extension fee is calculated from the mailing date of the advisory action.

An examiner is allowed to request amendments if that is what they see fit.

MPEP 714.14 states that amendements for correcting formal errors are allowed after the claims are allowed as long as they do not effect the merit of the patent.

MPEP 714.15 states that there is not right to amend after allowance of all claims and mailing of the notice of allowance.  Instead this is a matter of grace on part of the examiner.  There needs to be good and sufficient reason for the amendment in the petition and fee.

If the amendment is received in the USPTO before the notice of allowance is mailed but it does not get to the examiner until after the notice of allowance is mailed it has the same standing as if the notice of allowance was not mailed.

If the amendment if filed after the notice of allowance one must also submit information showing why it is necessary, why no additional search or examination is required, why the claims are patentable and why the claims were not presented earlier.

A supplemental oath or declaration is not treated as an amendment, but a supplemental reissue oath or declaration is treated as an amendment.

An amendment must be made before the issue fee is paid.

MPEP 714.03 – Supplemental Amendments to Replies

This is if you make a reply to the office and before the office responds to your reply you file an amendment.

The office prefers the original reply to be the correct reply, but supplemental replies can be allowed.  Usually they allowed if it is submitted during a suspension period (i.e. before entering a Request for Continued Examination).  This is allowed by right.

If it is not during suspension period supplemental amendments are not allowed by right.  However, they could be considered if they are limited to: cancellation of claim(s), adoption of examiner’s suggestions, placement of the application into condition for allowance, reply to an office action that was made after the original reply was filed, correction of typos and other formal errors or simplification of issues for the appeal process.

Unless the following are true, amendments are not fully responsive.

If amended due to response from an office action it must address every issue raised in the office action.  The examiner may accept a bona fide attempt to submit an amendment to avoid abandonment.  The examiner will notify the applicant of any problems and have the applicant fix them.  The bona fide usually means unintentional omission.  The examiner may set a new time period for reply and still has the rest of the previous time period for the response.  This does not apply to amendments made after the final office action as no extension of time is allowed.

How to make an amendment?  37 C.F.R. § 1.121

The submitter must use a cover sheet stating amendment at the top.  It must list out all the amendments to be made to the specification, drawings, claims and where the amendments go in the original application.  The remarks or arguments section gives a brief description as to the reason for the amendments.  Each amendment should begin on a separate sheet for its section (i.e. specification  drawings and claims all on separate sheets).

Amendments to the specification must be made by adding, deleting or replacing a paragraph or section or by substituting an entirely new specification.  A paragraph or section must be identified using page and line or paragraph numbers.  To make a big deletion, use underlining for new material.  If there is only one paragraph to be amended try to use its paragraph number in the reference.  If there is an amendment to one paragraph and a new paragraph is being added the new paragraph should get a decimal number (original is paragraph 2, newly amended paragraphs are 2.1, 2.2….)

Substitute Specifications:

Must include 2 copies of the substitute specifications.  One that is marked up with all the changes and a final clean copy of the substitute.

Rescinding Amendments:

Once something is changed by an amendment one can not withdraw the changes.  One can file another amendment changing back to the original but can not remove the old amendment.

Amendments to the claims:

Any amendments to the claims need to reproduce all of the claims that ever existed in the application.  This means putting in a new substitute set of claims.  Each claim must be listed in the following format: Claim (): canceled or not entered in which case the claim is never written out.  Claims must be in numerically ascending order.  Large amounts of canceled or not entered claims which are consecutive can be grouped together.

The accepted words to use for the claim’s status are:

  • Original – has never been amended
  • Currently amended – claim is being updated in this amendment
  • Previously presented – claim was amended in a previous round of amendments but was not changed in the current amendment
  • Withdrawn – must still be written out if it is withdrawn
  • New – brand new claim being added by the amendment
  • Canceled – claim is canceled and not written out
  • Not entered – claim never formally entered

Amendments to the drawings:

Drawings must be updated on separate sheets with each amended drawing sheet having “replacement sheet”at the top.  Replacement sheets must be entered no matter what kind of changes are made to an existing drawing.  Completely new drawings must be on new sheets.  Annotated copies may also be included with the replacement sheets and may be required if the examiner requests the annotated copies.  They should be labeled as “Annotated Sheet”.  The amendment or the “Remarks & Arguments” section should explain the changes made to the drawings.

MPEP 715 – Affidavit or Declaration of Prior Invention

Purpose is to prove that the applicant was the first inventor when reference is produced with date earlier than application filing date.  Constructive reduction to practice as in filing a U.S. patent application is needed when any claim of an application or patent under reexamination is rejected based on prior art before the date of invention.

Who may file these?

The inventors, all of them if multiple, if not all the inventors it must be shown that not all of the inventors on the application actually invented the matter being sworn to.  Assignee can also file when an affidavit from the inventor cannot be produced.  A party qualified to act on behalf of the inventor when the inventor is dead, insane or refuses to sign.

What may be filed?

An oath or declaration establishing the invention of the subject matter.  If conception, the applicant must show evidence of the facts establishing diligence.  Alleging invention is not enough but must be supported by evidence.  This can include sketches, blueprints, photos, reproductions of notebook entries, accompanying model of the invention, supporting statement by witness, testimony from an interference proceeding (one must show which part of the testimony is relied upon) and disclosure documents.

How to prove the date?

Exact dates are not required as long as it is proven that the conception was before the reference.  Exact dates are needed to show diligence however.  Prior invention may not be established before December 8th, 1993 in a NAFTA country or before January 1st, 1996 in a WTO country.  Swearing behind cannot be used if the rejection is based on a U.S. patent claiming the same invention as this would be an interference, or in a rejection based on 35 U.S.C. § 102(b) as it is a statutory bar.  This must be filed before a final rejection.

To sear back through 37 C.F.R. § 1.131 the following requirements must be met.

The invention must be create in the U.S., a member of NAFTA or a WTO country for applications after 1/1/1996.

Alternative affidavits – 37 C.F.R. § 1.132 and MPEP 715.01

37 C.F.R. § 1.132 is similar to 37 C.F.R. § 1.131 but is not “swearing back”.  37 C.F.R. § 1.132 affidavits are used when the reference and the patent application are created by the same entity or the same inventors or assignee.  If there are patents with the same authorship which one is used as a reference agains the later, one can file a 37 C.F.R. § 1.132 affidavit for work referenced by the claim which was the inventors own work.

If a past application disclosed additional inventions but did not claim them and a new application is filed based on these disclosures the initial disclosure would not act as prior art due to the common inventor.  The new invention was derived from the inventors previous work.  You can still have a 35 U.S.C. § 102(b) statutory bar after 1 year in this circumstance however.

There are three main ways to show prior invention: Actual reduction to practice of the invention prior to the effective date of the reference; Conception of the invention happened before the date of the prior art and there was due diligence prior to the reference date in actually reducing the invention to practice;  Conception of the invention happened before the date of the prior art and there was due diligence prior to the reference date all the way up until the date of filing the patent application.

The office cares about facts that the invention was conceived and completed in the U.S./NAFTA/WTO country.

When it comes to how far along the invention was in development, at least the conception has to antedate the prior art.  Conception needs to be more than a vague idea.  It needs to show an understanding of how the parts of the invention interact with each other.  If the invention was not fully completed before the prior art diligence must be shown up to the filing date of the patent application.  There must be evidence of the diligence and not just alleged.  A lull in action is alright as long as there is a reason for the break.  Additionally, diligence can also be shown up to the reduction to practice.

MPEP 716 – Affidavits or Declarations Traversing Rejections

The purpose of the affidavit or declaration is to demonstrate any fact to justify patentability.  For example this could be commercial success, unexpected results or cited reference is the applicants own work or was derived from the applicants own work.  This is needed when claims are rejected or objected to.

The evidence must be objective in nature and can include: Comparative date, Unexpected results, Commercial success, Long felt but unsolved need, Failure of others, Skepticism of experts.

In a prima facie case:

The 37 C.F.R. § 1.132 affidavit may be filed to traverse the rejection, for example the same person invented the prior art being used as reference or that the new invention is non-obvious.  The evidence must be weighed against the prima facie case that the invention is obvious.  This must include a preponderance of evidence or 51%.  Afte the prima facie case is established, the burden of proof moved to the applicant to change the weight of the evidence in their favor.  Opinion evidence is also entitled to be considered.

This may not be submitted if the rejection is based on U.S. patents to others claiming the same patentable invention as this would be an interference.

These must be timely filed before the final rejection, before the appeal, after the final rejection and submitted with a first reply after the final for overcoming a new ground of rejection or with a satisfactory showing under 35 U.S.C. § 116 or 35 U.S.C. § 195.  And they are filed under 35 U.S.C. § 129.

Attorney arguments cannot take the place of objective evidence.  Presumptions of validity must be rebutted by a preponderance of evidence.

So what is needed for a 37 C.F.R. § 1.132 affidavit?

Objective evidence of unexpected positive results, criticality, failure of other inventors to meet the need, commercial success, a long-felt but unsolved need that this invention addresses or expert opinions.

For unexpected positive results, when an invention that might otherwise seem obvious has unexpected positive results then as along as the applicant can produce the objective proof that the positive results occurred and were not actually expected by prior art it can go against the prior art.  A greater effect than expected by prior art can be shown (prior art expect 1.5 years but the results obtain 10 years).  Properties of the item are better then expected or the absence of a property that was expected can also work.

The burden is on the applicant to provide the evidence showing that the results were both unexpected and significant.  The evidence from the prima facie prior art references that says the invention is obvious has to be weighed against the evidence that the results were not expected and significantly different from the teachings of the prior art.  If the prior art teaches that there is an expected beneficial result then even if the invention produces the beneficial result it is evidence showing the invention is obvious.  The applicants best bet is to try to show that the magnitude of the beneficial effect was so significantly different than what was expected that it should be non-obvious.

 MPEP 718 – Affidavit or Declaration to Disqualify Commonly Owned Patent or Published Application as Prior Art, 37 C.F.R. § 1.130

37 C.F.R. § 1.130(a) – Is used when there is a rejection on the patent based on a rule other than the statutory bar 35 U.S.C. § 102(b).  Inventions defined by the claims in the application or reexam patent and the claims in the referenced U.S. patent are not identical but not patentably distinct and owned by the same party.

37 C.F.R. § 1.130(b) – Double patenting rejection is made when the claims of a prior art patent and application or reexamination patent are not patentably distinct from each other.  The same invention must be claimed in both.  A terminal disclaimer can be used.

MPEP 720 – Public Use Proceeding

A public use proceeding determines whether an invention claimed in an application had been in public use or on sale 1 year before the filing of the application.  Any member of the public can file a 37 C.F.R. § 1.292 petition to try to show that an invention was actually on sale or in use in the U.S more than 12 months prior to the effective filing date of the patent.

Requirements for public use proceeding: Petition must have fee under 37 C.F.R. § 1.17(j), The principal or the principal’s attorney must file a petition which includes information and proof showing the invention was in use and/or on sale more than 12 months prior to the filing date, The applicant must be served with the petition directly, or if service is not possible it should be filed with the office, The petition must be submitted prior to the earliest of either the application being published or the notice of allowance.

37 C.F.R. § 1.292 Public Use Proceedings

After the petition is properly filed it is up to the examiner to make a determination if the evidence in the petition creates a prima facie case that the invention was in use or on sale in the U.S. more than 12 months before the effective filing date.  If the determination is that the prima facie case is not established the process is over and nothing more will be done.  If the prima facie case is established, then there is a preliminary hearing on the matter.  Both parties are notified that the hearing will take place.  The Office of Patent Legal Administration (OPLA) handles the hearing and will make the decision on the petition. At the hearing there can be testimony taken using similar procedures to testimony in interference hearings.

Final Decision: The examiner makes the final decision. If the examiner makes a final finding that the application is barred his rejection of the claims will state that reason. If the examiner finds in favor of the applicant, the petition will be noted in the record but prosecution may proceed. There is no further review after this decision is made.

MPEP 724 – Trade Secret, Proprietary and Protective Order Material

Proprietary information can be submitted if it is believed to be material to patentability.  If it is material it will be made of record in the application.  If it is not material it will be resealed and retained in case the applicant files a petition to expunge.  The material will not be made available to the public until issuance of the patent.

Information submitted in reissue or reexaminations will be sealed if important to a reasonable examiner it will become a permanent part of the application.  If not, it will be resealed pending possible petition for expunging.  Only information that is favorable to patentability should not be submitted.

Regarding how to keep trade secrets and other proprietary information out of published applications:

When submitting papers containing trade secrets the applicant must do the following (Reference MPEP 724.02): Clearly label the information as “trade secret”, “proprietary” or “subject to protective order”; File the materials in a separate sealed envelope with a cover letter that identifies the documents; When material is submitted a petition and fee under 37 C.F.R. § 1.59 to expunge the material can be sent at the same time the material itself is sent.

What types of material are covered & what is the process on their use?

This is generally information that is material to patentability but that is not considered favorable to patentability.  The info that goes into the 37 CFR 1.56 “duty to disclose” statements (IDS; prior art submitted by the applicant) can be put into the sealed envelope for a 724 request.

Basically, this is information that needs to be disclosed to let the examiner properly conduct the examination (it’s material) but it is not the favorable basic information needed to actually get the patent (like the parts of the disclosure that the claims directly rely on for patentability).

The Office has to determine if the information is important to the reasonable examiner in deciding whether or not to issue the application (this is the favorability issue, favorable information that is important to deciding the allowance has to get published).

If it is important, the material is going to be cited in the next Office action and will end up in the file history, and will eventually get published. (Info important to the determination cannot be kept secret just because of its proprietary nature. Of course, recall the national security issues which would prevent publishing of the application at all, however, those are different considerations).

If it is not important, the office will re-seal the info back into the envelope, and then hold it waiting for a petition to expunge the record of the proprietary information.

Petitions to Expunge Info from the Record: (37 CFR 1.59(b))

There is a requisite fee under 37 CFR 1.17(g) to expunge the information.  A petition to expunge is filed in order to get any of the material from a MPEP 724.02 request expunged from the record.  The information to be expunged has to be clearly identified.  There should also be a statement that the request to expunge is submitted by or on behalf of the party who originally submitted the information.  The USPTO has to have determined that the information is not important to deciding whether or not to issue the patent.  One exception: if the patent is being expressly abandoned, then the office will usually grant petitions to expunge.

 

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5.3 – MPEP 1200 Appeal

Appeals Featured

MPEP 1200 discloses the rules for an appeal process.  The appeal process is a way for an applicant or their assigns to challenge a rejection ruling issued by an examiner.  Appeals are only used for rejections based on the merits of the application and not for objections based on informalities.

Who and when can an appeal be filed?

A patentee can appeal a patent application when the claims have be twice (or finally) rejected.  Remember in some situations such as a continuation application, a claim can be finally rejected even if there is only one rejection on the new application.  Claims and amendments which are not entered into the application are not appealable.  When an application is finally rejected the applicant has two options either file a request for continued examination or an appeal.  If the applicant chooses to file a request for continued examination an appeal can not also take place, it is either one or the other.  However, if the claims are finally rejected in the RCE then they can be appealed there.

What is the appeal process?

An appeal notice needs to be filed within 3 months of the final rejection on the merits and an extension of time can be used for up to three additional months.  After the notice is filed an amendment to the application can be made if it adopts a suggestion made by the examiner, if it removes an issue found with the application regarding its issuance, cancels claims, corrections to formal requirements or presents the rejected claims in a better form for appeal.  However, if the amendment raises a new issue to patentability or increases the total number of claims it will not be allowed.  An examiner may reopen the prosecution of the application in order to issue a new rejection based on the amendment or from an information disclosure statement filed by the applicant.  This amendment needs to be made before the jurisdiction of the patent prosecution has passed from the examiner to the board.  An amendment added during the appeal process is not a matter of right and is at the examiners discretion.  Major amendments to the claims or specification needs to have good showing as to why it is necessary and was not completed before the appeal process.  Amendments can happen after the appeal brief but this practice is restricted heavily and may only concern the cancellation of claims or to rewrite dependent claims into independent form.

An appeal brief must be filed within the longer of either 2 months from the USPTOs receipt of the notice of appeal or within the time period left to reply to the action which is being appealed (such as the final rejection).  There is an extension allowed for up to 5 months and failures to file the appeal brief will dismiss the appeal.  If there are no allowable claims at this point the application will be abandoned, if there are allowed claims they will be allowed to issue.  The appeal brief is optional.

Specifics of the appeal brief:

The brief needs to identify which claims are being appealed and can include new arguments for their allowance.  But only arguments are allowed and no new evidence not already presented in the application prosecution is allowed unless the examiner determines that the evidence overcomes all the rejections under appeal and is accompanied by a showing of good or sufficient reason why they are necessary and they were not provided earlier.  The brief must traverse all grounds of the rejection if there are multiple and all the claims of a group must stand or fall together unless it is stated otherwise.  If there is a notice of defects issued by the USPTO, the applicant must reply within 1 month, or 2 months from the USPTO receipt notice or the time left to reply to the action being appealed (which ever is greater).  The content requirements of the appeal brief are disclosed in MPEP 1206 and include the following: real party of interest, related appeals and interferences, status of the claims, status of the amendments, summary of the claimed subject matter, the grounds of the rejection wished to be reviewed, arguments against the grounds for rejection, claims appendix, evidence appendix and a related proceedings appendix.  If the brief is not compliant with the above rules, the applicant is notified and given 1 month (30 days) to correct it.  A time extension is available however, if the applicant fails to correct within the time period and the extension the appeal is dismissed.  If the applicant feels that the brief was compliant he can petition under 37 C.F.R. § 1.181 or 37 C.F.R. § 41.3 but this petition does not toll the due dates for the corrections.

The examiner must answer to the appeal brief within 2 months from it’s receipt.  If there are new grounds of rejection based on the brief then regular prosecution is reopened like an office action.  Refer to MPEP 1208 for the contents of the examiner’s answer.  In rare cases, the examiner can withdraw the final rejection and allow the claims.  Or, the examiner can maintain the appeal through issuing an examiners answer to the appeal brief which will be included with the brief when it progresses to the board of appeals.

When an appeal brief is filed there is a mandatory appeal conference between the main examiner, their supervisory patent examiner and a conferee examiner who is experienced in the art related to the application in question.

A request for an oral hearing on the appeal brief can be submitted within 2 months of the examiners answer.  There needs to be good cause for an extension of time.  Once the oral hearing is requested the USPTO contacts the applicant with the specifics of the location and time of the oral hearing.  The applicant must confirm this notice or the oral hearing will be waived.

The board can also remand an appeal back to an examiner if the board wants the examiner to look at the application again for further consideration of a rejection.  Additionally, this can happen for consideration of a new amendment such as canceling claims, re-writing claims from dependent to independent form or for new affidavits or declarations.

The appeals board has the power to reverse an examiner’s rejection, reaffirm it in whole or in part or remand it back.  The board may end up only stating how the claims on appeal can be amended for allowance, or they could also issue a new ground for rejection on any of the claims in the application.  For a new ground of rejection found during an appeal, the applicant has a few options they can treat the new grounds similar to a regular examiners office action and re-open the examination or they can request a re-hearing addressing the new grounds of rejection.  If the examiners decision is reversed in full, the application will go back to the examiner who will put all the claims into allowance or the examiner can request his own re-hearing.  If the examiners decision is sustained in whole or in part the result is dependent on the situation of the claims.  When no claims are allowed the application is abandoned, if some claims are allowed the non-allowed claims are canceled and the allowed claims are issued in the patent, if the claims require further action such as in a generic claim rejection reversal the application goes back to the examiner to continue the prosecution.

If the outcome of the appeal process is not favorable with the patentee they can request a rehearing.  This must be submitted on paper within 2 months of the boards initial decision.  There is a good cause extension for time available.  There can also be court proceedings if the appeal process is not desired.  Any court action must start within 2 months (60 days) from the decision from the appeals board.

Withdrawing an appeal:

An attorney of record or one who is not of record can withdraw an appeal as long as this will not cause the application to be abandoned.  This can be completed using 37 C.F.R. § 1.34.  Additionally, if an RCE is filed along with the appropriate fee an appeal can be withdrawn.  If there are some claims allowable, the with draw of the appeal will not abandon the application but the rejected claims will be canceled unless further action is taken.

Court hearing after an appeal:

As stated above, the applicant has the choice of bringing the application to court if the board issues a rejection.  The time limit for initiating the court hearing is 2 months from the boards final decision with a possible good cause extension.  There are two possible court venues for these hearings, the federal circuit court of appeals or the DC circuit court.

Federal Circuit Court of Appeals:  If all the claims were rejected in the application, then the federal circuit courts decision is final.  If some of the claims were allowed then only the rejected claims are finalized after the federal circuit court.  The federal circuit court of appeals can also remand the application back to the examiner, however unlike with the board of appeals the examiner does not have an option to request a re-hearing.  If the court does remand back to the examiner the court specifies the merits of the case which is wants the examiner to consider.  In a rare instance, the court may decide to reopen prosecution of the application.

DC Circuit Court:  The major difference between the federal circuit court of appeals and the DC Circuit Court is that new evidence is allowed to be presented in the DC Circuit Court.  Again, good cause as to why this evidence was not previously submitted should be included.  The DC Circuit Court can make the same decisions as the federal circuit court of appeals.

 

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5.4 – MPEP 1300 Allowance and Issue

Notice of Allowance and Issue Featured

What exactly happens to an application when it goes to allowance and then issuance and publication?  These questions are answered in MPEP 1300.

Once the application as been allowed to issue the examiner takes one last look at the application to look for small formal mistakes.  If during the course of prosecution some of the claims have changed due to cancellations or amendments the examiner can request that the applicant rewrite certain parts of the application to make them easier to understand in the published patent.  The examiner can make two types of amendments on his or her own they are informal or formal amendments.

Informal amendments are for obvious typo errors or grammatical errors which they can correct themselves.  (only allowed on old paper applications and not on new applications)

Formal amendments are similar, but they use the new image file wrapper format.  Formal amendments can include fees and charges which are amended to the application to make sure they are payed by the applicant.

If only the drawings are left to be corrected, the application can be forwarded to the publishing division and will await the corrected drawings receipt.

Once everything is cleared a notice of allowance is sent out to the applicant.  The mailing of the notice of allowance is important to get reference of as the payment of issuance and publication fees reference the date the allowance is mailed.  The issuance and publication fees are due 3 months from the mailing of the notice of allowance and failure to pay these fees results in abandonment of the application.

Reasons for allowance:

The patent is supposed to have as complete of a record a possible of what the invention is and why it was granted.  The examiner includes his own reasons for allowance and these reasons are not subject to estoppel later only the applicants reasoning for allowance are subject to estoppel.  If the applicant has extra reasons for the validity of the patent they are usually only included if they are in disagreement with those of the examiner.

The applicant has the option to defer the issuance of a patent.  This is covered in 37 C.F.R. § 1.314.  The applicant has the option to request a 1 month or 30 day delay in the issuance of a patent.  If there is desire by the applicant to file a RCE, CPA or if there are licensing negotiations taking place an extension of this delay is possible.

Withdrawing patent from issue:

When the withdraw of an application from issue is completed by the applicant it is requested before or after paying the issue fee.  When this is done before the issue fee is paid the use of a petition under 37 C.F.R. § 1.313(a) is needed or the filing of a request for continued examination is required.  For completing after paying the issue fee, the withdraw is only for causes contained in 37 C.F.R. § 1.313©.  These can include having one or more unpatentable claim, petition granted for an RCE or express abandonment of an application.

The notice of allowance terminates all substantive prosecution.  The applicant no longer has any right to substantive examination of the application without other actions on their part.

After the notice of allowance has been sent out no amendment can be made as a matter of right.  If an amendment is attempted before the payment of the issue fee the applicant needs to provide good and sufficient reasons as to why the claims were not presented earlier, why the amendment is needed, why the amendment would not require more search and examination, why the new claims are patentable and good and sufficient reason should show that the amendment is need for proper disclosure or protection of the invention.  After the issue fee is paid an amendment requires good and sufficient evidence as above, but also a petition and fee.

Regarding the actual issuance of the patent.  The issue date is the date the patent rights become fully enforceable and when the applicant is no longer able to file continuing applications, continued prosecution applications or requests for continued examinations or at least without extra effort required.  The issuance starts the two year clock to file a broadening reissue application and the one year clock for others to copy claims for an interference.  Any maintenance fee due date are calculated from this issue date

Payment of the issue fee can be completed through facsimile or through authorization to charge a deposit account.  The authorization to charge a deposit account can only be transmitted after the notice of allowance has been sent.  The fee can be paid late if the delay was unavoidable or the delay was unintentional.  Both these require proof and a terminal disclaimer for the amount of time the application was abandoned between the issue fee due date and the actual payment of the issue fee.

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5.5 – MPEP 1400 Correction of Patents

Correction of Patents Featured

MPEP 1400 deals with fixing mistakes in patents which have already issued.  A lot of these laws originate from 35 U.S.C. § 251.

There are three main mechanisms for correcting issued patents.  They are certificates of correction, disclaimers and reissue applications.

Certificates of correction:

Certificate of corrections are mechanisms which correct minor or not material inconsistencies between the application as it was prosecuted and the final issued patent.  These are usually clerical issues.  A certificate of correction can not be used to add new matter nor can they be used in patents which require in-depth reexamination.

Certificates of correction can be requested by a commissioner (sua sponge or on behalf of a third party), a patentee or an assignee.  These instances will require no fee if it is a mistake made by the USPTO.  If the mistake was made by the applicant a certificate of correction can be requested as long as the mistake was made in good faith however a fee is required for these instances.  Additionally, a third party can request a certificate of correction however the USPTO has no duty to act on the request.  In these instances the patentee will be given a chance to respond.  The third party response is not entered into the file wrapper.

What can be corrected through a certificate of correction?

As stated earlier, the errors corrected through a certificate of correction are usually clerical errors or minor errors such as grammatical or a mis-typing in the specification or drawing(s).  If these errors are made by the USPTO instead of requesting a certificate of correction a patent holder can place a request in the patent file to act as a public notice of the errors.  The certificate of correction is especially useful for errors which affect the understanding or interpretation of the patent disclosure specifically misspelled words, missing text, wrong information such as an equation or errors in names.  For serious errors the USPTO may just issue a corrected patent.

The procedure for a certificate of correction is as follows:

If the mistake is on part of the applicant or the USPTO, a request is made to the department of the USPTO which handles the certificate of correction.  This request identifies the patent number, issue date, how the errors occurred and the action requested to remedy the errors.  A fee is required if it is not the fault of the USPTO and the use of a proper USPTO form is encouraged.  There is no small entity discount for certificate of correction fees.  When requesting the action for remedying the errors one can request a certificate of correction, a corrected patent or for a letter to be placed in the patents file.

There are some special circumstances for a certificate of correction which require different procedures.  These circumstances are the correction of inventorship errors, correcting an assignee’s name and fixing priority related errors.  For correcting inventorship errors a statement that the error occurred without deceptive intent on the added inventors part is required to be submitted.  A statement from each of the inventors already named on the application agreeing to the change should be included along with agreeing statements from all of the assignees.  A fee is also needed.  Additionally, a court order can also change inventorship on a issued patent.  For the correction of an assignee name, a 37 C.F.R. § 1.183 petition is used with a fee along with a statement that the failure was inadvertent.  There must be a request that 37 C.F.R. § 3.81(a) be waived along with submission of the original notice of recordation of assignment.  For priority related errors, the proper correction method is through a certificate of correction only when one of the follow are true.  Domestic or foreign priority was properly claimed but not printed on the face of the patent.  Foreign priority was perfected in a non-design parent application but not in the issued continuation application.  A claim of domestic priority through 35 U.S.C. § 119(e) or § 120 was not claimed on an application claimed before November 29, 2000 but a co-pending application application to be added through a certificate of correction is identified in the application papers.  Or lastly, 35 U.S.C. § 120 domestic priority was not claimed on an application filed on or after November 29th, 2000 but the co-pending application to be added through the certificate of application is identified in the application papers.  This last circumstance requires the use of rule 78(a)(3) for unintentional delay and a fee.

A certificate of correction has the same legal effects as the issued patent and is retroactive in that is becomes part of the patent and dates back to the original issue date.

The second mechanism for correcting issued patents is through the filing of a disclaimer.

What is a disclaimer?

A disclaimer is a mechanism for any full or partial owner of a patent to give to the public a part of the protection period received with the issuance of the patent application.  There are two types of disclaimers: statutory and terminal disclaimers.  A statutory disclaimer is used when the patentee wants to give up subject matter of a patent through disclaiming one or more claims of the patent.  A terminal disclaimer is used when the patentee wants to give up a portion of an entire patents term and not just part of the subject matter.

So why would someone in their right mind use a disclaimer?

In cases where the patentee discovers that one or more claims of a patent are invalid (such as being too broad), or are defective and the patentee desires to delete the claims from the issued patent.  These instances must be without deceptive intent and their invalidity or defectiveness found after the issuance of the patent.  Or, a patentee could desire to simply dedicate one or more claims of a patent to the public for a number of reasons.  A disclaimer can not be undone once it has been made part of the patent and is binding on the patentee or assignee’s successors in the interest in the patent.  You can not assignee your inventor to an individual and then disclaim the protect to the public without the assignee’s consent.  Joint inventors can also disclaim a patent, but this can only be the percentage of the patent which is theirs.

The procedure for disclaiming a patent is as follows:

The request is addressed to the corruption of patents branch of the USPTO and identifies: the patent number, the claims or term to be disclaimed, the disclaimant and their ownership interest in the patent.  A fee applies which can be reduced with a small entity discount.  A signature of the assignee, patentee or attorney is required with the submission.  The disclaimer is then place in the patent file, attached to the patent and listed in the official gazette for public knowledge of the disclaiming event.  A disclaimer which is filed in an application not yet issued is revocable until the application actually issues as a patent.  A terminal disclaimer filed in an application will not be included with a continuation application based on the disclaimed patent unless there is explicit instructions to do so.  However, a terminal disclaimer will carry over to a continued prosecution application or a request for continued examination.

The third and last option is the re-issue mechanism.

What is the reissue mechanism?

A reissue is a mechanism which can be used to correct the scope and contents of a patent.  This avenue requires extensive examination and is a serious undertaking.  It is not as quick and simple as a certification of correction or a disclaimer.  The procedure of a reissue contains the surrendering of the original patent followed by the filing of an amended application covering the unexpired term of the original patent which was surrendered.

A reissue can be made on the following grounds.  To broaden a patent application through a reissue, the reissue process must be started within two years from the issue date of the original patent.  A reissue can not add new matter to an application.  A reissue can be used to correct an error in the specification or claims which renders the issued patent partially or wholly invalid or inoperative.  This error must have happened without deceptive intent.  A commissioner is allowed to one or even more patents based on a reissue application.  For example, a request for continued examination, continuation and/or divisional application (or multiples thereof) can be a result of a reissue request.  No continuation in part applications can be a result of a reissue application since they add new matter and receive a new filing date.

Reissue mechanisms can correct errors regarding inaccuracy or errors which could have been corrected through an amendment or a continuation application during the prosecution of the original application if they had been know at the time.  Issues corrected with certificates of correction or disclaimers can be correct through reissue only if they are incidental to the reissue process.  A reissue can correct the error of the drawings not conforming to the specification or conforming the specification to the drawings as long as there is not new matter added with the correction.  If there was an inadvertent failure to claim a statutory class of invention during the original applications prosecution this can be canceled through a reissue.  Errors not correctable through certification of corrections regarding inventorship such as lack of consent or all parties not agreeing can be curable through reissue.  Error in the claiming of priority to a foreign or domestic patent can be corrected through a reissue in certain circumstances.  However, errors regarding best mode or a completely defective oath are not curable through a reissue.

There are four main types of reissues which are broadening, narrowing, same scope and interference.

Broadening Reissue:  is used when the owner of the patent discovers that the claims are too narrow as written in the original application.  New claims are submitted which rely on the same disclosure of the original patent, hence no new matter is added, but they claim subject matter not claimed in the original patents claims.  The new claims can also be added to direct and protected subject matter to a different statutory class of invention.  If some of the new claims actually narrow the claimed subject matter yet some claims broaden different aspects of the invention it is still considered a broadening reissue.  Each and every aspect of the new claims must be supported and enabled in the originals disclosure of the first application.  There is a two year limit to file a broadening reissue application but this time limit is only on conveying the intent of a reissue to broaden the scope of the original and not the actual submittal of the new broadened claims.  For the broadening reissue all the parties involved in the patent must agree with its submittal.  Finally, there is a limit on the broadening aspect of the reissue called the recapture doctrine.  This doctrine states that the patent owner can not broaden the claims of an issued patent in an attempt to reclaim subject matter which was given up during the original patents prosecution to make it grantable.  This can be changes in the original patent that resulted in the narrowing of the coverage through a narrowing amendment, arguments or the cancellation of claims in the original application.

Narrowing Reissue:  Is used when the patent owner becomes aware of prior art which will make his patent infringing.  This reissue seeks to amend the claims of the issued patent and act as a type of disclaimer in the event that any claims are canceled.  Any claims which interfere with the prior art can be amended or cancelled to avoid the interference.

Same Scope Reissue:  Attempting to add claims of the same scope as the original patent is not proper since this is how the title makes it sound.  However, this type of reissue seeks to correct any indefiniteness errors which have arisen from the original patent.  Although the changes through through this reissue will result in claims with the same scope they will not be new claims which are simply added in the reissue with the same scope they are claims of same scope which are changed to avoid indefiniteness.

Interference Reissue:  In this case a patentee can file a reissue which presents new claims intended to provoke an interference with an application.  This can simply be copying claims from another issued patent.

How does one file a reissue?

To file a reissue a copy of the patent specification is needed including the claims and a clean copy of the drawing.  This should be in double column format and on single sided sheets.  Additionally copies of any disclaimer, certificates of correction or reexamination certificates need to be included along with a disclosure of any other proceedings in which the patent has ever been involved in (including current proceedings is appropriate).  The applicant can then file an amendment with the desired changes, this can be on a separate sheet of paper.  All the additions and deletions through the amendment should be noted and accompanied by a statement informing the USPTO which claims are cancelled with a status of all the claims.  Amendments to the drawings should be shown on a separate sheet whilst being noted in red ink that they are amended through a “amended” label.  Any drawings which are added through the reissue should be noted with a “new” label and detailed drawings need to be completely enclosed in brackets with a “cancelled” notification on the drawing.  There should be a statement submitted to the patent authorities that offers to surrender the original patent with the actual ribboned original paper, or if the original ribboned can not be found it should be noted that it is “lost or inaccessible”.  An oath stating the applicant believes the patent to be entirely or partially inoperable or invalid through reasoning of claiming more or less then allowed, the specification or drawings are defective or that an error arose and it was without deceptive intent.  At least one of the errors should be shown in detail.  All the information from 37 C.F.R. § 1.63 should be included with a form that all the assignees consent to the reissue or a statement that there are no assignees.  This should be signed by all assignees if there are any.  If the scope of the claims are being broadened then all the inventors need to sign the documents as well.  This filing does apply for small entity discounts.

Now that it is filed how is it prosecuted?

The prosecution of a reissue is the same as a regular original non-provisional application, the only difference is that the file is completely open to the public for inspection and commenting.  When a reissue is filed notice of this filing is published in the official gazette.  The patent file is publicly open to 3rd parties who can file a protest within 2 months from the official gazette publication.  The filing of a reissue allows the prior art of record to be reapplied, reopens prosecution to all claims and eliminates all presumption of validity regarding the patent.  Reissue applications are automatically given special status.  The duty of disclosure also applies to reissue applications.

What doe the effect of a reissue have on a patent?

A reissue application is given the effective filing date of the original application and after the reissue application process has completed the patent owner will end up with a new patent which is the same as the original, broader, narrower or their patent will be found invalid and the subject matter of the original patent will not longer be protected.  As stated above, the original patent is surrendered to the USPTO when the reissue application is filed.  If the reissue application passes to issue the new patent will have the same expiration date as the original patent had.  Any maintenance fees are based on the issue date of the original application and are payable on the same schedule as the original patent.  Regarding infringement, there is no change if effect for the claims of a reissue which are in common or substantially identical to those of the original patent.  Regarding the new claims in a reissue which are not in common or substantially identical with the original patent, if products were made or sold before the reissue patent issued based on review of the original patent then the user and maker of those products are alright to continue using or selling products already made.  However, future manufacturing of products made infringing due to the reissue should be stopped.  Full patent rights are enforceable after the reissue patent has granted.  If manufacturing continues from an newly infringing party, a court can decide a fair remedy on for those items manufactured after the date of reissue.  This is if substantial preparation is made prior to the reissue grant.

Now for some additional facts on reissues:

As stated above, the recapture doctrine prevents subject matter previously removed from the original application from being re-entered into the reissue application.  To test for this there are three steps to undertake:

The first step is determining if the reissue claims are actually broader than those in the original issued patent.  If they are look into how they are broader.

The second step is determining if the broadened claims actually relate to the subject matter that was previously surrendered to allow the original application to issue.  If they are related one make sure that the original application actually had material which was surrendered.  This can be in the form of amended claims, previous reasons for rejection, arguments that the applicant made during the original applications prosecution and anything else in the record which may show how the original claims were narrowed.  Additionally, if the surrendered material is found do the broadened claims in the reissue actually rely on the material surrendered to meet any description, enablement, definiteness or best mode requirements of a claim?

Finally the third and last step.  If the claims were materially narrowed in any other way to avoid recapture they shouldn’t be denied by the examiner.  However, if they were not narrowed enough the reissue claims should be rejected.

Some hints in looking for recapture, pay attention to the limitations that were necessary to overcome the prior art.  If limitations to claims were added to avoid prior art these limitations cannot be omitted in the reissue application.

A change in inventorship is better suited to be changed through a certificate of correction if this is the only change to the patent.  It is much easier and quicker than a reissue.  If there are other changes that also need to be made to a patent however, then a reissue may be the best bet.  In this case the assignee of the entire patent can simply swear to the oath or declaration for this change.  If the reissue also changes claims then all inventors will need to sign as well.

When using the reissue to perfect a claim to foreign priority under 35 U.S.C. § 119(a)-(d) no new claims to priority can be made.  They must have been in the original application.  However if errors existed with the priority claim in the original application they can be perfected in the reissue application.

In every reissue the claim for foreign priority must be remade.  It does not carry over from the original application and subsequently issued patent if the reassertion is not made.

Although the reissue application is made special, there is a unique delay of two months after the reissue application notice is published in the official gazette.  This is not followed in other applications are made special but it allows the public time to respond to the reissue notice.

As with normal patent applications, a restriction requirement can also be required in a reissue application.  The same restriction procedure would be followed in the reissue as in regular non-provisional applications if this was made.  This can also result in a divisional application being filed from the reissue application.

Regarding divisional and requests for continued examinations from a reissue application:

A Divisional Reissue Application can result where a restriction requirement is made in a reissue application.  Additionally, the applicant can elect to make a divisional reissue application on his own without the restriction requirement from an examiner (37 C.F.R. § 1.177).  For divisional reissue applications, the reissue application must contain a cross reference to the new divisional in the first sentence of the application.  When this is not done an examiner makes an objection and requires the application to be amended to include the reference.

A request for continued examination can also be used in a reissue application.  This is okay to use as long as the request for continued examination follows the rules for the reissue application such as the broadening recapture doctrine, the correction of errors, etc…

MPEP 1453 deals with how to amend a reissue application.  In general, amendments to a reissue are similar to amendments to a original patent application with some particular changes.  The format to used when amending a reissue application is as follows: brackets are used for omitted items and new matter is underlined.  There are no strikethroughs in reissue application amendments.  For modifying the specification, the previous markings are used but for deleting paragraphs a statement needs to be made that the paragraph was deleted.  If there are multiple changes through multiple amendments each amendment is compared to the original patent and not to the previous amendments of the reissue.  When modifying the claims the entire text of each claim which is being modified is made using the previous mentioned markings.  New claims must be fully presented and underlined.  Cancelled claims do not require brackets only a directive that the claim is being cancelled.  Claim numbers from the original patent are never changed, if a claim is deleted it still retains its claim number and any newly added claims must use numbers subsequent to the numbers used in the original patent.  Drawings can never be amended but are replaced with a new drawing sheet which is clearly marked as replacement and clean copies of the new drawing.

MPEP 1454 discusses appeals in reissue applications.  Just as in regular applications a reissue application can have an appeal.  However, amended claims in a reissue amendment need to be marked up to show the changes that occurred during the reissue process.  The same markup format as used in the reissue amendments should be used here.

MPEP 1455 discusses the allowance and issue of reissue applications.  In a reissue patent publications, items were are deleted from the original patent are depicted surrounded by brackets and items added in a reissue are displayed in italics and are not underlined.  At least one claim from the reissue is published in the official gazette to make it publicly known.  All dependent claims which are allowed but are dependent on rejected claims need to be rewritten into independent form.

America Invents Act Update – Supplemental Examination

Overview

Supplemental examinations can only be requested by the owner of the patent after the patent is issued and are intended to consider, reconsider or correct information.  Any information not considered, inadequately considered, or incorrectly considered during the examination of a patent which is believed by the patent owner to be relevant may be presented to the office in the supplemental examination.

Specifics

Request for supplemental examination must be made by ALL inventors if there is more than one inventor on the patent.  All parties with ownership interest must request the supplemental examination.  This must be filed by patent owner as an exclusive licensee is not able to request this.

Information allowed to be submitted is not limited to patents and printed publications, but includes any information believed to be relevant to the patent. This includes statements regarding inventorship to issues dealing with public use.  A detailed explanation of each issue identified as well the explanation of each document submitted with its relevancy is required.

Each request for supplemental examination is limited to 10 items, however the number of supplemental examinations is not limited.  There is no limit on number of pages, but over 50 must be accompanied by summary of relevant portions of document with citations to particular pages.  Any document over 20 pages is subject to a document size fee.  All items must be in writing.

Within three months the director determines if the items submitted present a substantial new question of patentability.  If this substantial new question of patentability is achieved an ex parte re-examination is processed based on the information submitted in the supplemental examination.  The ex parte re-examination will proceed as usual however the owner is prohibited from filing a statement under 35 USC 304.  If no substantial new question of patentability is found the office will publish a supplemental examination certificate and attach it to the patent.

A patent will not be held unenforceable based on information that was incorrectly considered in a prior examination of a patent if it is corrected during a supplemental examination.

Fees

The fee for a supplemental examination is: $5,140 for processing and treating a request; $16,120 for ex parte reexamination (Refunded if the supplemental examination does not progress to the ex parte reexamination); any applicable document size fees.

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5.6 – MPEP 1700 Document Disclosure Program

Document Disclosure Program Featured

The document disclosure program is defined in MPEP 1700.

The document disclosure program allows a paper which discloses an invention to be signed by the inventor(s) to be held on record at the USPTO for up to 2 years as proof of invention.  This document can be submitted by the inventor, owner of the invention, attorney or agent of the inventor or owner.  After the two year period the documents are destroyed unless they are referred to in a separate letter in a related patent application filed within the 2 years.  Although this option exists, the USPTO recommends the filing of a provisional patent application in place of the document disclosure program.  The submittal of the document in the document disclosure program does not effect the filing date or give priority to a subsequent application which references the document.

Unless the examiner is in the process of examining an application or in some other way working with a patent (through interference or other proceedings) they should not make statements regarding the validity or patentability of claims in a granted patent or application.

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5.7 – MPEP 1800 PCT

PCT Featured

Overview of the Patent Cooperation Treaty (PCT)

The patent cooperation treaty creates a way for which an applicant can file a single application which is internationally recognized and in a single language.  Otherwise, and applicant would have to file a in each country (and in their respective language) that one desired protection in and PCT was created to make a simplified international patent process.

There are two stages in the PCT process, the international stage and the national stage.  The international stage is were the application is filed as an international application and an international search report is completed along with an optional examiners opinion.  The national stage is where the application enters the local prosecution of a member country which is designated at the filing of the international application.

Patent cooperation treaty filed international applications also allow the applicant to take advantage of priority rights and other benefits allowed for by the Paris Convention and the Trade-Related Aspects of Intellectual Property Agreement (TRIPS).  As previously mentioned, the applicant should choose one member state when they file a PCT application for which the application will be forwarded to once the international stage is completed.  This country election needs to be at the time of filing the international application, however a preliminary designation can be made.  In this case the applicant has 15 months to make the preliminary designation permanent.

It is common practice to file a U.S. application and then a PCT application of the same invention within a year of the U.S. application filing.  The PCT application can then claim the benefit to the initial U.S. application.

Groups Involved in the PCT Process:

Receiving Office:  The applicant will file the international application at the receiving office who then grants an international filing date.  They also receive any necessary fees and inform the applicant of any informalities while reviewing any corrections made.  The receiving office sends a copy of the international application to the international search authority (The Search Copy) and forwards the original application to the International Bureau (The Record Copy).  All this is completed within 13 months of the priority date.

International Search Authority:  The international search authority conducts prior art search related to the application.  The results communicated in an international search report contain listings of the prior art references found during the search.  Applications file after January 1, 2004 also include a written opinion from the international search authority regarding if the claim(s) satisfy the requirements of novelty, non-obviousness and industrial applicability.  Both the search report and the written opinion are then sent to the international bureau.

International Bureau:  The international bureau is the World Intellectual Property Office (WIPO) in Geneva Switzerland.  Their duties include acting as a central coordinator, maintaining files of all international applications and publishing applications.  The applicant has 2 months to amend any claims once the search report is sent to the international bureau.  A certified copy of the priority document which the international application claims priority to must be sent within 16 months of the priority date to the international bureau if priority is claimed.  Publication of the international applications, search report and any amendments will happen 18 months from the priority date.  The written opinion will be made public after 30 months from the priority date.

Designated Office:  This is the national office which was designated at the filing of the international application.  The applicant must send to the designated office a copy of the international application, translation if needed and the national filing fee all within 30 months from the priority date.  This is for most cases, some countries expect them to be sent in 20 months.  For applications on or after January 1, 2004 these documents should be filed with the International Preliminary Examination Authority before the latest of: 3 months from the date the search report and written opinion are sent or 22 months from the priority date of the international application.

Elected Office:  This is the national office which acts of the state or region chosen from Chapter II.

International Preliminary Examining Authority (IPEA):  The IPEA will start the examination process when the following items are received: demand, amount due, translation (PCT Rule 55.2), search report (or notice that none will be made) and written opinion (PCT Rule 42bis.1).  The written opinion is only required for applications filed on or after January 1, 2004.  If the application is filed on or after January 1, 2004 the examination will not start before the later of 3 months from the transmittal of the search report and written opinion and 22 months from the priority date.  The applicant can request earlier start date if desired.  The International Preliminary Examining Authority will establish the International Preliminary Report (or International Preliminary Report on Patentability (IPRP) if filed on or after January 1, 2004).  This report provides the final position pertaining to the novelty of the claims, if there is an inventive step and if it is industrially applicable.  This is sent within 28 months from the priority date to the international bureau and the applicant.

MPEP 1803 – U.S. Reservations to the PCT

Patents are only published after entering the national stage, they are then published again if granted.  The U.S. designated office, unlike other offices, only accepts English language in the applications.  This only matters if the international application designates the U.S. at filing.

MPEP 1805 – Filing an International Application in the U.S.

To file an international application in the U.S. at least one applicant needs to be a resident or national of the U.S., and this applicant needs to be an inventor.  These applications can not be filed by facsimile.

MPEP 1810 – Requirements for Filing Date

Filing date is granted when the international application is received by the receiving office.  If there is an error in the application, the receiving office will notify the applicant and set a time limit to correct the errors.  The filing date will be granted once the errors are corrected and received by the receiving office.  If non English language applications are received by the USPTO the applicant can pay a fee equal to the transmittal fee to have them forwarded to the international bureau.

MPEP 1812 – Content of the International Application

The content of the international application should be as follows: The request, description, claim(s), abstract, drawing(s), sequence listing and required fees.  They should be submitted in that order.  There must be a designated country included and the language used in the application should be appropriate for the designated country.  There can only be one invention included per application.

MPEP 1820 – Signature of the applicant

International applications must be signed by their applicants or their assigns.

MPEP 1828 – Priority Claim and Document

Applications can claim the priority of an application filed in or for a contracting state that is a member of the World Trade Organization.  This includes inventor’s certificates.  One must provide evidence of the earlier filed application.  A priority claim can be corrected or added during prosecution through a notice submitted to the receiving office or the international bureau.  This must be within 16 months from the changed priority date and no later than 4 months from the international filing date.

MPEP 1832 – License Request for Foreign Filing Under the PCT

A license is not required to file an international application with the U.S. as the receiving office.  However, this may be required to send the international application to a foreign patent office, international bureau or other foreign authorities.  If the application has a secrecy order it will not be forwarded to the international bureau until the secrecy order is lifted.

MPEP 1836 – Fixing Obvious Mistakes

Mistakes can be fixed free of charge in an international application.  The request should be addressed to the proper authority to correct the errors and must be within 26 months from the priority date.

MPEP 1842 – Timing of the Filings through the PCT

The international PCT application needs to be filed within 12 months of the original national application if claiming the benefit.  A search report and written opinion must be created 3 months from the time the search copy is received by the international search authority, or 9 months form the priority date (whichever is the latest of the two).  International preliminary examination is optional and not required.  The applicant can request one if it is desired.  This must be prior to 3 months from transmittal of the international search report and written opinion, or 22 months from the priority date.

MPEP 1843 – Regarding the International Search

The international search is a very thorough search of the most relevant references and is conducted by the international search authority.  This search will result in the creation of the search report and the written opinion.  If the requirements for patentability (as defined in 35 U.S.C. § 101) are not met then the search will not be performed.

MPEP 1850 – Unity of Invention before the International Searching Authority

Only one invention is allowed in the international application similar to the U.S. national filing requirement.  A group of inventions can be linked to form a single new invention though.  The unity of invention is similar to the U.S. restriction requirements however there is no restriction practice for international applications.

MPEP 1853 – PCT Article 19 Amendments

After the search report the applicant has one chance to amend the claims of the international application.  Amendments are filed with the International Bureau within 2 months of the mailing of the search report.

MPEP 1857 – International Publications

On the day of publication, the international bureau sends a copy of the international application to each of the designated offices that have requested receipt.  International applications are used a prior art from the international applications filing date.  This can also be the prior filed national applications filing date if the benefit is correctly claimed.  These can be used as prior art under 35 U.S.C. § 102(e) if the international application was filed on or after November 29, 2000, it designates the U.S., is published under PCT Article 21(2) and is in English.

MPEP 1859 – International Application, Designations or Priority Claims Withdrawal

If a withdrawal is desired the applicant can send notice to the receiving office or international bureau within 30 months of the priority date.  This must be signed by all applicants, and appointed agent or common representatives.  A common representative may not sign on behalf of the applicants.  No fee is required for withdrawal.  One can withdrawal the application, designation of any country or a priority claim.  If the request is received before publication the application will not be published.

MPEP 1864-1869 – Preparation of and filing the Demand

After international application is filed under PCT Chapter I, the applicant has the right to file a demand for preliminary examination under PCT Chapter II.  Chapter I provides for international search and subsequent search report and written opinion and Chapter II provides for examination of the description, claims and drawings.  One can respond to observations, make corrections or add in negative findings of claims. A demand filing constitutes the election of the designated states and there is one month to pay deficient fees and late payment fees.  There is no extension for this time.  The demand is submitted to the International Preliminary Examination Authority with required fees.  The International Preliminary Examination Authority will then notify the International Bureau of the demand.

MPEP 1871 – Processing Amendments

As in national applications an amendment to an international application can not add new subject matter.  Amendments per PCT Article 19 are made to the claims during the Chapter 1 search phase and can only be made after the search report is established.  Amendments per PCT Article 34 are made to the description, claims and drawings during the Chapter II examination phase.

MPEP 1878 – Written Opinion Preparation

This is prepared by the International Search Authority when the search report is prepared.  Additional search reports can also be conducted.  The IPEA will invite the applicant to reply to the written opinion usually with a 2 month deadline unless the 2 months interferes with some other deadline.  A 1 months deadline might be used in this case.  No extension of time is allowed.  One interview by phone or in person is a matter of right and must be requested before expiration of limit for reply and after the demand filing.  The relevant date for consideration of prior art is: International filing date, previous international applications filing date if priority claimed correctly and within priority period and previous international applications filing date if priority claimed correctly and within 2 months from when priority period expired.

MPEP 1879 – International Preliminary Examination Report Preparation

This report is prepared by the international preliminary examination authority and must be created within: 28 months from priority date, 6 months from time provided for the start of the international preliminary examination or 6 months from date of IPEA receipt of translation whichever is latest.  This is as of January 1, 2004.  The IPEA can elect to not create a report in which case the examiner must give reason for not creating report: Subject matter does not require international preliminary examination; Description, claims or drawings are not well written and no opinion can be formed; Description does not support the claims and no opinion could be formed.

MPEP 1893 – National Stage under 35 U.S.C. § 371

There are some benefits of filing a PCT application in place of a national application such as: Longer period of time to submit papers to the national office, International search report and opinion, Delay if fee payment requirements, Additional time for research and the international preliminary examination.  National stage applications have the benefit of being submitted later than domestic applications.  National stage is 30 months from claimed priority date and domestic is 12 months from claimed priority date.  Prior art is generally known in national stage applications unlike in domestic applications due to the international search report.  Once the international application proceeds to the national stage the prosecution is the same as a domestic application except: Prior art date is the international application filing date.

Correcting Deficiencies

The office will send a notice identifying any deficiencies with period of time to correct the deficiencies if they have received the basic national fee and a copy of the international application is received within the expiration of 30 months from the priority date but not yet received the oath or declaration, translation, search fee, examination fee or application size fee.  This is prior to the start of the national phase.

Correcting Inventorship

If the oath or declaration lists inventors which are different from the those in the international application the following must be submitted before entering the national phase: there was no deceptive intent from the inventors being added or deleted, processing fee and consent of the assignee (If assignment was executed from original inventors). if inventor refuses to correct inventorship one can petition under 37 C.F.R. § 1.47.

Abandonment

If the requirements of the basic national fee and copy of the international application are not satisfied within 30 months of the priority date the application will become abandoned.  If a time period is set to correct English translation, oath or declaration, search fee, examination fee or application size fee and this time runs out the application will be abandoned.

MPEP 1895 – Continuation, Divisional or Continuation-In-Part Application of a PCT Application Designating the U.S.

During the pendency of an international application a new divisional, continuation or continuation-in-parts application can be filed.  This can be done without completing the requirements for entering the national stage for applications filed under 35 U.S.C. § 111(a).  When desiring to claim the benefit of the prior international application (which designates the U.S.) under 35 U.S.C. § 120 or § 365(c) the continuing application needs to: Include specific reference to the prior international application, be co-pending with the international application, have one inventor in common with the international application and a claim for priority under 35 U.S.C. § 119(a)-(d) needs to be made in the continuing application

MPEP 1896 – Differences between 35 U.S.C. § 111(a) and 35 U.S.C. § 371

Filing Date:

For Domestic National Application:

It is the date the USPTO receives the proper specification, claim and required drawing(s)

For National Stage Application:

It is the date the application meets PCT Article 11 requirements.  This must include a description, claim(s), applicants name who is resident or national of a contracting state, a contracting state designation and it must be filed in the correct language for the contracting state.

Effective Date as Reference:

For Domestic National Applications:

Is the earliest effective U.S. filing date under 35 U.S.C. § 102(e).  This can be earlier than the applications filing date if priority is correctly claimed to a previous application.

For National Stage Application:

Will be the international applications filing date under 35 U.S.C. § 102(e) if the following are met: The international filing date is after November 29, 2000, it designates the U.S. and it is published under PCT Article 21(2) in English.

Priority Requirements:

For Domestic National Applications:

The applicant needs to provide the claim to priority and copy of the foreign priority application.

For National Stage Application:

The WIPO needs to provide certified copy of the application to which priority is claimed and the applicant needs to provide the claim to priority.

Unity of Invention:

For Domestic National Applications:

Restriction requirements are followed meaning only one invention per patent.

For National Stage Applications:

Unity of invention is required, but restriction procedures are not followed until it enters the national stage.

Filing Fees:

Both Domestic National Applications and National Stage Applications have required filing fees which are different between the two.

Reference to Application in Declaration:

For Domestic National Applications:

The oath or declaration must identify the specification which it is directed to.  The specification can be US national application under 35 U.S.C. § 111(a) or it can be referenced through the application number and filing date of the previously filed specification.

For National Stage Applications:

Can identify in the same manner as a domestic national application, or it can be identified in the specification by reference to the international application number.

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5.8 – MPEP 1900 Protests

Protests Featured

MPEP 1900 covers the topic of protests.

A protest is made by a member of the public who believes the granting of a patent would be improper.  These should be filed against a pending application or a reissue application.  They must specifically identify the application number or serial number, contain a listing of evidence, explain the relevance of each piece of evidence, include a copy of the evidence (must be in English) and provide a certificate of service or duplicate copies to the USPTO.

A protest needs to be filed before the mailing of a notice of allowance or the 18 months publication date.  Or, in the case of reissue applications, within 2 months from the announcement of filing a reissue application in the official gazette.  There is the possibility of extension of time on this.  If the submittal happens after the filing of the notice of allowability or publication the USPTO will discard it.  To only option is to have it sever to the applicant.

As a protestor you have one change to submit your evidence.  A protestor cannot participate in the prosecution process after filing a protest and a protestor can not file additional papers unless they could not have been filed earlier with the initial filings.  An applicant will typically have 1 month to reply to a protest if the examiner requests a reply.

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5.10 – MPEP 2300 Interferences (Derivation Proceeding)

Interferences AIA Derivation Featured

Overview

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.

Specifics

Derivation proceeding may only be requested if the inventor has filed an application claiming the same or substantially the same as another applicant.  This can be instituted by copying earlier filed application, making necessary changes to the application to reflect true invention or submitting a petition for derivation proceeding along with the application.

Derivation petition must be filed under oath and be supported by substantial evidence.  It must: identify the disputed patent or application; Distinctly point out how earlier invention was derived from petitioners; Show communication of the derived invention from petitioner to initial applicant; Provide affidavit for lack of authorization from petitioner for filing the initial application.

Derivation proceedings must be filed within one year of the first publication of the invention by the earlier applicant.

Director will file a derivation proceeding if the petition successfully shows: The petitioner’s patent is the same or substantially the same and is not patently distinct from the earlier applicant’s invention; The invention was derived from the petitioner; The first invention was filed without the inventors authorization; Construction of the petitioner’s claims accurately reflects the true invention.

A decision by the director to institute a derivation proceeding is final and non-appealable.  A settlement agreement may be achieved to terminate the proceedings.  The settlement agreement will terminate the proceeding as long as a patent trial and appeal board does not find it inconsistent with the evidence of record.  If the board does find the settlement inconsistent with the evidence, it may disregard it and continue the derivation proceeding.  Binding arbitration may be used to determine inventorship.

Interference proceedings are disclosed in MPEP 2300.

General overview of interferences:

An interference is between either 2 patent applications, or a patent application and a granted patent.  Claims do not need to be identical but they must have the same subject matter.  37 C.F.R. § 1.131 can not be used to swear behind another patent which claims the same invention however this not the case if the patent only discloses and does not claim the invention.  The senior party in an interference proceeding has the earliest effective filing date and becomes the defendant automatically.  If a party wins an interference this means they were the first to invent and diligently reduce the invention to practice before the other inventors conception and reduction to practice.

An interference can be provoked by another party.  This is done by proposing a count including mock claim(s) and presenting or identifying a claim corresponding to the count in an application.  This should include identifying the other pending application or issued patent and explaining why the interference should be issued.  If the examiner suggests, the claims can be copied verbatim from the other pending application or issued patent.

The provocation of an interference with an issued patent must be done less than one year from its issue date.  If the other application is published and the applicant’s filing date is after the publication the copying of the claims needs to be completed less than 1 year from the publication date.  If two applications are involved the examiner will not suggest the copying of claims if more than 3 months separate the applications for a simple claim.  If the claim is complex then this can be extended to 6 months.  If the applicant fails to copy claims as suggested, this acts as a disclaimer on the uncopied subject matter.

Once the interference is filed, each party has access to the other parties patent file.  Declarations are only required for issued patents and pending applications not with two pending applications.

If so desired, the parties can voluntarily settle before the interference terminates through a written agreement being filed with the USPTO.

Burden of proof in an interference proceeding is on the junior party, or the party with the later filing date.  In the case of more than one parties being included in an interference, a party is junior to any other party who has a later filing date.  In cases where the filing date is the same, whoever has the later date of execution is made the junior party.

In the case of issued patents in an interference, a higher standard of proof is required versus two applications.  For issued patents clear and convincing evidence is required.  For applications a preponderance of evidence is requested, this evidence doesn’t necessarily have to be clear and convincing.

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5.11 – MPEP 2600 Inter Partes Re-examination

Inter Partes Reexamination AIA Post Grant Review and Inter Partes Review

Inter Partes Reexamination AIA Post Grant Review and Inter Partes Review

MPEP 2600 discloses the proper procedure for Inter Parte Reexaminations.  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.

Differences between ex parte reexaminations and inter parte reexaminations?

Inter parte reexaminations are only used on patents which issued from applications filed on or after November 29th, 1999.  If the request is granted the first office action is mailed with the notice granting the request.  No interviews are permitted during inter parted reexamination.  A third party has more rights in an inter parte reexamination.  They can respond to patent owner’s replies at each office action, appeal to the board and even participate in the patent owner’s appeal to the board of appeal.  If a request for inter parted reexamination is denied there is a partial refund.  Estoppels are used after conducting an inter parte reexamination.  This means that if the reexamination favored the patentability of a claim from the patent being reviewed, a party who requested the reexamination can never get a court action on the basis of issues raised or could have been raised during the reexamination.  This includes the patent owner.  The rules for the inter parte review are similar except certification that an estoppel does not apply and the identity of the party making the request must be identified.  There is also no small entity discount.

A third party requester can file written comments only once to a patent owner’s reply to each office action and they must be filed within 30 days of receiving the patent owners reply to the office action.  There is not extension of time available.  Any written comments must be limited to issues raised in an office and a reply.  Citations of additional prior art can be used but are limited to what is necessary to respond to either the patent owner’s reply or issues raised by the examiner in an office action.

Appealing in an inter parte reexamination:

The examiner issues a notice of the right to appeal as a final action for a rejection and/or allowance on each claim.  No amendments are allowed after this notice is issued.  Parties can appeal the notice within 1 month of the date of the notice.  A party can stipulate and request the issuance of he notice of the right to appeal anytime after a patent owner’s reply to an initial office action.  If a party does appeal through the filing of a notice, all other parties can file a cross notice appeal within 14 days.  If no parties appeal then the reexamination is terminated and a inter parte reexamination certificate will issue.

For the appeal process in inter parte reexamination there is a nine step process.

The appeal brief is due two months from the notice of appeal followed by the respondents brief which is due one month from the servicing of the appeal brief.  The examiner’s answer follows and there can be no new grounds for rejection.  A rebuttal brief is due one month from the examiner’s answer and a request for oral hearing is due 2 months from the examiners answer if it is desired.  The oral hearing allows for 20 mins from the examiner and 30 minutes for each of the parties involved.  There is then a decision by the board.  A petition for a rehearing can be submitted and is due one month from the initial decision by the board.  This can be appealed to the federal circuit court by the patent owner.

The effect of inter parte reexamination on other proceedings:

Just as in ex parte reexamination, the patent owner needs to disclose any other proceedings concerning the patent to the examiner.

For multiple reexaminations, they can be merged or one suspending until the other proceeding concludes.  For instances where there is an inter parte and ex parte proceeding, the rules for the inter parted proceeding will govern the reexamination.  However, the ex parte requestor will get none of the additional rights from the inter parte reexamination.  One reexamination certificate issues from this merger.

For a reexamination and an interference, the commissioner is allowed to suspend one proceeding until the other is concluded.

For reexamination and reissue proceedings, the reissue can be merged or one of the proceedings suspended until the other has concluded.  If there is a merger, the inter parte rules govern the prosecution.  Identical papers should be filed and the same claims must be pending in both circumstances.  The reissue patent will serve as the reexamination certificate.

Reexamination and litigation.  A patent owner can try and stay the court action until the inter parte reexamination has concluded.  The commissioner also has the power to suspend the reexamination with regards to the litigation.

America Invents Act Update – Post Grant Review

Overview

A new tool is created in section 6 of the America invents act that allows for third parties to challenge issued patents on almost any ground.  It works with inter partes review to replace inter partes re-examination.  Only patents issuing from first-inventor-to-file provisions can be subject to post grant review.

Specifics

Post-grant review allows third party to challenge any claim as un-patentable based on 101, 102, 103, or 112.  However, best mode is not permitted as bases for post-grant review.  As such, the grounds on which a claim can be challenged is more inclusive in this post grant review versus the inter partes review or inter partes re-examination which a claim can only be challenged on the basis of novelty or obviousness.

Post grant review must complete within one year (Time may be extended 6 months for good cause).

Petitions for post grant review must include: Identity of real parties in interest, Identification of claims in question and the grounds for which these claims are sought to be reviewed, Copies of evidence relied upon, Explanation of the grounds for standing, Each challenged claim must have a claim construction, Explanation why the claims are un-patentable, Relevance of evidence submitted and the required fees ($35,800 for up to 20 claims and $800 for each additional claim).

The petition will be made available to the public by the director as soon as possible, however, a party may file motion to seal if submissions are confidential.

If a civil suit has already been filed by the third party the third-party is barred from requesting a post-grant review

The patent owners is allowed a preliminary response once the review has been requested setting forth reasons why no review should be instituted.  Three months allotted to submit this preliminary response if desired.

The director must determine if the information presented in the petition for the post-grant review and the information submitted in the preliminary response by the patent owner demonstrates that is more likely than not that at least one claim in the petition is un-patentable.  The post-grant review may also be instituted if the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

The patent owner has the opportunity to present evidence detailing why each claim is valid if the office does Institute a post-grant review.  The patent owner may also propose a substitute for any challenged claims or cancel any challenged claims.  There are normally 3 months allowed for the patent owner to file an amendment or response.

Opportunity to conduct discovery available to both parties.  Routine discovery includes: Cited documents, Cross-examination of declaration testimony, Information inconsistent with positions advanced at proceeding.  Additional discovery is available if it is mutually agreed by both parties and a motion is filed seeking additional discovery.

Petitioner is allowed to file supplemental information by filing a motion within 1 month from trial date.  Belated filing may be allowed if can show good reason why not earlier filed and that it is in the interest of justice.

Oral hearing allowed to be requested by both parties

Post-grant review will be terminated if the settlement by both parties is achieved, however, if the settlement comes after a decision on the merits by the board their decision is final.

The director’s decision whether to institute a post-grant review is final and non-appealable.

The petitioner is barred (estopped) from filing a civil action or requesting a proceeding before the office on any ground that the petitioner raised or reasonably could have raised during the post-grant review.  The petitioner or owner can not obtain a new patent on a claim that was not allowed through the proceedings.

Request for rehearing must identify specifically each topic the requester believes the board overlooked and where it was addressed.  This may be requested no later than nine months after the grant of a patent or issuance of a reissue patent.  Once this nine months has elapsed the petitioner should then use the inter partes review.

America Invents Act Update – Inter Partes Review (Not Reexamination!)

Overview

Section 6 of the America invents act creates a new post-grant review proceeding called inter partes review replacing inter partes re-examination proceedings.  Inter partes review can only be requested by third-party similar to the inter partes re-examination.

Procedure

A third-party files a petition with intent to cancel one or more claims of the patent on the grounds of a 102 or 103 rejection.  All real parties in interest must be identified in writing in the petition and the grounds for which the claims are being challenged, which is similar to the inter partes re-examination.  The petition must be served to the patent owner.  The petition will be made public by the director as soon as possible, however, a party may protect confidential information by filing a motion to seal.

The petition for inter partes review must include the follow: Identity of real parties in interest; Identification of claims in question and the grounds for which these claims are sought to be reviewed; Copies of evidence relied upon; Explain the grounds for standing; Each challenged claim must have a claim construction; Explanation as to why they are unpatentable; Relevance of evidence submitted; Required fee ($27,200 for up to 20 claims and $600 for each additional claim).  The petitioner may supplement information in petition through motion filed within one month of trail institution.

Only patents and printed publications are generally accepted, however expert opinions may also be included if they support the grounds on which the challenge to any claims are based.

If the third party filed a civil action challenging the validity of a claim of the patent before the petition for inter partes review was submitted the inter partes review will not be granted. Or, if the patent owner serviced a complaint alleging infringement more than one year before the petition for inter partes review was filed.

The patent owner will have a chance to respond to claims of patentability once the inter-parties review is requested, although this primary response is not mandatory.  There is a three month time period for filing the preliminary response.  If the inter partes review is granted a patent owner will be given a chance to present evidence as to why the patent claims in question are valid, provide substitute or amended claims, or cancel any challenged claims.

Both parties have the opportunity to conduct discovery.  A standard discovery provides for: Cited documents; Cross-examination of declaration testimony; Information inconsistent with positions advanced during the proceeding.  The parties can mutually agree or a single party may file a motion seeking additional discovery.

Both parties allowed to request an oral hearing

The director will terminate the inter partes review if a joint request to terminate is entered prior to the ruling on the merits.

Once a decision is made regarding the granting of the inter partes review it is final and nonappealable.  The patent trial and appeal Board will file a final written decision, after this decision the petitioner is barred from initiating a proceeding before the international Trade Commission, requesting a proceeding before the office or filing a civil action on any grounds that was raised or reasonably could have been raised during inter partes review.

Both parties are allowed to appeal the decision of the patent trial and appeal Board.  A request for appeal must specifically identify the reason the appealer believes that the board did not fully address the items of issue and where each matter was addressed in the petition.

The inter-partes review may be requested nine months after the grant of the patent, issuance of a re-issue or after the termination of the post-grant review proceeding if these proceedings are instituted and terminate more than nine months after the patent is granted.

Inter-partes review must be concluded within one year (6 month extension can be granted for good cause).

Differences between inter partes re-examinations and inter-partes review:

Some major difference in the inter partes review versus the inter partes re-examinations exist in that in an inter partes review a reasonable likelihood of the third party prevailing with respect to at least one claim is needed versus in the inter partes re-examination proceeding third-party had to show a substantial new question of patentability for the petition to be granted.

Inter partes reexaminations will not be converted into inter partes review proceedings.  This includes inter partes reexamination started before the effective date but which continue past the effective date.

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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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6.4 – MPEP 900 Classification and Search

Search and Classification

The contents of MPEP chapter 900 are seldom tested on the patent bar exam.  However, in the rare case that it is the questions are likely to be related to the following information.

How examiners search for prior art:

An examiner first reviews the application to understand what is disclosed with particular attention paid to the claims.  Once a complete understanding of the application is obtained, the examiner will search prior art such as previous patents and printed publications to see if the same invention has already been disclosed to the public.  Any documents found which pertain to the new application are considered references.  Usually only one search of the prior art is required of the examiner, however if amendments are made to the application after the initial search a second search may be required.

During the first office action based on the merits of the appellation, the examiner cites in the file wrapper the classes and subclasses of domestic and foreign patents, abstract collections and publications which where used during the conduction of the search for prior art.  Additionally, the examiner also identifies any other information collected and their sources including the dates on which the search was conducted.

For continuing applications the examiner needs to ensure they have a full understanding of the parent application and express this knowledge through making their understanding of record in the patent file.

Regarding the actual search here are some general guidelines:

A complete and thorough search has three separate steps which should be used.  These steps are identifying the field of search, selecting the proper tool(s) to perform the search and determining any appropriate search strategies for the tool(s) used in the search.

There are three reference sources which are required to be included in the prior art search.  These include domestic patents and applications, foreign patent documents and non-patent literature.

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6.5 – MPEP 1000 Matters Decided by USPTO Officials – Petitions

Matters Decided by USPTO Officals Featured

MPEP 1000 deals with matters decided by USPTO officials.  This usually relates to petitions.  Filing a petition usually should be completed within 2 months in regular, reexamination and reissue patent prosecutions.  The filing of a petition does not stay the time limit to reply to an outstanding office action.  Reference MPEP 1002.02 to determine which USPTO official has the authority to decide on a petition.

For petitions filed under 37 C.F.R. § 1.181, § 1.182 and § 1.183:

37 C.F.R. § 1.181 petitions are filed in response to requirements made by the examiner that are not subject to the appeal process.  In general an appeal is required for topics which relate to the merits of a case whereas petition relate to any other topic than the merits.  When filing a petition under 37 C.F.R. § 1.181 included should be a statement of the facts involved, the points which are to be reviewed and the action requested by the petitioner.  The petitioner can include supporting evidence of briefs and affidavits with the fact statement to better their case.  In cases where the petition is in response to a requirement or action made by an examiner the potential petitioner usually has to file a request for reconsideration with the examiner before they can file a petition.  Usually a petition fee is also required when filing a petition.  Petition fees can be referenced in 37 C.F.R. § 1.17 and vary based on the type.  A petition needs to be filed within 2 months from the action which is being questioned.  This time period is non-extendable.

37 C.F.R. § 1.182 petitions have the same rules as the 37 C.F.R. § 1.181 petitions.  However, they are used when there is no “formal” petition listed in patent law for the particular circumstance which the applicant would like to petition.

37 C.F.R. § 1.183 petitions are used to suspend or waive a rule.  Only used in extreme situations a practitioner should not expect to use or see these used often.  These also follow the same rules as a 37 C.F.R. § 1.181 petition.

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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.

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6.8 – MPEP 2500 Maintenance Fees

Maintenance Fees Featured

MPEP 2500 discloses information pertaining to maintenance fees.  When paying maintenance fees the payer must identify the patent number and the patent application number.  Reminders to pay fees are sent to the fee address which can be different then the correspondence address.  If there is no fee address it is sent to the correspondence address.  Reinstatement of a patent when fees are not paid can occur in unintentional and unavoidable circumstances.  In unintentional circumstances the patent owner can pay within 24 months after the grace period with a petition and a showing that the entire delay was unintentional.  There is a surcharge fee for this situation.  For unavoidable circumstances the patentee can pay any time after the grace period with a petition and showing that the entire delay was unavoidable.  There is also a fee required for this circumstance.  The rights of a patent are intervened when a patent is expired due to nonpayment of maintenance fees and the time when it is reinstated.  These rules to not apply to plant or design patents.  The maintenance can be paid 6 months earlier or 6 months late.  The late payment will result in the expiration of the patent.  Anyone can pay the fees for a patent now only the inventors or assignees and payment can be made through fax, mail or the internet.

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7.2 – Subject Matter Eligibility Instructions

SME Instructions Featured

Summary:

The Instructions supersede previous guidance on subject matter eligibility that conflicts with the instructions, including MPEP 2106(IV), 2106.01 and 2106.02, as of 8/24/09.  To determine subject matter eligibility, follow the “Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101”.  Product claims are evaluated to determine if the claim is wholly directed to a judicial exception.  Functional/nonfunctional descriptive material (FDM/NFDM) is evaluated for patentable distinction over the prior art. See MPEP 2112.01(III).  All process (method) claims are evaluated with the M-or-T test.

For subject matter eligibility instructions regarding product claims, there is a two step analysis newly developed to help determine if the subject matter contained in the application is patentable per 35 U.S.C. § 101.  This two step analysis is described below:

The Two-Step 35 U.S.C. § 101 Analysis

Step 1:  Is the claim directed to one of the four patent-eligible subject matter categories?  This includes process, machine, manufacture or composition of matter.  If the subject matter is not in one of the four categories, the claim is not eligible.  An example of non eligible claims can be transitory signals, humans, a company, a set of instruction, etc…

Step 2:  A claim satisfying Step 1 is subject-matter eligible under 101 unless it wholly embraces a judicially recognized exception.  These judicially recognized exceptions include: abstract idea, law of nature and natural phenomena.  Some examples include mental processes, mathematical algorithms or scientific principles.  If the claim is directed to one of these judicially recognized exceptions the claim is not patent eligible.  However, a particular practical application of a judicial exception is eligible.

Product Claim Analysis:

To perform a proper product claim analysis, one must begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach.  Then review the claims in view of the two steps listed above.

Computer-Readable Media

The functional/non-functional distinction is not an inquiry under 101. The 101 inquiry is whether a claim directed to one of the four statutory categories is wholly directed to a judicial exception.  A tangible medium including a computer program should be evaluated to determine if there is a functional relationship between the computer program and the medium for purposes of distinguishing over prior art, not for subject matter eligibility.

For subject matter eligibility instructions regarding product claims, there is a two step analysis newly developed to help determine if the subject matter contained in the application is patentable per 35 U.S.C. § 101.  This two step analysis is described below:

Process Claim Analysis:

To perform a proper process claim analysis, one must begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach.

Then look at the claim in view of the machine or transformation (M-or-T) test.  For this test, the claimed process must be tied to a particular machine or apparatus or particularly transform a particular article to a different state or thing.  There are two corollaries in that the particular machine or transformation must involve meaningful limits and a more than insignificant “extra-solution” activity.

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8.4 “Prioritized Examination” – America Invents Act

Prioritized Examination America Invents Act Patent Law

Prioritized Examination America Invents Act Patent Law

Overview

A new prioritized examination is allowed by the America invents act through section 11 (Track 1).  Prioritized examination provides for the final deposition on applications within 12 months of the granting of prioritized examination.  This is available for utility and plant patents and also for a request for continued examination in a plant or utility patent.  The prioritized exam does not replace accelerated examinations (if applicant meet special requirements).  Only 10,000 prioritized examination’s are allowed per year which is the sum of regular and RCE prioritized examinations.

Requesting and filing for prioritized examination:

RCE request for prioritized examination must be made before the first office action on the RCE.  This prioritized examination request must be concurrent or subsequent to the RCE request.  This can be amended to meet the claim limitations below.  It must be filed through EFS-Web for utility RCEs and through paper submission (mailing or in-person) for plant RCEs.

For international applications, a patent owner may achieve prioritized examination if they have done or amend to: claim benefit under 35 U.S.C. § 365(c); claim right of priority under 35 U.S.C. § (a); claim priority under 35 U.S.C. § 119(a)-(d) and (f).  However, this can not happen for 35 U.S.C. § 371 national stage applications.

Only one request for prioritized examination allowed (if dismissed cannot re-request).

Refusal of one joint inventor to execute Oath/Declaration can be remedied by petition filed with the application.  If the petition is dismissed for any reason the prioritized status is removed.

 There is an extra fee of $4,800 (50% off for small entity) for the prioritized examination.  A non-publication request of a prioritized examination can be requested, however the publication fee will still need to be submitted.  If the applicant inadvertently omits required any information on initial filing the supplemental information can be added only on the same day as the initial filing via EFS-Web.  Remember, only registered users allowed to file via EFS-Web.

All formal requirements must be met before prioritized examination will be acted upon.  This includes the submission of the specification, required drawings (if any), executed oath or declaration and the fees.

Pre-examination notice will delay the prioritized examination until the applicant has filed a complete (and timely) reply to any notice.  The application cannot contain more than 4 independent claims, 30 total claims and can not have a single multiple dependent claim.

Color drawings are allowed in EFS-Web submitted new applications for Non-provisional utility applications (includes reissue utility applications) and 35 U.S.C. 371 national stage applications.  However, a petition still needed for color drawing approval.

Preliminary amendments can be added after request for prioritized examination if the amendment does not exceed the before mentioned claim limitations.

Prioritized examination stopped if:

 The prioritized examination will be stopped if the applicant or practitioner: files a petition for extension of time; files a request for continued examination; files a request for a suspension of action; files a notice of appeal; or introduces an amendment to the application which adds more than four independent claims, more than 30 total claims or a multiple dependent claim.  There are no refunds granted if prioritized examination stopped.  A petition can be filed if they believe the prioritized examination was stopped for improper reasons.

Fees for filing a prioritized examination:

The fees for a prioritized examination include: basic filing fee, search fee, examination fee, publication fee, Track 1 processing fee, Track 1 prioritized examination fee, size fee (if applicable) and any excess claims fee (if applicable).  Fees for RCE prioritized examination include: publication fee, prioritized examination processing fee and the prioritized examination fee.

If a required fee is unpaid at the time of filing this will result in prioritized examination being dismissed.  The explicit authorization to charge fees from a deposit account can help safeguard against this.

Fee for prioritized examination will be refunded if dismissal of the prioritized examination is requested.  This can include search and excess claims fee can be refunded via petition with express abandonment and publication fee (if not published pursuant to 35 U.S.C. 122(b)).  All other fees are non-refundable.

Key dates

September 26, 2011

  • Effective date for prioritized examination on plant or utility patents

December 19, 2011

  • Effective date for request for continued examination’s

Key concepts

  • Track one is 12 months
  • Allowed on the utility, plant and request for continued examination
  • Can be used on patents claiming benefit to international applications
  • $4,800 fee
    • 50% off small entity
  • Full application needs to be successfully submitted for prioritized examination
    • Specification
    • Executed Oath/Declaration
    • Required drawings
    • Fees
  • Pre-examination notice can delay prioritized examination
  • Four independent claims, 30 total claims, no multiple dependent claims
  • Stopped if applicant files item which will extend the prosecution of patent
  • Only one request for prioritized examination allowed
    • No additional allowed if stopped
  • No refund granted if stopped
  • 10,000 allowed per year

Rules and Laws

37 C.F.R. 1.17(c)

  • Prioritized Examination Fee

37 C.F.R. 1.181

  • Petition

MPEP 1126

  • Refund of publication fee

MPEP 502.05

  • Filing instructions