Art. I, §8: “Congress shall promote arts by securing rights of inventors…”
Universal Principles at the PTO:
1. Rule of Diminishing Rights
a. Look at where in the patent process the app is—the further down the line, the less
that can be done to it (tea funnel).
i. E.g.: Once you file your paperwork, that is your disclosure and you can
amend it but not add to it. After the Office Action, you can do less. After
the Final Rejection, you can do even less. If the patent is allowed, there
are only 2 rules that allow you to change anything at all about it.
2. Capitalist Patent Office
a. Almost anything you do requires a fee—that why the answer choice that offers
you to pay a fee is probably more right than the one that doesn’t.
3. Rigid Rule Application
a. The PTO applies rules very rigidly—if you’re a day late or you irreparably violate
some rule, your (client) is screwed.
b. Always have 10 days in your docket so that you have some leeway in your
malpractice safety net!
4. Failure to Respond to Patent Office Results in Abandonment
a. The back and forth of patent prosecution means that if you don’t reply when the
office sends you something, your case will be abandoned. There are only 2
exceptions where you don’t have to respond (we’ll discuss later).
After Final Rejection:
- If you file a Notice of Appeal, you get 2 months to prepare your appellate brief (can be
extended w/ a 5-month extension).
- Appellate Brief must follow a particular formula (pg. 220-221 text)
[USC 101] – Patentable Subject Matter
Original statute didn’t include “business methods.” This was later added to the list of things that
were patentable via the Bilski case.
-
-
-
(1) Statutory subject matter
o Almost anything “under the sun” is patentable except atomic weapons, facts,
mathematical formulas, mental methods, etc.
o Patents are amoral—it doesn’t matter if the invention does something bad.
Enforcement may be a moral issue, but granting a patent is not.
o Enhanced natural life (e.g.: bacteria), computational methods, and some elements
of human life can be patented (e.g.: prosthetics).
(2) Utility
o Inventions have to be useful in order to deserve patent protection.
o Inventions now only have to be “merely” useful—not “sufficiently” useful.
(3) Inventor/discoverer
o Only the inventor/discoverer gets the patent—not the owner, financier, etc.
[MPEP 100] Secrecy, Access, Security, Foreign Filing
KEY: Memorize the different exceptions to confidentiality for pending and abandoned apps, the
different procedures for pending and abandoned apps, and the files that are available w/o
exception. Another favorite is Rules covering access to published apps.
[MPEP 101 General]
Confidential status of applications; publication of patent applications [35 U.S.C. §122]
Publication General RULE:
-
-
(1) Regular publication: IF (a) you’re filing a (N.C.F.) new app on or after Nov. 29, 2000,
or if it’s continuing app (CIP, continuation, of divisional app), or is a foreign app 
THEN it will automatically publish 18 months after its filing date (PG PUB = Pre-Grant
Publications).
o These patents will not publish if (S.P.A.D.O.):
 (1) secrecy order
 (2) is a provisional application
 (3) abandoned
 (3) designs
 (4) opted-out by
 (a) filing a non-publication request w/ original app or
 (b) saying that you’re planning to file the app outside the US,
o IF you don’t want to publish  THEN you must make (1) a Non-publication
Request when filing AND (2) say that you’re not planning to file outside the US.
(2) Early publication is possible if you request it.
(3) Redacted publication (where you want to publish something less than you originally
filed) is also available if you ask for it.
o Some people do this when the I.A. discloses more than they want to when
entering the National Stage and they want to file a redacted version
Access rights can pop up over the course of prosecution if an app is published.
 The application accrues provisional rights.
Access to Interference Files RULE:



IF there is an Interference between an issued patent and a pending app, and there are
some rights at stake (e.g.: the patent owner might lose his patent)  THEN that patent
owner can access the interference files.
IF there is an Interference between two pending apps that one person will win/lose but
there are no rights at stake  THEN those people cannot access each other’s apps.
o There are no rights at stake here yet between these pending apps—that’s why
these people don’t get access to the Interference files.
IF an Interference is pending  THEN you (outsider) cannot access the files.
Public Access RULE:
Public can always access for FREE: (1) published apps, (2) issued patents, (3) reissue apps, &
(4) reexamination apps.

How can the applicant prevent public access to his pending app?
o The applicant can file a Notice of Express Abandonment to avoid publication of
his pending app [CFR 1.138(c)].
 Just because it’s in line to be published, doesn’t mean that the app
automatically will. You can file it and then have a change of heart. Don’t
assume that it’s published. It could’ve been abandoned!
Status RULE: [MPEP 102]
IF:
-
The app is accessible, OR
The app has been identified by its serial number & Filing Date in a published patent
document (from any country), OR
The app has been identified by its serial number & Filing Date in a US app that’s open to
public inspection, OR
The app is in the National Stage (PCT) of its International App & the US is designated as
one of the countries (b/c by this point it’s already published)
 THEN you can find the “status” of the app.
o IF the status request of an app is based on a patent doc  THEN you must make
a written request, make a copy of that patent doc, but don’t have to pay a fee to
see the status of that app
o IF you can get the status of a child app (i.e.: continuation, divisional, CIP) 
THEN you can also get the status of the parent.
Who always has access and can also find out an app’s “status”?
Filing When Inventor
Refuses to Sign or
Can’t be Reached
-
-
Inventor:
o The inventors will always have access—it can only be restricted by the eventual
assignee
o The named inventors [CFR 1.47(a) or (b)] will also have access even if they
haven’t signed the app (this leads to awkward situations where an unwanted
inventor can sit in during conferences w/ the PTO).
Inventor’s agent:
o The inventor’s agent/attorney, as per the Power of Attorney, will always have
access.
Assignee:
o Assignees have total control over the app as if it’s their real property (can revoke
the attorney, can stop inventor from accessing, etc.).
o Assignees of whole or partial interest always has access
o Assignees who have an exclusive license in the app always has access
*Note: Anybody can get access to a pending or abandoned app if they have a Power to Inspect
that specifically says they can access it, and it’s signed by the applicant/attorney/agent/assignee.
[MPEP 104]*
Access to Abandoned Unpublished Apps RULE:
IF the abandoned unpublished app is referenced in
- In a published US app, OR
- In an issued US patent, OR
- In a US app that’s open to public inspection, OR
- In a published PCT app
 THEN the abandoned unpublished app can be accessed.
Access to Pending Unpublished Apps RULE:
IF the pending unpublished app
- Is being used by its owner for an improper business purpose, OR
o e.g.: selling something to a customer by threatening them to sue if they buy from
a competitor of whom the seller has a patent pending on the competitor’s claims.
PTO will give that competitor access to the actual app to see if the risk is real
- Is being relied upon for priority by a patent/published app, OR
- Is partially being referenced by a patent/published app (THEN only that part of the
pending unpublished app can be accessed)
 THEN that pending unpublished app can be accessed.
o “Access to Abandoned [CFR 1.53] CPA Apps” follows the same “Access to
Unpublished App RULE.”
Access to Assignment Records:
-
If you can get to the underlying app, you can see the assignment records, too.
Having looked at the assignment, you cannot use it to look at other pending unpublished
apps w/ the same assignee.
Accessing an App’s Assignment Record:
Petition &
Fee Req’d?
No Petition &
Assignment
Records of all Fee req’d
published
apps, issued
patents,
reissues, reexams, &
Exceptions to
Service
Confidentiality? Req’d?
Status, too?
Inventors?
Assignee w/o
Petition?
No exceptions—
all assignment
records
available!
Status, too
Yes
No Service
req’d
some
Interference
files?
Need Petition
Assignment
Records of all & Fee
pending
unpublished
apps, & apps
that won’t be
published?
Assignment
Records of all
abandoned &
unpublished
abandoned
apps?
No Petition &
Fee req’d,
unless there
are special
circumstances
Assignment
records not
available as per
Access to
Pending
Unpublished
Apps RULE
Yes Service
req’d—unless
a copy of the
app that’s
incorporated
by reference
can be
obtained w/o
Service or
Petition
Assignment
records not
available if (1)
the app is
referred to in a
issued patent, (2)
published app,
(3) in an app
open to public,
(4) the app is
referred by
published PCT
app that
designates US
No Service
req’d
No Status,
unless (1) you
can get access
to the app
itself, (2) the
app is
identified in a
published
patent doc, (3)
the app is in
Nat’l Stage
(PCT)
No Status,
unless (1) you
have access to
the app, (2)
the app is
identified in a
published
patent doc, (3)
the app is a
National Stage
PCT app
Yes
Yes
Secrecy Orders: are issued when the subject matter of the app is a matter of national
security—that’s why ALL apps are inspected for national security implications [MPEP 115]
- All continuations, divisional, CIPs of that Secret App are also kept secret (the Order
continues for the children apps).
- Secrecy Orders last as long as it is necessary.
Foreign Filing Licenses: are required when you invent something in the US (“Conceive in
detail”) and want to file in a foreign country.
- Ways to get a FFL:
o (1) Any US filing of an app (including provisional!) for an invention that was
conceived in the US has an implicit request for a FFL, OR
o (2) You can file in the US and wait 6 mo. to automatically get the FFL, OR
o (3) You can ask the PTO for a FFL
-
IF you forget to ask for a FFL and file a foreign app for a US-conceived invention 
THEN you must get a Retroactive FFL if you want to enforce your patent.
o Your Petition for a Retroactive FFL


must show that you’re seeking the FFL diligently, AND
that you had no deceptive intent in not getting the FFL sooner
DOE and NASA statements:
-
IF your invention has some radioactive part (e.g.: diagnostic devices) or space flight
features  THEN you have to file a DOE (for radioactivity) or NASA (for space flight)
statement within 30 days in which you describe the nature of your invention and whether
or not you created it in the course of a gov’t contract.
o 30-day deadline is not extendable!
[MPEP 200] National Apps vs. National Stage Apps,
Correction of Inventorship, Foreign & Domestic Priority
Three facts that are tested: (1) IDSs are not permitted in provisionals, (2) regular apps within
the first year after provisional filing can be converted into provisionals, (3) provisionals can be
treated as a regular apps upon request (see text).
National Apps vs. National Stage Apps [MPEP 201]
NATIONAL APP
An actual filing directly in the US by anyone
(US or foreign citizen)
You get a Filing Date as soon as you submit
SCD—you can give in FOT later.
Restriction practice is based on examiner’s
discretion.
NATIONAL STAGE APP
The subsequent chapter in the existence of an
existing I.A. (originally filed in that foreign
country by someone)
Your I.A. enters the National Stage only after
all the SCDFOT elements have been
completed
Restriction practice is based on “Unity of
Invention” PCT standard
- IF the same inventive concept is the
basis for novelty in all the separate
respective claims  THEN the claims
should stay together in the same app
(otherwise, claims should be split up
into separate apps).
Correction of Inventorship
*KEY: Look for “w/o deceptive intent” and “w/ written consent of assignee.” Know the
differences between [CFR 1.48(a-f)] and [CFR 1.324]. ***

IF the application has an incorrect inventorship  THEN the patent holder cannot
enforce his rights! (That’s why inventorship must almost always be corrected).
o Use [CFR 1.48(a-f)], [MPEP 201.03], and [CFR 1.324]

IF an inventor conceives one of the claims  THEN he is an inventor of it (just doing
RTP isn’t enough to be considered an inventor)

IF the inventorship of the original list of claims is somehow incorrect, but the patent
issues after prosecution with only the claims that had correct inventorship  THEN you
don’t need to fix inventorship b/c those incorrect inventorship claims have been
eliminated anyway.

[CFR 1.48(a)] – In your amendment you can fix a mistake of inventorship (E.g.: You
listed Inventor A, but actually it was Inventor B who invented).
o Must submit Statement of No Deceptive Intent
 Don’t have to explain the error in this Statement, though.
 Don’t need to verify this Statement b/c [CFR 10.18(b)] applies.

[CFR 1.48(b)] – In your amendment you’re no longer claiming (or you’re non-electing)
w/e Inventor A had conceived and contributed to the invention.
o E.g.: Chemist conceives the compound claims, and Doctor conceives the therapy
claims. If you file both of these claims in the same app, the examiner’s restriction
practice will make you split these claims into separate apps. Since you’re no
longer claiming the therapy in your compound claims (and vice versa), you must
now fix inventorship.

[CFR 1.48(c)] – in your amendment you are now claiming something (along w/ your
existing claims) that was originally disclosed that another inventor conceived
o E.g.: You file an app that claims a therapy (invented by a Doctor) and discloses a
drug. Later, you realize you need to also claim the drug itself (invented by a
Chemist).
o No new subject matter is added!!! Only claims are added (from the original
disclosure), and you’re only adding the inventor who conceived those claims.

[CFR 1.48(d) and (e)] – Fixing inventorship in provisional apps (remember, these only
contain a Spec and Drawing—no claims).
o [CFR 1.48(d)] – In this situation, you’re adding inventors to a provisional app.
o [CFR 1.48(e)] – In this situation, you’re deleting inventors to a provisional app.

[CFR 1.48(f)] – When you file non-provisional app, all you need to submit is a SCD (the
FOT can be submitted later).
o E.g.: If in your original submission you’ve identified Inventors A and B but
actually Inventors C and D are the real inventors, you need to fix inventorship
using [CFR 1.48(f)]. Since you haven’t filed the O/D, inventors are not fixed
automatically—you must now submit an O/D signed by Inventors C & D to
change the inventors. No petitions needed! SWEET!
o E.g.: You originally filed your non-provisional app with A & B’s names but the
real inventors are actually B & C. You can fix this using [CFR 1.48(a)], but you
can also use [CFR 1.48(f)] (by filing a continuation, identifying B & C as the real
inventors, and a correct Oath signed by B & C).
o *NOTE: There is a wrinkle here. In order to accomplish what a [CFR 1.48(f)]
allows in this situation, there MUST BE co-pendency between the two apps AND
an overlap of at least one inventor between the original app and the continuation.*

[37 CFR 1.324] [MPEP 1412] – Correcting inventorship in a patent after it’s already
been issued. This situation usually happens when the foreign entity didn’t know about the
US system where the inventor’s names are given instead of the owner)
o [CFR 1.48] cannot be used here b/c that’s only for pending apps)
o Must submit a Petition of No Deceptive Intent
o Must get written consent of assignee
o Don’t need a new O/D
* Note: ACE rules – Need written consent of assignee to fix inventorship [CFR 1.48(a), (c),
(e)].
Provisional Apps [CFR 1.9]



This is a way to hold your place in line at the PTO by submitting a SD and Fee (no
Claims needed). These are not examined, published or capable of being amended or
supplied an oath for. It is merely a placeholder.
o A provisional app gives you a “patent pending” label.
Within 1 YEAR from that provisional app filing, you must file the final application.
o [35 USC 111(b)], [37 CFR 1.53(c)] are the law and rules that govern this.
A provisional app can be anything that the owner can use to protect his rights (b/c they’re
afraid they might lose those rights to someone else). A provisional app is a disclosure
(E.g.: can be simply a journal article w/ a cover page).
o W/ a provisional app, you are stepping in front of the other millions of apps.
*NOTE: You cannot file a provisional for a design app, and you cannot file a design app that
claims the benefit of a provisional. But you can do these things for plant and utility apps.*
C – no claims
O – no O/D (or T, or names of Inventors)
P – no basis for priority for design
I – no IDS
E – no examination
D – no design app
P – no claim of priority from prior app
Provisional requirements:
-
(1) Cover sheet
o Must state the inventorship
o Must state that the app is a provisional
 If cover sheet is missing/incomplete, you have 2 months to fix via Notice
of Missing Parts. This non-statutory deadline is extendable up to another 5
months
-
(2) Absolute minimum requirements – if you don’t have these initially, your app will be
completely rejected right away—you don’t have 2 months to fix it
o Spec
 Written Description (enablement)
o Drawing (if necessary)
-
(3) Filing fee
o If you don’t pay it, you have 2 months to fix via Notice of Missing Parts.
* Provisionals will never be looked at unless you refer to it in your real app whenever you file it.
- IFF the later filed US app shares something with this previous German app or US
provisional,  THEN you can claim the benefits of that prior filing and you can get
credit for it.
Converting a non-provisional app to a Provisional app:
The main reason to do this is when the PTO says the non-provisional does not make a claim, so
the applicant may convert the app to a provisional (which doesn’t have any claims). The
provisional app will still have the original Filing Date, and then a new non-provisional app that
claims the benefit of the provisional app will still be able to go through with proper claims.
Non-Provisional (regular) to Provisional –
 Must be done within 12 months from application filing date
 Must be done before abandonment
 Must be done before paying the Issue Fee


Must be done before a request for statutory invention registration is made
To convert, you need: a request for conversion and fee
 You cannot get a refund of the Conversion Fee.
Non-Provisional Apps:
-
A non-provisional app will EITHER be issued OR abandoned.
Non-provisional apps are filed under [CFR 1.53(b)] [USC 11(a)]
Non-provisional apps will be published 18 months after the Filing Date
Types of non-provisional apps:
o Utility apps: claim a combination of features, functions, elements, or steps
o Plant apps: claim actual biological plants
o Design apps: claim the ornamental appearance of things
 Continuations
o you MUST say in a sentence of your continuing app whether you’re incorporating
a prior app by reference.
o must use exactly the same S as parent
o can use the same O/D (b/c you’re not adding new subject matter),
o always has the same Filing Date as parent
o must be co-pending w/ parent
o must have at least 1 common inventor as parent
o can be filed under [CFR 1.53(b), (c), or (d)]
 E.g.: Your original app has claims 1-10. Claims 1-5 are rejected and
Claims 5-10 get a Final Action. You can file a continuation for Claims 1-5
as long as there is one common inventor and co-pendency w/ the parent.
o IF filed on/after Nov 29, 2000  THEN the claim for benefit must be made
within later of 4 months from filing date of the application or 16 months from
parent filing date
 CIPs
o must use substantially the same S and disclosure as parent but w/ some newly
added or deleted subject matter
o must use a new O/D (to cover the new subject matter)
o each new claim based on the new added subject matter has its own Filing Date,
and the claims that are based on the same subject matter as the parent have the
parent’s Filing Date
o must be co-pending w/ parent
o must have at least 1 common inventor
o must be filed under [CFR 1.53(b)] only
 Therefore, you cannot file a CIP of a design app
 E.g.: Your original app claims aspirin. During prosecution, you invent a
better aspirin. You can claim the improvements in a CIP using
substantially the same S and disclosure, as long as there is at least 1
common inventor and co-pendency w/ the parent.
-
Divisionals and Continuations can exist for any type of app (including designs) via [CFR
1.53(d)]
 Divisionals
o uses exactly the same S as parent
o always has the same Filing Date as parent
o must be co-pending w/ parent
o doesn’t have to have 1 common inventor as parent
o must claim an independent and distinct invention from the same S as parent
 (E.g.: method app in parent, product app in divisional)
o may be filed under [CFR 1.53(b), (c), or (d)]
 E.g.: Your original app claims a compound and a method using that
compound. Examiner does restriction practice to save the compound
claims only. You can claim the compound method in a divisional as long
as there is co-pendency w/ the parent.
 Substitutes
o a new app in itself based on the same disclosure as the parent
o must not be co-pending w/ parent—parent must be dead!
o has its own Filing Date different than parent—has no priority benefit from parent
o doesn’t have to have 1 common inventor as parent
o can be filed under [CFR 1.53(b), (c), or (d)]
* You MUST file a Continuation, CIP, or Divisional within 3 months of restriction practice.*
***NOTE: Continuations - IF there is co-pendency between the original and the continuation
(before abandonment or issue of the original) and there is at least one common inventor between
them  THEN your subsequent app is entitled to the priority of the previous application VS.
Substitutions - The substitute app does not enjoy this benefit of the prior application. ***
 CPAs
o are continuation apps for design patents only under [CFR 1.53(d)]
o filing a CPA means will kill the parent
 RCEs
o
o
o
o
o
can only be filed for plant & utility apps
must be filed only after the parent has a Final Rejection or Notice of Allowance
keeps the patent prosecution going
doesn’t get a new Filing Date—there’s no parent-child relationship
must pay another filing Fee
Claiming Foreign, Domestic, & Provisional Priority
[35 USC 120], [35 USC 121] and [35 USC 119]
-
-
[USC 120, 121] – You file a continuation, divisional or CIP and claim the benefit of the
prior app. These apps are considered to be a replica in terms of prior disclosure in the
parent application—while the CIP is not so b/c it has multiple filing dates.
[USC 119] – Provisional Priority & Foreign Priority: You only get the benefit of the later
filed non-provisional apps to the extent that it shares info with the earlier filed provisional
app. This is the same for international app foreign priority.
General Priority RULE:
IF you’re pulling up priority form any other app (Foreign or US)
 THEN
- Original app must be enabling, AND
- Original app must have proper written description [USC 112], AND
- Original app must disclose Best Mode, AND
- Second app should have a sentence about claiming the priority from the original app
EEF (Earliest Effective Filing):
- EEF is the original date that you’re claiming priority from—the [USC 102(e)] date.
- EEF will differ depending on the claims (remember, in a CIP the different claims can
have different EEFs)
- EEF always means EEF in the US
Foreign vs. US Priority:
- Foreign Priority [USC 119] [MPEP 201.13]
o Claiming Foreign Priority will not help you overcome a [USC 102] bar!!!
o Claiming Foreign Priority does not move back the date that a US patent becomes
prior art under [USC 102(e)].
o The Foreign Filing Date is only for the benefit of the applicant—it doesn’t create
a prior art effect against those filing later.
o IF
 you filed an app in a foreign country, AND
 that app has been withdrawn/abandoned, AND
 you file again in the same country, AND
 that withdrawn/abandoned app hasn’t ever become public, AND
 that withdrawn/abandoned app hasn’t ever served as a basis for priority
AND
 that withdrawn/abandoned app was filed in the same country as the new
app
 THEN the second foreign app will not lose its basis for Foreign Priority b/c of
the first withdrawn/abandoned app
-
Having Foreign Priority doesn’t count towards patent term; [USC 120]: Having regular
Domestic Priority does count towards patent term (not provisional domestic priority)
How to Claim Priority:
- Domestic Priority [USC 120]:
o Prior domestic app must be co-pending with the app seeking domestic priority.
o Prior domestic app must have 1 common inventor w/ the app seeking domestic
priority.
o Just need to refer back to the old domestic document using serial # and its Filing
Date
o Don’t have to claim domestic priority within 1 year.
- Foreign Priority [USC 119]:
o Must file in the US within 1 YEAR of foreign filing, AND
 If you accidentally miss the deadline, you have to pay a huge fee ([37
CFR 1.17(t)])
o Must state that you’re claiming Foreign Priority from a prior app, AND
o Must file a certified copy of the foreign document that you’re claiming priority
from, AND
 Don’t have to submit a T of the foreign document unless you get a
Rejection
o Must have at least 1 common inventor, AND
o Must perfect your foreign priority claim (make claim, file certified copy, and
possibly provide T)
- Provisional Priority
o Must be done within 1 year (if you accidentally miss the deadline, you have to
pay a huge fee)
o Cannot be done for Design apps
o Don't need to have common inventors (inventors don’t even have to be named on
the provisional, anyway)
o Just have to give the provisional app # and list of common inventors (if any)
o Provisional Priority claim doesn’t have to be perfected (b/c it’s domestic)
Timing of Making Priority Claims:
- IF you file a foreign app  then within 1 year file a provisional  then within 1 year file
a non-provisional  THEN you cannot get Foreign Priority from the foreign app
- IF claiming either Foreign or Domestic Priority  THEN you must present your priority
claim within 16 months of the original or 4 months after filing your current app
(whichever comes later).
o When you file an app you start a 4 month clock by which you must tell the PTO
about priority.
- IF you’re making a Domestic Priority claim and you want this to be published  THEN
it should be done before 18 months of filing the original (b/c after 18 months it will be
published).
- You must tell the PTO that you are entitled to priority within 4 months of filing your US
app. It could be 4 months after the filing date or 16 months of the priority date that you’re
asserting (whichever is later).
o IF you miss this deadline, but your app hasn’t issued yet  THEN you must pay
a fee (“Late Assertion of Priority Fee”) with a Certification of Correction
o IF you miss both the deadlines and your app issues  THEN you must file a
reissue (super expensive!)
Resetting Foreign & Provisional Priority:
 To reset Foreign Priority:
o FIRST you must file in a foreign country  THEN withdraw in that foreign
country  THEN file again in that same foreign country.

To reset US Provisional Priority:
o IF your provisional app didn’t get disclosed or published  THEN you can file a
provisional again and restart your provisional again with a 1 YEAR period.
There’s no limit to how many provisionals you can file as long as you don’t
disclose or publish the info to the public.
o You cannot do this with foreign priority assertions: Once you file a foreign app
you have 1 YEAR to act by filing in the US—otherwise you cannot assert any
sort of Foreign Priority.
[MPEP 300] – Ownership & Assignment
***NOTE: IF anything from a patent file (assignment records, patent records, etc.) has been
referenced by any pending patent app or issued patent  THEN it is, by reference, available to
the public. ***
Inventorship VS. Ownership:
- Inventions are owned by inventors as a matter of law—and this cannot be changed by
agreement.
- Inventorship is always under true inventors VS. Ownership is easily transferable (sold,
bought, conveyed)
- Wrong inventorship might make the patent invalid—unless it’s fixed VS. Wrong
ownership has no effect on patent validity—but might make the patent unenforceable.
- Inventors can be excluded by assignees from participating in patent prosecution VS.
Patent owners can control patent prosecution
- Inventorship is about who conceived the claims VS. Ownership is about who can enforce
the patent rights that are sought in the claims
- Inventorship can be determined by PTO VS. Ownership can only be determined by courts
- Only human beings can claim inventorship of a patent VS. Any type of entity can claim
ownership
How to Record Assignments:
- In order to record an assignment [MPEP 302]
o (1) Must be in English or have a T
 Assignments don’t have be in English but recording of assignments must
be
 Summary/partial T isn’t enough.
 Translation doesn’t have to be verified.
o (2) Must state the right information
 IF you’re recording an assignment anytime after the patent has issued or
after submitting the app  THEN you must give the patents’ and apps’ #s
 IF you’re recording an assignment at the same time that you’re submitting
the app  THEN you must identify the assignment by the date of
execution of O/D, name of each inventor, and title [37 CFR 3.11]
 IF you’re recording an assignment at the same time as you’re submitting a
provisional  THEN you must identify the assignment by name of each
inventor and title.
o (3) Must be done within 90 days of making the assignment
o (4) Must pay a Recording Fee
o (5) Must be legible on ONE side of paper only
o (6) Must submit an original or certified copy of the recording assignment
document
o (7) Must include a Cover Sheet
 Must have name of party conveying the interest
 Must have name and address of party receiving the interest
 Must have a description of the interest being conveyed
 Must include the # of each patent or app
 Must include Name & Address to which correspondence should be sent
 Must list the number of patents and apps being assigned w/ this document
 Must state the fee amount
 Must have date the document was executed
 Must have a statement saying that all this info is correct
 Must be signed by both parties
o (8) Can be submitted by fax
Assignments:
- should always be made in writing [35 USC 261]
- don't have to be in English
- don't have to be recordable in order to legally transfer title
o e.g.: you make an assignment to someone in sand writing, and that person can
record the assignment by taking a picture of the sand (and doing all the other
requirements)
- recording assignments is totally voluntary
Access to Assignment Records:
- Assignment records or issued patents are publicly available (e.g.: USPTO PAIR)
- Assignment records of pending/abandoned apps are generally unavailable—unless you
meet the threshold for accessing patents (e.g.: referenced by number, etc.)
Transferring Assignment Status:
- Assignment status of parent apps & provisionals carries over to Continuations,
Divisionals, Substitutes—but NOT CIPs
o for CIPs, you need to make a new assignment altogether.
Who can be Assigned:
- IF there are no recorded assignees  THEN the inventors are the default owners.
- PTO employees cannot apply to acquire any interest in a patent while they’re still
working at the PTO + 1 year afterwards—unless they’ve inherited the patent interest via
will.
Joint Assignees:
- Everyone who’s a joint owner has equal rights to do w/e they want w/ the patent w/o the
other owner’s permission (just like real property).
o “Conveying patent licenses” has nothing to do w/ assignments, patentability, or
enforceability.
Consequences of Recording [35 USC 261]
-
Recording assignments means putting the assignee in a better position than those who
come afterwards and try to buy the same patent.
Assignee only has rights to the subject matter that’s common with the original patent
[MPEP 306]
Recording an assignment doesn’t mean that the actual assignment or patent itself is valid.
IF
o (Time) The First Buyer fails to record within 3 months of assignment, OR First
Buyer fails to record before the second assignment is made, AND
o (Consideration) The Second Buyer was assigned the invention by paying some
consideration (e.g.: transferring by will doesn’t count!), AND
o (Good-Faith Notice) The Second Buyer didn’t know about the First Buyer’s sale
 THEN the Second Buyer takes title from the First Buyer.
o E.g.: Nadia gets a patent license from Larry. Larry sells the patent to IBM.
Nadia’s license (like a lease), however, stays the same. IBM owns the patent but
Nadia still has the same license.
o E.g.: Nadia (First Buyer) gets an assignment from Larry. Nadia doesn’t record.
Larry dies and his wife gets the estate. The wife (Second Buyer) doesn’t get the
assignment back from Nadia b/c she didn’t pay any consideration to get the
assignment from Larry.
[35 USC 102]
102(a):
-
(1) “Public” knowledge [MPEP 2100] or use in this country
-
(2) Patent/printed publication anywhere in the world
o Balance these with US date of application
-
PTO finds your date of invention to be your US filing date unless additional facts are
known. They’ll start with this assumption
o 3 ways to determine Date of Filing:
 US Domestic priority [35 USC 120]
 Foreign priority rights
 Testimony of facts to prove another invention by someone with first-hand
personal knowledge of facts and necessary facts [CFR 131] affidavit.
-
Basically, you can get a patent unless someone else “did it before you provably.” But
how do you prove this?
o “Date of invention” in this statute means Conception (this is complete only when
you communicate the idea w/ another in this field and they can actually carry out
your invention) + RTP
o “Known” doesn’t just mean knowing that the invention exists, but also how the
invention actually works.
o “Used” means non-secret use of the invention—use and knowledge has to happen
together.
o “In this country”
o “By others” means by at least one person other than the inventor. A’s own prior
art cannot prevent A from getting a patent under [102(a)].
o “Publication anywhere in the world” doesn’t mean paper printing anymore—just
any tangible recordable medium that is accessible can be a “publication.”
102(b):
-
(1) Patent/printed publication anywhere in the world
-
(2) public use/on-sale in the US
o Balance these with date of 1 year before US filing date—don't worry about date
of invention, just look at the US filing date.
-
Date of Invention is irrelevant for this. Just compare potential prior art with US filing
date.
-
Selling “rights” to a patent is not the same thing as selling or offering to sell the patent
itself.
-
All based on public policy—once something enters the public domain from anywhere in
the world, there is only 1 year within which you have to make up your mind whether to
pursue a patent…regardless of how that knowledge got out there.
o This is the way inventors can get themselves in trouble.
-
“Public use or sale” must be in the US’
o Why doesn’t it matter if the invention is sold in Canada or Mexico, even though
they’re part of the NAFTA agreement? It just doesn’t!
-
“Public use” doesn’t require knowledge—it just means used in public w/o restrictions. If
it’s commercial use, it doesn’t have to be “public” use in the sense that everyone knows
about it.
o E.g.: Driving around the car w/ cleaner technology w/o anybody knowing about
it.
o E.g.: City of Elizabeth, where the inventor experimentally used his pavement
invention in public to test its effectiveness and shit. Court said this kind of public
use was okay b/c there was control by the inventor, use was not excessive, and
nature of invention made it necessary to test it in this way.
o Experimental use is personal to the inventor—you can’t look at someone else’s
use and say that it is experimental and therefore doesn’t bar the invention under
[102(b)].
-
“Sale or offered for sale” means if the potential buyer reasonably thought the thing was
for sale (even if it doesn’t) then it is “offered for sale” under this statute.
o The invention must be, at this point of offered for sale, must be ready for
patenting (enabled).
102(c):
-
Abandoning an application is different than abandoning an invention. Abandoning an
application is okay and frequently done—but abandoning an invention is bad and will
prevent you from getting a patent on it.
-
If you publicly disparage your own invention, you have abandoned your invention (e.g.:
peer-review publications where you improve on your own inventions and write about
your old inventions disparagingly)
-
Abandonment is not dependent on the passage of time—it’s about what you’ve said about
the invention.
102(d):
-
Two acts must occur: (1) Same applicant/owner/patentee must go to foreign country, file,
and get a foreign patent before filing in the US and (2) that foreign filing date must be
more than 1 year before US filing date.
o If I file an app in a foreign country (Canada) then the US will say that I have 1
year to get my act together w/o risk of forfeiting my rights under 102(d). If I file
in a foreign country and more than 12 months go by, I’m at risk …..
o If I file in a foreign country and 1 year goes by, and you have yet to file in the US
then you’re at risk in the case that that foreign app becomes a patent (if that
happens you have forfeited the right to go forward in the US).
 Design patents only have 6 months.
E.g.: F files in Italy (Nov 15, 2007), it issues. It publishes later. F files in US on Dec. 1, 2008.
This is a 102(d) statutory bar. What matters is when the patent became effective. An exclusory
right of any sort qualifies as a patent—it doesn’t matter if it hasn’t published yet.
E.g.: You file in Japan, it issues slightly more than a year later. You then file in the US on Nov.
21, 2008. You’re not in trouble here b/c it hadn’t issued in that foreign country yet. The foreign
patent must’ve issued in the foreign country in order for it to be a problem under 102(d).
102(e):
-
When you meet certain prior art requirements, this prior art benefit when it comes to life
actually snaps back to some date earlier in time.
o 102(e)(2) says there’s a US patent to another—this becomes prior art as of its
filing date.
o 102(e)(1) rewards people for filing a PCT application that designates US as one of
the countries. If you file a PCT in Japan, your reward is you might get a 102(e)
date as your filing date.
-
A person shall get a patent unless a patent was granted to another who has a filing date
before our applicants’ DOI.
o It’s the filing date of a US patent/publication vs. date of invention for our
applicant.
E.g.: You are examining a patent application. You go out and find prior art. Applicant field
today, so as far as you know the DOI is today. When you find a US patent (maybe it was granted
today) b/c it’s a US patent to another, you don’t look at its grant date—you look at its US filing
date and snap back to that date (this US patent becomes super prior art).
- Under (a), the day it becomes a patent/printed publication becomes the date of issuance.
- Under (b) the day it becomes a patent/printed publication becomes today
- Under (e) the day it becomes a patent/printed publication—look back to its earliest US
filing date.
- Examiner will ask: Does the US filing date to another beat this applicant’s date of
invention? You assume the date of invention is the date of filing unless there’s an earlier
US filing date (CIP, divisional) that can help you with your date of invention.
E.g.: Milner
- When a patent issues, there is included in those rights a particular date and an enabling
description. The judge in this case said the US filing date is the date of invention.
-
-
Look at the filing date of the alleged [102(e)] prior art and the current invention.
o [102(e)(1)]: covers published apps
o [102(e)(2)]: covers US patents (you can use these filing dates)
USPTO will go back all the way to the earliest filing date of the first application when
comparing it to the prior art/current invention—even if the filing date is 5 or 6 years
before the date the invention/prior art became published. It’s unfair! Suck it.
-
A Foreign Filing Date NEVER plays a role in determining [102(e)] prior art—always
look for US date.
-
International applications (PCT) as [102(e)] prior art:
o PCT applicants designate one of the WIPO countries as their place of filing a
patent app.
o If the PCT app publishes in English, and the applicant listed the US as one of the
countries that they may want to get rights from, (44:20)
o E.g.: You file your PCT in Germany patent office. The PCT publishes in
Germany. It doesn’t get a 102(e) date b/c it must be filed on or after Nov 29,
2000, designate the US (this always happens), and publish in English (this
sometimes doesn’t happen).
Tricky thing is that the prior art inventor could’ve opted out of publication and it didn’t publish
until much later (after you’d already invented the same thing in the meantime). As soon as it
publishes, the thing has a 102(e) date that snaps back to the filing date!
102(f):
-
(1) Inventor stole the idea or
-
(2) Mistake of inventorship
102(g):
-
Interference
o Comparing RTP to RTP. Then comparing Conception + diligence vs. Conception
+ diligence.
o There has to be diligence from Conception to RTP…it doesn’t matter what
happens afterwards from RTP to filing date.
-
Balance the date of the other invention that the other person made with the date of the
current invention.
-
“Prior art when the same invention was made by another who hadn’t A/S/C” vs.
applicant’s date of invention
-
When statute says “made by another” it means “identical claims” – this prompts an
Interference.
USPTO says if you were the first to invent, and you haven’t A/S/C, then you get a patent under
[102(g)].
- [102(c)] abandonment is done by you (via public disparaging).
- [102(g)(1)] abandonment can be inferred from time delay. Suppressed means waiting for
current technology to catch up with you. Concealing means keeping it quiet until you
discover that competitors want to patent something similar. A/S/C is not allowed!!!
- [102(g)(2)] covers the outcome of an interference.
*Note: “Reference discloses and claims applicant’s…” triggers a 102(g) question.*
SUMMARY OF 102
(a) (e) (g) = day of invention bars
(b) (d) = activity of inventor leading to loss of right statutory bars
(c) = abandonment by inventor bar
(f) = thief bar
Subsection
A
Who
3P
3P
B
Inventor/3P
What
Knew or used
invention
Patented/described
invention in
printed publication
Patented/described
invention in
printed publication
Inventor/IP
Offered for sale,
sold, or publicly
used invention
C
Inventor
D
Inventor
Abandons
invention
Patents invention
E
3P
Describes
invention in patent
application that
ultimately issues
OR PCT
application
published in
English
When
Before date of
invention
Before date of
invention
Where
USA
More than 1 year
before filing date
of patent
application
More than 1 year
before filing date
of patent
application
USA/foreign
country
USA/foreign
country
USA
USA
More than 1 year
before filing USA
patent
Filed before date
of invention
Foreign Country
Before date of
invention
Before date of
invention
USA/foreign
country
USA
USA/Foreign
country
102(e)(1): prior art
is the effective US
filing date of
issued US patents
& published patent
apps;
102(e)(2): prior art
is the “filing
date?” of PCT
application/patent
filed on/after Nov.
29, 2000,
designated US,
and issued in
English.
F
Inventor
G
3P
Derived invention
from 3P
Invented invention
and did not A/S/C
[MPEP 400]: Representative of Inventor and Owner
Attorney-Inventor Relationship:
Power of Attorney Form:
- Applicants can represent themselves pro se.
o Joint inventors select 1 attorney to represent themselves collectively.
-
Power of Attorney is a formal appointment of an attorney/agent
o alternatively can be executed via O/D
o only individual human beings can be attorneys (not law firms!)
o inventors can list up to 10 individual attorney names on each POA sheet OR
inventors can list the attorneys by Customer Number (don’t list both names &
Customer Numbers)
o there must only be one attorney of record that the PTO will communicate with
-
Multiple inventors can pick their own individual attorneys, and each attorney may
sign some forms (e.g.: petitions)—but in the end only the attorney of record has to
actually submit things to the PTO.
E.g.: If you cannot communicate with client for some reason, the POA at the PTO means that
you CANNOT act w/o instructions from your client (unlike in other legal fields where you can).
As a patent attorney you can only file a continuation or ask for a Suspension of Prosecution in
order to preserve your client’s rights.
Attorney’s Duties:
- The attorney/agent can only sign what he’s authorized to sign
-
Attorneys cannot file any O/D w/o the inventors having reviewed it and having
personal knowledge about what’s in it (among the other requirements – [MPEP 602]
-
Attorneys don't have to read every document but do have to know that what they’re
about to sign & submit is indeed accurate—the contents cannot be a mystery to him
[CFR 10.18]
-
Duty to clients:
o Attorneys must keep their clients informed about the case!
o Attorneys cannot impose their views on how the app should proceed—they
can only advise/inform and take the client’s instructions.
o Attorney must disclose to client
 anything that may affect whether they should hire you (you’re your
competence, conflicts of interest, etc.)
 whether they represent him or his employer
-
Duty of reasonable inquiry: Attorneys must make reasonable (not extreme) inquiry
about any important information that the client tells them
-
Duty to snitch: Attorneys must disclose whether their co-workers are doing any
unethical conduct that violates the state rules
“Verified Statement” means someone w/ knowledge of the facts is affirming what is being
signed.
An “Oath” is administered by notary or judicial official. A “Declaration” is signed under penalty
of perjury and imprisonment.
Representative Capacity RULE:
IF a practitioner submits a paper to the PTO w/ his registration number on behalf of an app 
THEN he is acting in a representative capacity
- “Representative capacity” means the attorney is not the “attorney of record” but does
have the authority to sign something on behalf of the registered attorney.
Revoking an Attorney:
- Revoking an attorney can happen at any time for any reason—unless the attorney also
owns some part of the app!
-
Assignee can revoke the POA that was originally signed by the original applicant.
-
Merely assigning the app to a new assignee doesn’t revoke the POA.
o Remember, CIPs must get a new assignment.
-
IF you submit a Petition for revoking an attorney, AND Pay a fee  THEN you can
instantly revoke an attorney (don't need Director’s approval)
Withdrawing Representation: [37 CFR 10.40]
IF the attorney wants to withdraw
-
(i) attorney must give reasonable notice to client before the response period to the last
Action expires (e.g.: 30 days remaining in the response period), AND
o Attorney can extend the response period under [37 CFR 1.136(a)] if
necessary
-
(ii) attorney must deliver all papers to client that he’s entitled to, AND
-
(iii) attorney must notify the client of anything that’s due and upcoming, AND
-
(iv) the Director approves of the withdrawal request
 THEN the attorney can withdraw representation
Death/Unavailability/Insanity of Inventor:
*Even if the inventor is dead/insane, the PTO may still give a Notice of Allowance to an app*
Death of Inventor:
*If an inventor dies, you don’t necessarily have to get a new O/D.*
IF the sole inventor is dead  THEN the inventor’s POA is also dead and you have to get a new
one from executors, heirs, assignees, or estate administrators
- The legal rep can sign the O/D on the dead inventor’s behalf.
IF one inventor is dead BUT the co-inventor is still alive with the POA  THEN the POA still
remains in effect.
Legal Representative status:
IF a person:
- has proof of his legal representative authority as asserted in the O/D, AND
- provides his citizenship info, AND
- provides his Mailing Address,
- provides his Residence Address
 THEN that person can be a dead inventor’s legal representative.
- A legal representative can execute the O/D on the inventor’s behalf
Or, the courts can also appoint a legal representative for a dead inventor.
Hostile/Unavailable Inventor: [CFR 1.47(a) and (b)]:
- [CFR 1.47(a)] IF an inventor is hostile/unavailable AND there is a co-inventor
 THEN
o the co-inventor can sign the O/D, AND
o the co-inventor must file a Petition explaining the reasons for doing so, AND
o the co-inventor must give the address of the hostile/unavailable inventor,
AND
o pay the fee.
-
[CFR 1.47(b)] IF an inventor is hostile/unavailable AND there is no co-inventor,
 THEN the someone w/ sufficient proprietary interest OR someone who’s been
assigned/obligated to be assigned the app
o can execute & file the O/D
o must file a Petition explaining the reasons for doing so
o must prove that filing the app is necessary in order to preserve the parties’
rights or prevent him from suffering irreparable injury
o must pay a Fee
o must give last known address of the hostile/unavailable inventor
If there is a hostile inventor leaving it blank is like a signature if you explain why it’s blank (?)
Assignee’s Rights [37 CFR 3.71-73]
-
Assignee has right to revoke POA
Assignee has right to grant POA to other attorneys
Assignee can exclude even the inventors to access the file
Assignee can disavow assignment
To establish assignee status, the assignee must establish title OR the assignee must
refer to a recorded assignment (see [MPEP 302], [USC 261])
Note: You can never tell the PTO to do something immediately
[MPEP 500] Receipt & Handling of Mail/Papers by PTO
* This is all about exceptions! You can do everything, except…*
[MPEP 502] Communicating w/ the PTO
-
(1) FAX: You can fax everything to the PTO except:
o new patent apps (b/c of time zone problems)
o certified documents
o any color drawings
o re-exam requests
o I.A.s
o copy of I.A. and national stage Fee
o judge’s orders
o correspondence about PTO disciplinary proceedings (Registration to Practice)
o correspondence made during Interference (including all Interference papers and
those that were delivered by hand)
o Secrecy Order papers
*Note: You can fax CPA [1.53(d)] design apps (b/c they only have B&W diagrams!)*
o IFW:
 Faxed documents must be go to a single location
 The filing date of faxed documents is whenever the PTO receives it in
their time zone—unless it comes w/ a Fax Transmission Certification from
the sender’s time zone (e.g.: Hawaii faxing)
*Note: Using a Fax Transmission Certificate to fax CPA [1.53(d)] design apps is ineffective—
the date that counts is the date the PTO receives the last page of the CPA design app at their end*
-
(2) HAND DELIVERY: Hand delivered documents must be sent to a single location
*Note: Faxed and hand-carried documents have to be sent to a central location via EFS. *
-
(3) INTERNET COMMUNICATIONS:
o Emailing the examiner is okay if applicant is fine w/ the lack of security—PTO
will never initiate an email correspondence
o Office Actions or things that require original signatures cannot be emailed.
Signature Requirements:
-
Can be handwritten
Can be a s/signature (using a name or code)
o E.g.: “/S/ Registration No.”
Can be a EFS character-coded signature (using English/Arabic numerals)
EFS-WEB:
-
IF you get a PTO Customer No. and a Digital Certificate  THEN you can use EFS to
file:
o New Utility apps
o Biosequence listings
o Pre-grant publications
-
Exceptions: You cannot use EFS to file
o Re-exam apps
o Re-issue apps
o Plant apps
*Note: Use either FAX or EFS or MAIL method to send something—not a combo!*
[MPEP 503] Filing Date & Filing Receipt
-
IF you get a Filing Date  THEN you cannot get your application back (you can only
abandon it or get it issued)
-
You may get a Filing Date once you submit the bare minimum requirements, but you
won’t get a Filing Receipt until the app is complete (i.e.: SCD & FOT are both submitted)
o PTO may send you a routine Notice of Missing Parts if your app meets the
minimum threshold but is still lacking something
[MPEP 506] Incomplete Apps
-
IF non-provisional app is incomplete in any way  THEN PTO will send a Notice of
Missing Parts and Notice of Incomplete App
o E.g.: If you submit a SCD but no FOT then you’ll get this.
-
CPA can be filed only when the parent is complete.
o When filing a CPA (CPAs abandon the parent) and there is already a Notice of
Missing Parts for the parent  THEN the parent becomes abandoned and the
CPA gets rejected.
-
Notice of Missing Parts has an extendable 2-month period to response.
Notice of Incomplete App means something substantive is missing but you still have your
Filing Date
o E.g.: You send 10 drawings but don’t label them.
[MPEP 509] Payment of Fees:
Refunds:
IF you overpay  THEN you have maximum 2 years afterwards to ask for & get a refund
Things you can do for free:
You don’t need to pay Fee for:
-
filing a Protest
filing a Petition to Make Special—for illness, environment, energy, age reasons only!
accessing issued, published, or certain abandoned files
filing a timely response to O.A. (~3 mo.) or Restriction Requirement (~1 mo.)
filing a timely IDS
requesting an interview
filing a Certificate of Correction—for PTO mess-ups only
filing a Supp O/D [MPEP 600]
filing a Petition Requesting Withdrawal of an Incorrect Holding of Abandonment
filing a comment in response to examiner’s reasons for allowance
filing a Citation of Prior Art [35 USC 301] [MPEP 2200]
Petition Fees:
-
Mundane petition fees (e.g.: petition to correct inventorship)
Intermediate petition fees (e.g.: petition to make special)
Exotic petition fees (e.g.: petition to suspend Rules)
Deposit Accounts w/ the PTO:
-
-
You must authorize the PTO to charge your deposit account, and also to put refunds into
it—this is a failsafe for those instances where you didn’t pay enough for something, or if
you pay too much for something
IF you don’t have enough money in the account to pay something  THEN your app
will get abandoned or you’ll have to get an extension
What makes up a Filing Fee:
-
Basic fee for filing, searching, & examination (you get a partial refund if app is
abandoned) PLUS
o Surcharges for excessive independent claims (if more than 3)
o Surcharges for excessive dependent claims (if more than 20)
o Surcharges for each MDC (an MDC is counted for each claim that it refers to)
o Surcharges for large apps (S & D more than 100 pgs)
o Surcharges for late filing of O/D
-
IF you make a single lump payment of several fees all at once  THEN you must
itemize what you’re paying exactly
Paying by Credit Card:
-
You can use a credit card for single app Fee w/ a special Credit Card Payment Form in
order to prevent the credit info from being published on the app
[MPEP 509.02] Small Entities
Who’s eligible for Small Entity status:
-
IF you are a:
o Independent inventor who hasn’t assigned/granted/conveyed/licensed any rights
to his patent to someone who’s not a small entity, OR
 E.g.: Even if one of the inventors in the group does this, it will invalidate
the entire group of inventors from getting Small Entity Status
o An IRS-registered non-profit organization (could also be an accredited
university in US or abroad), OR
o A small business (defined by Small Business Administration) that has less than
500 employees (including all types of employees—part-time, temporary, affiliated
etc.), AND hasn’t assigned/granted/conveyed/licensed any rights to their patent
to someone who’s not a small entity
 Number of employees = Average # of employees receiving pay in last year
 THEN you are qualified for Small Entity status
How to assert Small Entity status:
-
By having a registered practitioner, inventor, assignee, say so OR
By paying a Small Entity-level Fee to assert that you’re a Small Entity
Paying a Small Entity-level fee in a continuing app confirms that Small Entity status was
asserted in the parent (remember, some parents are abandoned when filing the child!).
- Either way, you must make some assertion of Small Entity status in your continuation,
CIP, divisional, CPA, and reissue apps.*
- You only have to assert Small Entity status once in an app, unless that status changes and
then changes back.
Change in Small Entity status:
-
If Small Entity status changes during prosecution, it doesn’t matter—you have to inform
& assert to the PTO the status change, and pay the next fees accordingly
-
Small Entities pay half the Fee for most things except:
o Full price for Petition and processing fees
o Full price for document supply fees
o Full price for Certification of Correction fees for applicant’s mistakes (but still
free for PTO mistakes)
o Full price for re-exam requests
o Full price for International PCT app fees
Exceptions to Small Entity fees:
You cannot pay Small Entity fee amounts for:
-
Petition and processing fees (but revival fees can be paid as Small Entity)
Documents supplied fees
Certificate of Correction fees if you made the mistake (always free if PTO messed up)
Re-examination request fees
Miscellaneous fees
International PCT application fees
[MPEP 512] Notice of Appeal & Subsequent Dates
The date the Notice of Appeal is received by the PTO is the date that’s used to calculate when
the Appeal Brief is due—regardless of mailing method used.
[MPEP 512] Certificate of Mailing
-
Certificate of Mailing (CoM) states the date it was dropped off at the Post Office—this
can be the Filing Date in some cases as long as the CoM is attached to the actual
documents being sent.
-
You cannot use a Certificate of Mailing for:
o Filing new apps under [CFR 1.53(b) or (d)]—including continuations, CIPs, and
divisionals
o Filing Interference papers that are supposed to be hand-delivered (other
Interference papers can be mailed via CoM)
o Filing agreements that settle Interferences
o Filing any PCT documents
[MPEP 513] Express Mailing
-
Express Mailing makes the “Date-In” the date you received the Express Mail mailing
label No. from the Post Office when you went to deliver your papers
o As long as the Post Office is open that day, you can get an Express Mail Label #
-
“Date-In” can be any day of the calendar, including holidays or weekends
-
Must be “Post Office to Addressee”
-
Must have an Express Mail mailing label # AND/OR Certificate of Mailing
*Note: IF you fail to follow Certificate of Mailing or Express Mailing procedures  THEN
PTO will use the date they receive the document as the Filing Date. *
Mail Stops are created for emergency situations where mail is being delivered slowly (e.g.:
hurricane, disaster, strike, etc.)
Type of Document
CFR 1.53(d)
Type of
Transmission
Fax
CFR 1.53(b)
Mail
Date it was
received by PTO
Date it was
received by PTO
Date PTO
received the
document for
CPA
Date it was
received by PTO
Date it was
received by PTO
“Date-In” date
Date it was
received by PTO
“Date-In” date
Date it was
received by PTO
Certificate of
Mailing
Express Mail
Fed Ex
Not applicable
Notice of Appeal
Amendment
Date it was sent,
if using
Certificate of
Transmission
Date it was
received by PTO
Date it was
deposited in Post
Office
“Date-In” date
Date it was
received by PTO
Date it was sent
if using
Certificate of
Transmission
Date it was
received by PTO
Date it was
deposited in Post
Office
“Date-In” date
Date it was
received by PTO
E.g.: On October 1, 2002, a patent attorney registered to practice before the USPTO filed an
international application on behalf of her client in the United States Receiving Office, designating a
number of member states, including the United States. Between October 1, 2002 and April 1, 2005,
the patent attorney paid all requisite fees and complied with all other requirements to maintain the
pendency of the international application. On April 1, 2005, the inventor instructed the patent
attorney to take the steps necessary to have the international application enter the national stage in
the USPTO. In response to that instruction, the patent attorney transmitted a letter to the USPTO
requesting the USPTO to charge the attorney’s deposit account (which had more than adequate
funds) to cover the requisite filing fee to enter the national stage. The attorney’s letter was
transmitted to the USPTO in two ways. First, it was transmitted via facsimile shortly before noon on
April 1, 2005, along with a certificate signed by the person who transmitted the letter, stating the
date of transmission. In addition, the letter was sent to the USPTO via first class U.S. Mail, shortly
after noon on April 1, 2005, along with a certificate signed by the person who mailed the letter,
stating the date of mailing. The facsimile transmission was received at the USPTO at noon on April
1, 2005. The mailed copy was received at the USPTO on April 5, 2005. Which of the following
statements is most correct?
(A) The international application entered the national stage in the USPTO on April 1, 2005, because
of the faxed letter and certificate of transmission.
(B) The International Application effectively entered the national stage in the USPTO on April 1,
2005, because of the mailed letter and certificate of mailing.
(C) Both A. and B. are correct.
(D) The International Application went abandoned at midnight on April 1, 2005, because of the
applicant’s failure to file a copy of the oath or declaration required by 37 CFR §1.371(c)(4) to enter
the national stage in the USPTO.
(E) The International Application went abandoned at midnight on April 1, 2005, because of the
applicant’s failure to file the filing fee required to enter the national stage in the USPTO. You cannot
fax something to file an I.A. or a copy of an I.A. + national stage Fee to enter the National
Stage.
The correct answer is (E). See 37 CFR §§1.6(d) and 1.8(a)(2)(i)(F), and MPEP §1893.01(a)(1).
[MPEP 600] – Parts, Form, & Content of Apps
*At least 10-12 questions from this chapter!*
O/D:
Oath is sworn to be true before a notary or its equivalent (must be administered by notary, judge,
or some other official)
Declaration is a statement under the threat of punishment and/or invalidation of the patent (this
doesn’t have to be administered, so most applicants do this instead).
Who owes this Duty to Disclose?
-
Everyone in the chain of contact with communication with the PTO owes this duty
(including inventors, owners, attorneys, overseas agents, secretaries, etc.)—but PTO only
wants to actually hear from the Attorney/Agent of Record.
o Everybody else is supposed to discharge their Duty to Disclose to this person
when they communicate with that agent/attorney.
O/D Requirements [MPEP 602]:
-
Must be signed by inventors—attorneys/agents cannot sign it for them!!!
Doesn’t have to be an original copy—you can submit just copies of O/D
Doesn’t have to be submitted in order to get a Filing Date (O/D can be submitted later)
O/D must refer to Spec and Claims that it’s attached to
O/D Requirements for Inventor:
o Inventor must believe themselves to be the true, original, and first inventors
o Inventors must have reviewed and understood the contents of the app
o Inventors must understand the language of the O/D—it doesn’t necessarily have
to be English
 Non-English O/Ds must have a T and a statement saying the T is accurate
o Inventors must say they understand they have a Duty to Disclose and that they’ve
disclosed all info that’s relevant to patentability
o Inventors must state their citizenship, residence, and Post Office address
Names of Inventors in O/D [MPEP 605.04(b)]:
- Inventors must disclose their family names and surnames (last names)
o Inventors have to notify the PTO if they change their names
- Inventors can change the order of names that appear on the patent if they file a [CFR
1.182] petition.
Supp O/D Requirements [MPEP 603]:
-
Original O/D cannot be amended—only replaced by a Supp O/D
Supp O/D doesn’t have to be executed by all of the original inventors
o E.g.: one of the inventor is hostile/unavailable [CFR 1.47]
Filing a Supp O/D is a right that all inventors have—therefore there’s no Fee to file it
Supp O/D can be filed even after the patent has been allowed
Use a Supp O/D whenever you claim something new/different in an app (as long as that
claim is supported by the original disclosure, b/c you can never add New Matter)
o For [CFR 1.53(b) or (d)] continuing apps, the original O/Ds of the parent can be
used—you don’t necessarily have to file a Supp O/D for the continuing app.
E.g.: You add new claims for things that are slightly different from the material that was
originally submitted. You need a Supp O/D to ensure that these new claims have been
acknowledged by the inventors. The new claims must already be from the original disclosure.
E.g.: Examiner feels, b/c there have been new claims added during prosecution, that you need a
new O/D. He can force you to get a new one—you can choose to file a Supp O/D. If the
inventors to the new claims are unavailable then you may be able to get the requirement to file a
Supp O/D waived.
Altering an App before Filing [CFR 1.52]:
-
Apps cannot be altered by anyone after O/D is executed.
-
Inventor’s attorney/agent [MPEP 605]
o Cannot sign the O/D on the inventor’s behalf
o Cannot change the app immediately before/after the O/D is executed
o Can file the app w/o an O/D
-
Before filing O/D or Power of Attorney, the applicant can change the correspondence
address to anything else (as long as he describes the recipient).
-
Amending an app before signing O/D:
o Before an O/D is executed, the app can be changed by hand w/ interlineations, as
long as these are initialed and dated by the writer
-
Amending an app w/ amendments attached to it on the same day:
o IF Prelim Amendments are submitted w/ an app AND before Fees have been
calculated AND the purpose of the amendment is only to remove some claims 
THEN you can submit the amendment before paying the Filing Fee and the
amendment will be counted as being part of the original app
-
Amending an app w/ amendments that aren’t attached to it on same day
o IF Prelim Amendments are submitted later than an app but on the same day, AND
the amendment is referred to in the original O/D  THEN the Prelim
Amendments are counted as being part of the original app.
E.g.: You need to add new claims (from the same disclosure) to an app that already has an
executed O/D and that has to be filed today. If you add the new claims but use the original O/D,
you are ethically violating the Rules. Instead, you should add the new claims and submit the app
w/o an O/D under [CFR 1.53(b) or (d)], OR you can add the new claims and submit a faxed
copy of a new O/D (b/c Supp O/D doesn’t have to be original)
Inventorship:
- Inventorship is whoever conceived a claim—it doesn’t matter how many claims are there.
“Invention” is complete after Conception + RTP VS. “Inventorship” is complete w/
Conception (a clear and complete idea of the invention)
-
Joint Inventors have to show some element of collaboration—they don’t have to
physically work together or even communicate
o [CFR 1.45] Joint inventors can apply for a patent together (unless one refuses to
do so, see [1.47]) even though they didn’t physically work together on it at the
same time, each made a different % of contribution, each contributed to different
claims
Notice of Omitted Items:
IF you submit a Spec and/or Drawing that’s missing a page:
 THEN
-
Your Filing Date is the date that you originally submitted the incomplete app, OR
o Unless you file a Petition that asks the PTO to give you the Filing Date of the day
you submit the omitted item.
o Unless you have some foreign priority [USC 119], domestic priority [USC 120],
divisional priority [USC 121], or prior app priority [USC 365] that allows you to
get the Filing Date of the day you submit the omitted item—as long as you
included that omitted item in your priority document [CFR 1.57].
 This is an effective “incorporation by reference.”
 It’s a good idea to always make your priority assertion (via noting it on the
Transmittal Sheet/Form) right away upfront when you file. This covers
your back when you accidentally leave out something—not when you
purposely leave out something.
-
The PTO will send a Notice of Omitted Items
o IF the omitted item makes the app fail the [112] requirements THEN it is
fatally defective
 If you don’t submit the omitted pages in time to satisfy [112], then the app
will be rejected for good!
 You may also need to submit the omitted pages in time to defeat any [102]
bars!
IF you get a Notice of Omitted Items:
 THEN you can either:
-
(1) Immediately submit the omitted pages, a Petition, Fee, a copy of the Notice (and if
necessary a Supplemental O/D) within no more than 2 mo. (not extendable!) and ask the
PTO to give you the Filing Date of the day you submit all this, OR
-
(2) Do nothing.
o If you do nothing, then you get the Filing Date of the day you submitted the
original app.
 This is a good option if getting that later Filing Date would mean being
defeated by a prior art! You’ll be successful in this route only if you can
show that what was missing wasn’t that important(?).
o If you do nothing, you still have to submit a Prelim Amendment that renumbers
the pages in the original app to account for the missing pages, cleans up the
sentence flow, etc.
o You can also amend the Spec and Drawings by submitting amendments that use
material from those omitted pages—as long as that material is not New Matter!
*Note: IF the app has what can be construed as a Written Description, at least one Drawing, and
(in nonprovisional apps) at least one claim—but missing a page from somewhere  THEN the
PTO will give you the Filing Date and send you the Notice of Omitted Items.
IF the app doesn’t have what can be construed as a written description  THEN the PTO will
not give you a Filing Date and instead send you a straight Notice of Incomplete App.*
Notice of Omitted Items
vs.
Notice of Missing Parts
Is sent when there’s a page missing from the
Is sent if you’ve sent enough to get a Filing
originally filed S or D—your rights are in
Date but still have some technical deficiencies
jeopardy if this happens!
If you don’t respond to this, then the Filing
You must respond to this by submitting w/e is
Date is the day you originally submitted the
missing (i.e.: FOT)
app w/ the omissions
If you keep the original Filing Date, your app
If you get this, there is still no way to change
may be fatally defective.
your original Filing Date
If you respond to this, you can change your
If you get this, there is still no way to change
Filing Date to the day you submit the missing
your original Filing Date
info
It’s bad news!
It’s normal news.
Claims [MPEP 608.01]:
-
Claims cannot be broader than the Spec—w/e you claim must be in the original
disclosure.
-
IF your claims are “Intended use coupled w/ hoped-for result”  THEN you must have
somewhere in between that an actual invention.
o E.g.: “A chain saw fuel (intended use) comprising shampoo and gasoline mixed
so that no pollution comes out (hoped-for result) of the saw upon activation of the
motor.”
 This is a bad claim b/c it doesn’t say HOW this thing is supposed to work.
Types of claims:
- Apparatus claims are a combination of elements that make something
- Method claims are a combination of steps
o Method claims must be written in present tense (e.g.: “-ing” clauses)
- Device claims are a combination of other inventions/things that make something
- Means-plus-function claims claim an apparatus by describing what it does and also
claims its equivalents
o E.g.: You claim a rivet in means-plus-function claim format. You are basically
also claiming anything equivalent to a rivet. Therefore, if the prior art is “bolt and
nut” or “pin,” they will anticipate your means-plus-function claim
o E.g.: “An apparatus for popping popcorn comprising: … AND means for
applying heat…”
o E.g.: “Salt and pepper shakers comprising: a first container means made from
polyol for dispensing salt, said first container means being a head portion of an
animal figuring, and a second container means made from polyol for dispensing
pepper, said second container means being a body portion of an animal figurine,
said first container means being adapted to be placed atop second container means
when resting on a surface.”
Punctuation of Claims:
- Preamble (e.g.: “A table…”)
- Transition (e.g.: “Comprising…” means “these elements” plus equivalents); (e.g.:
“Consisting…” means “consisting only of” but nothing more); (e.g.: “Consisting
essentially of…” is used in pharma claims and is both open and closed)
o You must identify the minimum standard of infringement.
- Body
o Each limitation should be separated by semicolon
o Last limitation should have “AND” at the end.
Independent vs. Dependent claims [MPEP 608.01(n)]
- Dependent claims have each and every limitation (and faults) of the claim they’re
depending on
MDC:
-
-
-
Must depend on more than 1 claim
Cannot depend on another MDC
o E.g.: “Claim 3 depending on any of (this is the same thing as “and”) claims 1 and
2…”
Only acceptable MDC preambles are listed in [MPEP 608.01(n)]
Proper MDCs must depend on more than one claims using “or.”
Improper MDCs are counted as 1 claim VS. Proper MDC claims are counted for each
claim they depend on.
MDCs can be improper for (i) directly/indirectly depending on a prior MDC, or (ii) for
not being in the alternative “or” format.
o Any claim that depends on an improper MDC will also be considered improper
and counted as being one dependant claim.
Markush claims:
Markush claims are used when there is no generic term to describe a list of elements so you use a
“common property” that’s mainly responsible.
- E.g.: “Chosen from the group consisting of X, Y, and Z”
- E.g.: “Wherein said material is X, Y, or Z…”
- See [MPEP 2173.05(h)] for proper Markush group claim format
Jepson claims use an old preamble (describing the prior art) and a new body that lists a new
improvement
- E.g.: “In a device for treating work pieces having X, Y, Z… (old preamble/prior art), the
improvement comprising (transition) means for cooling the work pieces (new body).
Incorporation of Stuff in Claims by Reference [MPEP 608.01(p)] [CFR 1.57]:
-
You can only incorporate by reference essential material from:
o Issued US patents, OR
o Published US apps
-
You cannot incorporate by reference essential material from:
o Foreign patents/apps
o Any publication
o Something that already incorporates by reference something else (no double
incorporation)
-
You can only incorporate essential material (material that’s necessary to comply with
[112]) VS. You can only incorporate non-essential material from publications or foreign
patents.
-
Must have the words “incorporated” and “reference”
-
IF material is ignored/omitted in entirety but it is found in the foreign priority docs or US
priority docs  THEN it is incorporating by reference.
Form/Completeness of Spec [MPEP 608.01(a)]:
-
All the stuff you must have in the description should follow (as a recommendation) [CFR
1.77]
Computer codes and DNA sequences that are longer than 300 characters must be
submitted via CD.
ADS sheet [CFR 1.76]:
-
This is like a cover sheet that
o Must list the applicant’s info
o Must list any priority claims
o Must list the Correspondence Address/Mailing Address
o Must list the invention’s classification
-
ADS Sheet can only be replaced, not amended
*Note: You can change the inventor’s address via Supp ADS w/o having to file a Supp O/D!*
Abstract [MPEP 608.01(b)]:
-
Disclosure in the abstract can be amended into the Spec
o E.g.: Claims will describe the therapy process, while the abstract will describe all
the other things that go into that therapy
Substitute Spec [CFR 1.125]:
-
You can submit a Substitute Spec at any time before the Issue Fee is paid.
-
Must contain a statement that says “this Substitute Spec doesn’t contain New Matter.”
-
Must contain a marked up copy of the Substitute Spec showing all the changes made
-
Cannot submit a Substitute Spec for a re-exam or re-issue app
-
You don’t have to bracket the additions/deletions in the Substitute Spec
*Note: You usually use a Substitute Spec if the T of the original Spec in the app is bad.*
Drawings [MPEP 608.02]:
-
Can be sent in B&W
o You should identify the app’s information on the top corner of each Drawing
-
Can be in color (if there’s no other choice) [CFR 1.84]
o Must pay a Special Fee for submitting color drawings
o Must submit 3 copies of color drawings together
o Must contain a statement that says the colored drawings will be available upon
request
o Cannot submit color photos for design apps
-
Two types of drawings:
o Publishable drawings—needed in order to get patent published
o Formal drawings—needed in order to get patent issued
IDS [MPEP 609]:
-
Person who’s filing the IDS must fulfill two duties (including Duty to Disclose):
o Duty of Candor [CFR 1.56]
o Duty of Good Faith [CFR 1.56]
-
Three time frames for filing an IDS [CFR 1.97]
o 3 months after filing OR before First Office Action = just hand in IDS
o After first O.A. AND before Final Action = just hand in IDS + Fee OR a
statement explaining why it’s late
o After Final Action = close of production AND before paying Issue Fee = just
hand in IDS + Fee + AND give statement explaining why it’s late
 These time frames account for holidays/weekends
 The “statement” must say either:
 Each item being disclosed was cited once for the first time in
communication w/ foreign patent office, OR
 Each item being disclosed was never cited at all w/ the foreign
patent office AND no one who had a Duty to Disclose knew about
the item back then, either
6m
5m
4m
3m
2m
1m
IDS Filing
-
Minimum contents of IDS (“List it, Copy it, but don’t have to Translate it”)
o List of individual items submitted w/ patents identified by patentee, patent
number, and issue date. Identify the publications by author, title, page number,
and place of publication
o A copy of every patent, publication, or other info being submitted (including cited
US pending apps that aren’t in the IFW)
o Translation, if available (or a short explanation of everything important that’s not
in English)
*Note: IDS filing times cannot be extended. Don’t even petition to extend the time—just hand it
in late if you have to!*
Other IDS notes:
-
IF the attorney/agent has info about the app through means that aren’t associated with the
current app  THEN he must still disclose it to the PTO.
-
IF the PTO discovers that someone has breached their Duty to Disclose before/after the
patent issues  THEN the PTO can refuse/invalidate your patent (even if it wasn’t
inventor, attorney, or assignee’s fault)
o IF you discover some relevant prior art after you already have your patent (after
Allowance and Issue Fee payment) that should’ve been in your IDS  THEN
you can either withdraw your app OR try to preserve some rights via a
continuation).
Requirement for Information [MPEP 704]:
-
Sometimes an examiner will send a Request for Info if they need to understand something
in the app from those who have a Duty of Candor/Good Faith [CFR 1.56] or the
assignees.
-
IF you get a Request for Info  THEN you must respond to it, OR say that the info is
“not readily available” (but everyone involved must agree to this) [CFR 1.136]
o This duty to respond to a Request for Info is different than the [CFR 1.56] Duty
of Candor/Good Faith.
o Not responding to a Request for Info doesn’t necessarily mean the patent app will
be rejected.
-
A Request for Info can be in the form of an interrogatory.
o E.g.: “Did the inventor do a search?” “What things did the inventor rely on?”
Claim Drafting Exercise:
A table, comprising of:
- A flat surface unit composed of wood, wherein said flat surface unit is in the shape of a
parallelogram having an upper end and a lower end
- A set of at least 4 vertical legs having a bottom end and a top end wherein said top ends
of vertical legs are connected to the same plane of the corners of said flat surface unit
- Wherein said bottom ends of said vertical legs rest on the ground thereby supporting the
weight of said flat surface unit
[MPEP 700]
***All the reasons you won’t get a patent. ***
Legal/Procedural problem ([101, 102, 103, 112]) VS. not having responded in time
Objection/Allowance/Rejection of Claims [MPEP 706]
IF you get a Rejection or Objection  THEN you must respond to it fully and completely (you
cannot address some of the issues and defer others!)
-
Rejections – to a claim means that it doesn’t satisfy the statutory requirements
o Re-send the stuff & ask for reconsideration  appeal to BPAI
-
Objections – to a claim means that it doesn’t satisfy the PTO Rules [CFR] but might or
might not satisfy the statutory requirements
o Re-send the stuff & ask for reconsideration  petition to Commissioner
-
Allowance – is given when a claim satisfies statutory requirements AND non-statutory
(procedural) requirements
-
Restriction Practice – is when the examiner directs applicant to split up claims
o ask for reconsideration (cannot be appealed!)  petition to Commissioner
[102] Rejections:
METHOD:
- (1) Determine the appropriate [102] date of the alleged prior art:
o Publication or other date? [102(a)], [102(b)]
o Earliest effective filing date? [102(e)]
o Invention date? [102(g)]
- (2) Determine the appropriate reference date of the inventor’s application at issue:
o Invention date? [102(a)], [102(e)], [102(g)]
o Filing date? [102(b)]
- (3) Compare the two dates and see which is earlier.
IF the inventor’s reference date beats the alleged prior art date  THEN the PTO wrongfully
rejected the inventor’s application.
IF every element of a claim is found in the prior art  THEN the prior art anticipates the claim.
Overcoming a Rejection:
- Swearing back is antedating your invention by showing prior inventive activity AND
diligence using affidavits [CFR 1.131]
o Must be done on a claim-by-claim basis (b/c each claim can have its own EEF)
-
Amend the claims w/ more limitations so that it claims something different than the prior
art.
-
Cancel claims
-
Argue that the examiner is wrong b/c the alleged “prior art” claim doesn’t teach every
element of current claim.
-
Argue that the prior art is not acceptable as prior art.
***METHOD: If a question says it was a “proper” Rejection, then the applicant’s response
cannot be cannot be to argue against it.***
NAFTA & WTO dates [MPEP 715.07(c)]
-
NAFTA (Dec. 8, 1993) date allows inventive activities done in Canada & Mexico to be
used by the applicant to overcome prior art during [USC 102(g)] Interference
proceedings and also to overcome [102(a) or (e)] prior art.
-
WTO (Jan. 1, 1996) date allows inventive activities done in WTO countries to be used
by the applicant to overcome prior art during [USC 102(g)] Interference proceedings and
also to overcome [102(a) or (e)] prior art.
o The date the country joined the WTO is the barrier date
-
You cannot use these inventive activities to change the date of the alleged prior art—
only the current inventor can use such activities to overcome existing [102(a) or (e)]
prior art!
*Note: Apply [USC 102] sections methodically. If the alleged prior art doesn’t fit into one of the
categories, then it is NOT 102 prior art! Also, FFL issues might arise. ***
*Note: Some prior art can be more than 1 type of prior art at the same time.*
*Note: Foreign “activity” NEVER BECOMES prior art—only foreign documents, foreign
patents, and foreign publications can ever become prior art. *
[102(a)] [MPEP 2132]:
*Note: This is a Date of Invention comparison (Date of Invention could be Filing Date or
Conception + RTP date) *
IF  3P  Knew/Used Invention  Before date of current invention  in the US
IF  3P  Patented/Described in a Printed Pub  Before date of current invention 
anywhere
-
“Knew/Used Invention”
o means the general public knew of invention
o means the general public knew how it works—this is different than just a 3P
knowing how the invention works!
-
“Knew/Used Invention”
o means IF the knowledge was present in the US at some point in time  THEN it
is [102(a)] prior art even if everyone w/ that knowledge in the US died off or w/e.
-
“Before date of Current Invention”
o means the current inventor’s date could be his Filing Date, his Date of Invention,
or his Date of Conception + RTP
*Note: The prior art must be provably done (there must be some evidence of it).*
[102(b)]
*Note: This is a Filing Date comparison—do NOT compare Date of Invention!*
IF  3P/inventor publicly used OR offered for sale/on-sale  more than 1 yr before current
invention Filing Date  in the US
IF  3P/inventor  patented OR described in a printed pub  more than 1 yr before current
invention Filing Date  anywhere
-
“Public use”
o Doesn’t mean that the general public has to know that the invention is being used
in front of them without restriction—this usually means the invention has to be
used in a commercial setting.
 E.g.: Using an invention in the stereo of a car or a Ferris Wheel motor that
nobody knows is actually there or working. This can still be [102(b)] prior
art.
o Even if the invention is “hidden,” if the applicant/3P puts a machine or article that
embodies the invention into public view more than 1 yr before Filing Date  then
that may be enough for a [102(b)] bar [MPEP 2133]
 E.g.: Displaying the invention to people in a lab or museum where only
scientists or wealthy patrons could see it, even though they didn’t
understand how it worked or that it was an invention, is still “public use”
under [102(b)] (Blaisdall, Kuklo).
o Mere public “knowledge” of the invention isn’t enough to get a [102(b)] rejection
(public knowledge may be enough to get a [102(a)] bar, though). There must be
public use or sale to get a [102(b)] bar [MPEP 2133]
o There is no [102(b)] “public use” if the invention is being used in an area where
there is a reasonable expectation of privacy or if the invention is being used just
for the displayer’s enjoyment [MPEP 2133]
 It doesn’t matter whether or not there was a “Confidentiality Agreement”
o There can be a [102(b)] “public use” bar if the inventor lets a 3P use the invention
w/o any restriction [MPEP 2133]
o There can be a [102(b)] “public use” bar if a 3P uses the invention in a way that
sufficiently inform the public of the invention or a competitor could reasonably
ascertain the invention [MPEP 2133]
o “Public Use” EXCEPTION: Public use is okay only if it was Experimental Use—
experimental use means using it primarily for perfecting the invention in order to
make it work the way it should.
 Experimental use ends w/ RTP.
 Experimental use is determined by several factors [MPEP 2133.03(e)(4)]
-
“Patented”
o Means if the prior art is a patent, then it becomes [USC 102(b)] prior art the
moment it issues—don’t ever worry about whether or not it has been published
(b/c in some countries the patents are published long after they are issued).
-
“Printed Publication”
o Means the document must be open to the interested public and reasonably
catalogued so people could find it normally (e.g.: single thesis well-organized in a
library case)
-
“On sale”
o Means the invention itself is capable of being sold (i.e.: the invention is ready for
patenting—the claim is capable of enablement).
o “Syndicating the rights to patent” doesn’t mean selling the invention—[102(b)]
prior art must be selling the actual thing.
-
“Offer for sale”
o Doesn’t mean the invention has to be actually sold—just offered.
[102(c)]
IF  inventor  abandons the same invention  anytime before current invention anywhere
-
“Abandons”
o means the inventor must have publicly disparaged his own invention.
o E.g.: Inventor can abandon by saying in peer-reviewed articles that he’s invented
something that is better than what he invented before.
-
Abandoning an invention (requires more than passage of time) VS. Abandoning an
application (requires passage of time, or failure to respond to an Action)
[102(d)]
*Note: This is a Filing Date comparison—don’t compare inventive activity!*
IF  inventor (same applicant/assignee/attorney)  filed a foreign app on the same subject
matter  more than 1 yr before current invention Filing Date (or more than 6 mo for design
apps)  AND this foreign app issued before the inventor filed in the US for the current
invention
- If the foreign app didn’t issue before the inventor filed in the US, then it is not a [102(d)]
bar!
[102(e)]
Three types of possible [102(e)] prior art:
-
-
US patent [102(e)(2)]
o The US patent must be granted
o The original US Filing Date (don’t consider its Foreign Filing Date!) is the
[102(e)] date
US published app [102(e)(1)]
o The original US Filing Date (don’t consider its Foreign Filing Date!) of the app is
the [102(e)] date
*Note: [102(e)] date may be different than [102(a) or (b)]. [102(e)] prior art can also be other
types of [102] prior art.*
*Note: Foreign apps (apps that are filed & issued in a foreign country) NEVER get a [102(e)]
date!! VS. I.A.’s (PCT apps that are filed in a foreign country but designate the US) do get a
[102(e)] Filing Date.*
-
IA (PCT) apps (or references to an IA by a US patent or US published app)
o Must be identified as an IA at the time of filing
o Must be filed in an IA Receiving Office (i.e.: one of the PCT countries)
o Must designate the US
o Must be published in English (if filed after AIPA)
 IF it’s filed on/after Nov. 29, 2000 (AIPA)  THEN the effective
[102(e)] date is the international Filing Date of this PCT app
 IF it’s filed before Nov. 29, 2000 (AIPA)  THEN the effective [102(e)]
date is the date the FOT arrived at the USPTO
 i.e.: Date that SCD & FOT is received by the PTO is the Filing
Date
*Note: IF the IA was filed before the AIPA date of Nov. 29, 2000  THEN it doesn’t matter
what language it was published in!*
o E.g.: P.A. is a US app that claims priority benefit from an IA that was filed before
the AIPA date of Nov. 29, 2000:
 When this US app publishes, its [102(e)] date is its actual US filing date
 When this US app issues, its [102(e)] date is the date the SCDFOT of the
IA arrived at the USPTO
o E.g.: P.A. is a reference (WIPO publication, US app, or US patent) that claims the
benefit of an IA (that was filed on/after the AIPA date of Nov. 29, 2000):
 The P.A.’s [102(e)] date is the IA filing date OR
 The P.A.’s [102(e)] date is the earliest US EEF.
o E.g.: P.A. is a reference (WIPO publication, US app, or US patent) that claims the
benefit of an IA (that was filed on/after the AIPA date of Nov. 29, 2000), and the
IA claims the benefit of an earlier US app:
 The P.A.’s [102(e)] date is the EEF of the parent US app
o E.g.: P.A. is a reference based on a continuation of an IA that was filed after the
AIPA date:
 The P.A.’s [102(e)] date is its EEF US date OR
 The P.A.’s [102(e)] date is the Int’l filing date
o E.g.: P.A. is a reference based on a continuation of an IA that was filed before the
AIPA date (publication language is irrelevant)
 The P.A.’s [102(e)] date is the EEF US date.
 IF this IA claimed benefit from an earlier US parent app, the P.A.’s
[102(e)] date is still the EEF US date of the above continuation.
*Note: [MPEP 706.02] flow chart for determining [102(e)] date of P.A.*
Before AIPA passed:
-
US patents can be 102(e) PA:
o Look for the earliest US filing (provisional or non provisional), OR
o Look for a calculated 102(e) date: (the date the SCDFOT appeared in the
USPTO of a US patent that stemmed from an IA which was filed before
AIPA and entered US National Stage—the date the SCDFOT were submitted
was when the US patent got a calculated 102(e) date).
After AIPA passed:
-
-
Patents and published apps can be 102(e) PA:
o Look when the earliest nonprovisional or provisional US filing for its 102(e)
date.
Published IA can also be 102(e) PA:
o Published IA, filed on or after AIPA, designates the US, and publishes in
English has the same effect as if it was a US application—the 102(e) date of
this thing is its IA filing date.
 Thereafter, if a US patent stems from that published IA, the US patent
also has the same 102(e) date as the published IA.
o If the IA doesn’t publish in English or meet the other requirements, it does
NOT have a 102(e) date and anything that stems from it also does NOT have
a 102(e) date—check to see if that PA has a 102(a) or (b) date instead.
E.g.: Suppose your company has several successive apps on the same subject matter. When
these apps start to publish, you create successive 102(e) hurdles for yourself. So instead you
should file these apps on the same day.
The key to understanding 102(e) date is to understand that the 102(e) date is the effective U.S.
filing date.
102(e) reference date of a U.S. patent, published U.S. patent application, or WIPO publication is
the “earliest effective U.S. filing date” of that document. If the document doesn’t have an
“earliest effective U.S. filing date”, then it does not have a 102(e) reference date.
An International Application (IA) can be considered part of the chain of the earliest effective
U.S. filing date IF:
1) the IA is Filed on or after November 29, 2000;
2) the WIPO publication is in English; and
3) the US is one of the designated countries
For US patents only, the National Stage Entry date for the purpose of [102(e)] analysis is
considered the earliest effective U.S. filing date if:
1) the IA is filed before November 29, 2000
2) The US is one of the designated countries
Otherwise, it should not be considered.
Note:
A foreign application filed under 35 USC §119(a)-(d) is never considered an earliest effective
U.S. filing date;
SUMMARY OF [102]:
*Note: [102(a)] is prior art’s Date of Invention vs. current invention’s Date of Invention.*
*Note: [102(b)] is prior art’s Date of Filing vs. current invention’s Date of Filing.*
*Note: [102(d)] is prior art’s Date of Filing vs. current invention’s Date of Filing.*
*Note: [102(e)] is prior art’s Date of Filing vs. current invention’s Date of Invention.*
*Note: [102(f)] is prior’s Date of Invention vs. current invention’s Date of Inventions.*
*Note: [102(g)] is prior art’s Date of Invention vs. current invention’s Date of Invention.*
Provisional Rejections:
- E.g.: IF the two apps disclose the same subject matter AND the two apps have a common
inventor/assignee (AND are filed within 1 year—otherwise it’d be a [102(b)] bar) 
THEN the PTO will provisionally reject the later one citing the earlier one as [102(e)]
prior art ([102(e)] is applied retroactively)
o This provisional 102(e) rejection can be overcome if the common
inventor/assignee/applicant argues, amends, or abandons + consolidates the two
apps.
VS.
Regular Rejection:
- IF the two apps disclose the same subject matter AND have no common
inventors/assignee (AND are filed within 1 year—otherwise it’d be a [102(b)] bar) 
THEN the PTO will not do a Provisional Rejection if the earlier app hasn’t published yet
(b/c doing so would violate the privacy laws of the apps) and instead do a regular
rejection of the later one under [102(e)] as soon as the first one issues/publishes. The later
inventor will just have to overcome the regular rejection by arguing or amending.
- IF the two apps are filed within 6 months of each other (or 3 months if they’re simple
subject matter) AND both claim the same invention AND there’s no common
inventor/assignee  THEN there might be an Interference.
- IF the two apps are filed more than 6 months apart AND both claim the same invention
AND have no common inventors/assignee  THEN the PTO will issue the one w/ the
earliest filing date and then reject the later one under [102(e)], even waiting out secrecy
orders if necessary.
E.g.: Kingly works for Mega Corp, makes a floor polish, and files an app. Meadow works for
Sonic Corp, makes a different floor polish, and files an app after Kingly. There can be no
Interference b/c the two inventions are only in the same subject matter but are not claiming the
same thing. There can be no provisional rejection b/c the two inventions don’t have a common
inventor/assignee. The PTO will instead let the first app publish and then reject the second app
under [102(e)]. The second app could still try to overcome this rejection by doing a Date of
Invention comparison under [102(g)].
[102(f)]:
You cannot get a patent if you didn’t invent it—just like [102(a)].
- Inventor must reveal where he invented and where the prior art ends (Duty of Disclosure)
o E.g.: Male invents a signaling device to save the Female. Female returns to US
and files an app on the signaling device. Female will be barred by [102(f)] b/c she
didn’t invent it.
o E.g.: Inventor goes to foreign country to steal a new tequila method, goes back to
US to patent the tequila method. Inventor will be barred by [102(f)] b/c he didn’t
invent it.
[102(g)]:
[102(g)(1)]
*Note: This is a Date of Invention comparison (Date of Invention can be Filing Date or
Conception + RTP date).*
*Note: “Reference discloses and claims the applicant’s invention” means [102(g)(1)] applies.
“Reference discloses but doesn’t claim the applicant’s invention” means [102(g)(1)] doesn’t
apply—usually means [102(e)] applies.*
IF  3P  in the context of Interference  provably made the same invention  AND the 3P
did not A/S/C it  anytime before current inventor’s Date of Invention  in the US
-
“Conception”
o means the idea is so clear that a PHOSITA can make/use the invention w/o
extensive experimentation—inventor doesn’t have to know that the invention will
work in order to do Conception.
-
“RTP”
o can be actually making an embodiment that has every element of the invention
and the embodiment does what it’s supposed to do (actual) or simply filing the
app (constructive).
-
“Abandoned”
o is different here than [102(c)] abandonment, b/c [102(g)] abandonment can be
inferred from conduct, w/o the inventor expressly acknowledging that he’s giving
up the invention—it could simply happen when the inventor fails to pursue or
delays filing his invention.
-
“Suppression”
o means the inventor held his invention from being disclosed to the public for any
reason.
-
“Conceal”
o means the inventor kept his invention secret until he heard that a competitor was
about to file for a similar invention
-
[102(g)(1)] analysis involves NAFTA and WTO inventive activity.
[102(g)(2)]
*Note: This is a Date of Invention comparison (Date of Invention can be Filing Date or
Conception + RTP date).*
IF  3P  outside the context of Interference  provably made the same invention  AND the
3P did not A/S/C it  anytime before current inventor’s Date of Invention  in the US
- This is the “First to Conceive, Last to RTP” situation where the diligence of the inventor
who’s last to RTP is considered.
- “Reasonable diligence”
o means the inventor who’s last to RTP did either affirmative acts or had acceptable
excuses for not doing RTP.
- After an Interference, the loser (or anyone else thereafter) cannot get a patent on even
obvious variations of the winner’s invention—meaning the winner of the Interference
cannot be challenged on the same invention after he’s won!
o The winner’s claim has become prior art for everyone else.
- [102(g)(2)] analysis involves NAFTA and WTO inventive activity.
*Note: Compare RTP to RTP of the two inventors. Then compare Conception + diligence vs.
Conception + diligence of the two inventors.*
[102(a), (e), (f), & (g)] are Date of Invention comparisons w/ 3P
[102(b) & (d)] are Date of Filing comparisons
Wiping Out your Own Prior Art in [103] (RULE [103(c)]):
The (alleged [103] P.A.) subject matter developed by another inventor—which also qualifies as
[102(e), (f), or (g)] prior art—shall not prevent the current invention from being patented if the
subject matter and the current invention were, at the time the current invention was made, owned
by the same person or subject to an obligation of assignment to the same person.
-
“Owned by the same person or subject to an obligation of assignment…” means:
o The current invention was made b/c of a joint research assignment that existed
on/before the two inventions were made, AND
o The current invention was made within the scope of the joint research agreement,
o The current invention’s app discloses the names of the parties in the joint research
agreement
-
the prior art reference is a [102(e), (f), or (g)] prior art, AND
it can be used to defeat a current invention under [103] Obviousness, AND
the prior art & the current invention are owned by the same entity OR subject to an
obligation to the same entity
IF
 THEN the [102(e), (f), or (g)] prior art reference can be wiped out and the current inventor
can overcome a provisional rejection.
E.g.: Company invents a drug and files an app. Company then starts working on a novel method
to administer the drug. If they file their embodiments in another app, then their earlier app will
be used to reject their later app (under [103]) b/c their earlier app will be [102(e), (f), or (g)]
prior art. But b/c the two are commonly owned, the Company can get away with this.
E.g.: IF you make improvements on your invention AND these improvements are directed to
similar subject matter as the invention AND you file successive apps for these improvements 
THEN when your earlier app publishes they will be [102(e)] prior arts against the improvement
apps—unless you file the improvement apps together on the same day that you file the original
app.
Overcoming a Provisional Rejection:
IF you get a provisional rejection  THEN you can:
- argue against it
- amend your current invention app
- antedate the prior art references that were used to make the provisional rejection
- abandon the two apps and combine them into a new app covering the same subject matter
o IF you combine the two apps into one, and get a restriction requirement 
THEN the divisionals and the CIPs cannot be subject to the same provisional
rejections!
- prove that the two apps are commonly owned or subject to the same assignment
[103] Rejections:
*Exam will say if something is obvious or not—there are no GRAY areas on the exam. If the
question is “what is the test?” the answer is that there are 7 rationales—not just one. Don’t look
for ambiguity in [103] questions—the test will tell you if the prior art is obvious or not. *
Obviousness Rejection:
PTO examiner must make a prima facie (self-evident) case about why a claim is obvious [MPEP
2142]
IF a PHOSITA would find it obvious to modify what is taught by one reference (anything
specified in [102]) in light of what is already taught by another reference (similarly anything
specified in [102])  THEN the claim is obvious [MPEP 706.02]
-
Obviousness rejections must explain why the invention is obvious (KSR) [MPEP 214244]
o (1) Combining prior art (by known methods)
o (2) Simple substitution of elements
o (3) Using a known technique
o (4) Applying a known technique to a known device
o (5) Obvious to try
o (6) Prior art prompts variations that are predictable to PHOSITA
o (7) TSM Test: The prior art teaches, suggests, or motivates a PHOSITA to modify
the prior art or combine the prior arts in order to make the current invention
(KSR’s TSM Test) [MPEP 2143]
-
SC said PTO must
o (a) search prior art and its scope/content, AND
o (b) determine the differences between the prior art and the invention, AND
o (c) determine the level of ordinary skill of the PHOSITA
 Skill of PHOSITA is found by looking at the technology of the times, the
education level of the inventors, etc. [MPEP 2100]
Overcoming an Obviousness Rejection: [MPEP 2142-44]
Obviousness rejection means the examiner believes:
-
(i) all the relevant prior art that he’s found (i.e.: the prior art combined must teach all of
the claim’s limitations) AND
-
(ii) would work together to make this current invention (i.e.: there is a reasonable
expectation of success in combining/modifying the prior art), AND
-
(iii) there’s some (explicit/implicit) rationale to bringing those prior arts together in this
way to make the current claim
*Note: Inventor must knock out one of those 3 things in order to overcome the obviousness
rejection.*
-
(Examiner is wrong) Inventor can counter-argue and submit facts that assert the examiner
is wrong in saying the claim is obvious
o All arguments must be based on facts that are already in the file OR added via
affidavit/declaration
 “A PHOSITA wouldn’t make this combination of the prior art…”
 “The combination you made isn’t the same thing as my invention…”
 “I’ve done this combination and it doesn’t work…”
-
(Antedating) Inventor can submit facts to swearing back his invention behind the [103]
prior art
-
(Totality of prior art) Inventor can submit new facts (w/ affidavit) to show that the totality
of facts don’t suggest that his invention is obvious
-
(Amendment) Inventor can amend his claims to make his invention nonobvious
o IF the applicant amends claims to add new limitations (from w/e has already been
disclosed) or to replace existing claims  THEN the applicant
 has to also submit a Supp O/D [MPEP 603], AND
 cannot EVER add new subject matter, AND
 must explain how each & every Rejection/Objection is overcome by the
amendments
*Note: If you’re only cancelling claims and replacing them w/ narrower claims, then you don’t
have to file a Supp O/D.*
*Note: It’s okay to omit from the claims something that was disclosed—as long as it’s not a
necessary element. It’s not okay to claim something that isn’t already in the disclosure.*
Rejections Based on New Matter:
-
You can NEVER add new subject matter to an existing app [MPEP 706.03]
o Your total “disclosure” is whatever you’ve explicitly or inherently disclosed and
whatever can be reasonably implied by a PHOSITA based on what you’ve
disclosed.
 E.g.: You explicitly disclose: “This boils at 100 C.” This means you’ve
also inherently disclosed “This boils at 212 C." This also means that
you’re implying “This has the boiling characteristics of water at sea level.”
o New subject matter is anything that is not supported by the original disclosure
(SCD, sometimes Abstract, too).
 E.g.: Adding specific percentages or compounds after a broader original
disclosure—this is forbidden new matter
 E.g.: Omitting a step in the method after the original disclosure said it was
an essential step—this is forbidden new matter
o New matter can be added only via CIP—but that’s basically a new app in which
the claims that are based on new subject matter have their own Filing Date.
o It’s ok to later amend the SCD and Abstracts to include limitations that were in
the original application—as long as that amendment was already disclosed in the
original disclosure in another part somewhere!
 E.g.: Abstract discloses “X” but S & C don’t. You can amend the S & C to
include “X” as long as “X” was originally disclosed in the original
Abstract.
*Note: Before, you could add new subject matter to a CIP as part of your original app. Now, you
have to file a CIP as a completely separate app from your original [CFR 1.53(b)].*
[101] Subject Matter Rejections
Patentable subject matter [MPEP 706.03(a)]
- Must be a process, OR
- Must be a machine, OR
- Must be a manufacture, OR
- Must be a composition of matter
Unpatentable subject matter includes:
- Scientific principles/mathematical discoveries
- Atomic weapons [2181]
- Devices that can only be used for illegal purposes
o Devices that can also be used for other legal purposes are okay
- Business methods that aren’t associated w/ an accompanying machine
- Natural things
- Purely mental methods
- Discoveries are not patentable—but using discoveries to do something is.
Utility Rejections:
-
The invention must have some use in order to be patentable—there must be bare utility
[MPEP 2106] [MPEP 706.03(a)]
Final Rejection:
A procedural mechanism to tell the applicant that the app has 6 months left to live (first 3 months
free, next 3 months paid extension) [MPEP 714][CFR 1.116]
-
Examiner has full discretion to continue considering an app after Final Rejection.
Examiner can only make a Rejection “Final” if the examiner is repeating a Rejection that
was previously made, OR if the examiner is making a Rejection that was necessitated by
the applicant’s action.
Rights After Final Rejection (after Final, you’re operating under examiner discretion—but you
can do these b/c they don’t require the examiner to do a further Search)
-
You can submit an amendment w/ a showing of good and sufficient cause as to why the
amendment wasn’t presented earlier.
You can submit an amendment that puts the app in better form for Appeal by reducing
the issues on Appeal.
You can submit an Amendment that places the app in a condition for Allowance (by
cancelling the rejected claims).
***Note: After Final Rejection, all amendments must be accompanied by some remarks—
whether it’s you asking the examiner to reconsider his decision, or you explaining why you
didn’t submit the amendments sooner, or w/e. You must always submit remarks after
Final!!!!***
Overcoming a Final Rejection:
-
Amend the claims so that the rejected claims are cancelled and allowed claims are
ultimately patented
-
If you disagree w/ the examiner’s Final Rejection, you can present the claims in a better
form for consideration on appeal
o File a Notice of Appeal
o submit an Appeal Brief within 2 months of Notice of Appeal—can be extended
another 5 months)
-
File a RCE (utility apps) / CPA (for design apps)—this is technically not a response b/c it
abandons the parent.
*Note: Alternatively, the examiner can change his mind and convert the Final Rejection to a nonfinal one—yeah right, that rarely happens!*
*Note: After Final Rejection, applicants do NOT have the right to an interview.*
*Note: You can jump on to several tracks at the same time (e.g.: appeal the rejected claims while
filing a continuation at the same time). *
2-Month Rule:
You get a Final Rejection  You respond to it within 2 months  the PTO is then supposed to
send you an Advisory Action in response to your response telling you whether or not your
response has been entered—IF that Advisory Action is late or takes too much time (ruining your
free 3 month response period to the Final Rejection)  THEN the calculation of the 3 month
free period starts from either the mailing date of the Advisory Action OR the typical 3 months
after mailing date of the Final Rejection (whichever is later!)
- Either way, there is NO way you can extend your response time to a Final Rejection more
than 6 months.
- If the PTO sent their Advisory Action at the 6th month, you don’t have to pay any
extension fees that you normally would’ve had to pay in response to a Final Rejection.
- IF the PTO sent their Advisory Action at the 7th month, and you never filed an appeal or
continuation  THEN your app is abandoned even though the PTO didn’t get back to
you.
o This is why you should always jump onto another track at the same time!!
[112] 1st Paragraph – WD, Enablement, BM & [112] 2nd Paragraph - distinctly claiming &
particularly pointing out invention
Procedural/PTO requirements:
- Submitting papers on time, submitting properly drawn drawings, right type of ink, etc.
First Non-Final Action
Filing a Response ends the deadline
You have a right to: (1) an interview, (2) make
amendments, (3) submit affidavits
You cannot file a Notice of Appeal
No 2-month Rule
Afterwards comes an Official Action or a
Notice of Allowance
Final Rejection
Filing Response doesn’t end the deadline
unless the response is entered
You don’t have a right to: (1) an interview, (2)
make amendments, (3) submit affidavits
You can file a Notice of Appeal to end the
deadline
Yes 2-month Rule
Afterwards comes only an Advisory Response
Transitional Final Rejection Practice (Old); Request for Continued
Examination (New)
When patent term changed from 17 yrs after issue to 20 yrs after Filing [June 8, 1995], it meant
that when you filed a continuation (usually after a Final Action) you would lose time on your
continuation (since your parent would last 17 years only after it issued). So how to remedy this
loss of time?
Old way: File a Transitional Application to ask the PTO to undo the finality of the Final Action.
New way: You file an RCE [CFR 1.114] to ask the PTO to take away the finality of the Final
Rejection.
-
You do RCE practice by
o (1) You can mail (via Certificate of Mailing), EFS, or fax the following to the TC
o (2) paying a Fee,
o (3) making an RCE request
o (4) filing a Submission—what is that?
 If there was an outstanding reply to an Action, then the Submission must
follow [CFR 1.111] requirements
 If there was no outstanding reply to an Action, then the Submission can be
an IDS, an amendment, new arguments (based on facts!), or new evidence.
 If you previously filed the Submission via an amendment in
response to a Final Rejection and that was not entered, then it’s
okay—you don't have to send in a Submission again w/ the RCE
and Fee.
o (5) You must submit all of these things before the earliest of:
 Before paying the Issue Fee—unless you file a [CFR 1.313] petition and
get it granted! OR
 Before you abandon the parent, OR
 Before you file any court action.
o RCE practice is not like filing a continuation under [CFR 1.53(b) or (d)].
*Note: Continuations are a way to restart the examination of a new app w/ the same filing date
VS. RCEs are the continued examination of the same app.*
CPA vs. RCE:
CPA is a new application that’s like an RCE for designs (CPAs have midnight constraints, and
Fees can be postponed, and you become eligible for w/e new Rules or laws that came into effect)
VS. RCEs are not new apps so you’re under the same Rules or laws as the parent.
RCE
Utility or plant apps filed
on/after June 8, 1995
CPA
Only design apps (used to be
available for every type before
June 8, 1995)
Statutory authority for doing
this?
What is it like?
[USC 132(b)]
[USC 111(a), 120, 121]
Continued examination of the
same app
Continued (new) app is treated
as a continued examination of
the same app
What’s the Fee?
PTO will set the fee and won’t
charge any additional claims
fees. Applicant cannot defer
paying this fee.
The fee is the filing fee for
filing CPAs. Applicant can
defer paying this.
What apps can do this?
What happens if you submit a
defective but bona fide
Submission or amendment?
Your reply period (6 mo. after
Final Action) is stopped. Your
Submission or amendment
may be treated as being not
fully responsive [CFR
1.135(c)]
What’s the impact on patent
Filing an RCE cuts off further
term adjustment (PTA)?
PTA against a 3-year
pendency provision
Can you file w/ a Certificate of Yes.
Mailing?
Can you submit a divisional or No, you cannot file a
CIP as part of this?
divisional or CIP along w/
your RCE request.
Nothing happens b/c you don’t
need to file a “responsive”
Submission or amendment
Nothing
No.
Yes you can file a divisional
w/ your CPA. No you cannot
file a CIP w/ your CPA.
Petition to Make Special [MPEP 708.02]
A “Special” App moves to the front of the line of examination.
“Making Special” for Apps that were filed on/after Aug. 25, 2006:
IF app is filed on/after Aug., 25, 2006  THEN you can Make Special:
-
FREE for illness, age, and Patent Prosecution Highway (PPH) apps
-
FEE for everything else (applicant must usually do a search + pay for Accelerated
Examination Procedure (AEP) + make a Statement or pay a Fee). Full requirements:
o Petition to Make Special under AEP + pay Fee OR submit Statement that says the
invention is about environment, energy, or counterterrorism.
 Note: Counterterrorism isn’t the same thing as “national security.”
o App must be a non-reissue utility or design (design apps use EEP instead)
o App + Petition to Make Special + Fee must all be filed via EFS
o App must be complete under [CFR 1.51], meaning it has all the parts to get a
Filing Date (i.e.: SCD, etc.)
o App must have ≤ 3 Indep claims and ≤ 20 total claims
o App cannot have any MDCs!
o App must claim 1 invention only so no restriction practice is needed
o Applicant must be willing to have a special interview—this is different than the
O.A. interview
o Applicant has to file a Statement of Search (his own prior art search):
 Applicant must’ve searched for US patents, apps, publications, foreign
patents, NPL—unless he can justify not searching for those
 Applicant must’ve searched his invention broadly enough
 Applicant must’ve searched for the disclosed features/limitations of his
invention
 A foreign patent office’s search might be ok ONLY if it does all of this
 Applicant must’ve done the search in good faith
o Applicant must submit an Accelerated Examination Support Document (AESD)
(his own [103] pre-examination)
 Must include another IDS about each of the references cited above
 Must state which of his features/limitations are found in the references




Must explain how each of his claims are patentable over the references
Must explain the utility of his Indep Claims
Must explain how his claim comply with [112]
 Must explain if any of his claims have priority benefits
Must explain if any references that could disqualify his claims under [103]
*Note: IF your Petition to Make Special is defective  THEN you have one chance only to fix
that shit within 1 month (no auto extensions allowed, either!)*
-
Unqualified for AEP program:
o
o
o
o
reissue apps
plant apps
re-exam proceedings
RCEs—unless the original app was granted “Special” status beforehand in which
case it carries over
o National Stage apps entering from IA
o Petitions to Make Special based on applicant’s age, illness, or under PPH
program—these are done for FREE instead of via AEP
o Design apps—design apps should apply for Expedited Examination Program
(EEP) instead of AEP
“Making Special” Apps that were filed before Aug. 25, 2006:
IF the app is filed before August 25, 2006  THEN you can file a Petition to Make Special for
FREE (no Search required!)
-
for illness reasons (i.e.: doctor’s certificate that the inventor is seriously ill)
for age reasons (i.e.: inventor is over 65 yrs. old)
for environmental reasons (i.e.: invention has some positive environmental impact)
for energy reasons (i.e.: invention has some positive environmental impact)
for counter-terrorism reasons (i.e.: invention is going to counter terrorism)
for superconductivity materials reasons—b/c of President Regan’s mandate
IF the app is filed before August 25, 2006  THEN you can file a Petition to Make Special for
a FEE [$$] (includes paying for a Search)
-
for prospective manufacture reasons (i.e.: inventor/owner/licensee has enough money to
start manufacturing the invention right away and believes the invention is patentable)
for infringement reasons (i.e.: inventor needs the patent in order to stop an infringer)
for safer DNA reasons (i.e.: inventor needs the patent to make DNA safer)
for any reason, as long as:
o inventor presents claims to a single invention OR accepts the PTO’s restriction
practice
o inventor presents his patentability search of his invention
o inventor submits a copy of each reference
-
o inventor discusses each of the references
for HIV reasons (i.e.: invention is going to possibly cure HIV or cancer)
for biotech apps filed by a small entity reasons
*Note: You can file a Petition to Make Special even while your app is pending before the BPA.*
*Note: The PTO will treat apps under Secrecy orders, in Interference, under National Security
Review, etc. according to the AEP program before or after those proceedings.*
Applicant’s response to an O.A. for a “Special” case:
- IF applicant in this case tries to
o add more than 3 Indep Claims, or
o present claims that fall outside his pre-examination search, or
o present claims for another invention
 THEN these responses are not fully responsive and will NOT be entered (and the clock will
keep ticking)
Suspension of Action [MPEP 709]
Applicant can Petition for No-Cause Suspension [CFR 1.103]
IF:
-
Applicant submits a CPA transmittal document OR submits an RCE request, AND
Applicant requests to Suspend for no more than 3 months, AND
Applicant pays a Fee
 THEN the applicant can file a Petition for No-Cause Suspension
Applicant can Petition for Suspension of Prosecution:
IF the applicant has an Action outstanding (that he hasn’t responded to)  THEN he cannot
EVER petition to suspend prosecution (for any reason)
IF there is no Action outstanding and applicant wants to Petition to Suspend:
-
Must have good & sufficient cause (e.g.: doing more experiments)
Must have a definite time for how long the suspension should be
Must pay a Fee
Cannot Petition to Suspend during a re-exam
Cannot Petition to Suspend to buy time to submit an IDS in order to overcome rejections
 THEN the applicant can Petition for Suspension
Examiner can Petition for Suspension of Prosecution:
- IF the examiner wants to Petition to Suspend  THEN he
o Can do it at any time
o Can Suspend for no more than 6 mo
Due Dates & Extensions of Time:
*Know this shit cold!*
Extension of Time procedures:
*Note: Applicants usually want to extend time in order to make an app co-pending w/ their
continuation or division (and therefore keep the effective Filing Date).*
IF you want to extend a non-statutory due date  THEN you MUST use up any automatic
extension available first [CFR 1.136(a)] before you can request an extension for cause under
[CFR 1.136(b)]
-
Automatic extensions are available for 1 mo, 2 mo, 3 mo, 4 mo, and 5 mo—you can’t get
an auto extension for more than 5 months at a time!
-
All applicants have 6 months statutory time to respond to an Official Action—this is not
extendable and breaking this rule will abandon the app [USC 133]
o You can still extend the time to respond to a Notice of Missing Parts for up to 5
months (b/c it’s not statutory).
o You can still extend the time to file an Appeal Brief more up to 5 months (b/c it’s
not statutory).
-
You can petition for an automatic extension of time by:
o Referring to your previous general authorization for an auto extension
o Paying for the auto extension
o Making a general authorization to pay any additional fees for the auto extension
*Note: The 2-month deadline for filing an Appeal (& Notice of Appeal) is non-statutory—you
can get a 5-month extension for it (2 mo. regular deadline + 5 mo. auto extend = 7 mo. total).*
*Note: IF you file a faulty but bona fide (not knowingly faulty) response to a Non-Final Action
 THEN you can get an automatic extension to fix your response.*
You CANNOT get an Automatic Extension (but you can get a “for cause” extension):
-
If the Office Action says you can’t
-
If you’re on Appeal
o filing a Reply Brief (as part of your Appeal to the BPA; *Reply Brief is not the
same thing as Notice of Appeal or Appeal!*) in response to an examiner’s
Answer to your Appeal
o If you’re requesting an oral hearing during an appeal process
o If you’re responding to a BPA decision
o If you’re involved in an Interference in any way
If you’re trying to extend the non-statutory due date of a re-examination
- You can request an extension for cause during a re-exam if you have good cause and you
make the request before the next due date
You CANNOT get an auto or “for cause” extension for ANY REASON:
-
If you’re filing an IDS (b/c these have their own filing timelines [CFR 1.97])
-
If you’re filing anything that has a statutory deadline (e.g.: 6-month statutory deadline for
replying to Office Actions)
-
If you’re paying an Issue Fee (Issue Fees can be paid within 3 months of getting a Notice
of Allowance and can be paid late but you can’t ask for a deadline extension)
-
If you’re responding to a Notice of Omitted Items (2-month deadline [MPEP 600])
-
If you’re requesting a refund for a fee that you paid as a Large Entity (only a 3-month
deadline) [MPEP 509.02]
-
If you’re filing a formal drawing at the same time that you pay an Issue Fee
Getting an Extension of time in Pieces (refund!):
E.g.:
You get a Final Rejection on 1/1/09 and you have a 1-month deadline to respond (2/1/09) 
You miss the deadline and respond on 2/8/09 + pay $X Fee + file for a 1-month extension 
Your response is denied entry on 2/10/09 (thus making your 1-month extension request moot) 
You file a Notice of Appeal on 3/8/09 + pay $Y Fee + file for a 2-month extension (so the 2/1/09
deadline is now extended to 4/1/09) 
Your Notice of Appeal is accepted, your 2-month extension is accepted, and you get a $Y - $X
refund
- Thus, you’ve gotten an extension of time in pieces
*Key Things to Remember about Deadlines/Extensions*
-
All dates are calculated from the mailing date that the PTO sent the action to you—not
the date you received it [CFR 1.135]
-
You must file your response to any Official Action within 6 months—and this can only
be shortened (by Commissioner), never extended beyond that [USC 133]
o Statutory due dates can be extended only if they’re shortened from the statutory 6month period.
o Non-statutory dates can be extended unless they’re explicitly forbidden to be.
 E.g.: You get a request to complete the filing of your app. This has no
statutory due date b/c it’s not an Official Action.
-
PTO has the power to set Shortened Statutory Periods, and usually sets a 1-month period
to respond to a restriction requirement, a 2-month period for Ex Parte Quayle actions,
and 3-month period to respond for all other Office Actions [MPEP 710]
o Whenever the PTO sets a Shortened Statutory Period, you’ll always have an
automatic extension of time (up to 5 months) if you ask for it + pay a Fee.
 E.g.: You get an Official Action on 5/9/09 w/ a Shortened Statutory Period
of 3 months. If you want an extension beyond that you have to ask for it +
pay a Fee—as long as you don’t ask for an extension that goes beyond the
statutory 11/9/09 deadline.
-
Automatic extensions can be applied retroactively—as long as you get it before the 6month statutory deadline.
o You cannot get any type of extension to pay an Issue Fee—it’s better to just not
ask for an extension if you’re paying it late.
o IF you’re getting an extension just to keep the parent alive while you get a
continuation  THEN you don’t also have to respond to any outstanding Action
in order to get the extension.
-
For all these due dates, always take into consideration weekends and federal holidays. In
making 1-month calculations that end in February, always end on the last day (28th or
29th)—don't spill over to March.
[103] Rejections
When making [103] rejections on a claim-by-claim basis, the examiner must consider:
- (a) the PHOSITA’s skill level,
-
(b) the technology of the art at the time the inventor made the invention, and
-
(c) any secondary considerations (Graham factors):
o TSM test: Everything in the current claim must be anticipated by a combination
of some sort of the prior art—and that prior art must be such that it teaches,
suggests, or motivates the PHOSITA to combine them in that way in order to
make the claim w/ a reasonable expectation of success.
 “Teaching” (e.g.: textbook that shows a PHOSITA how to solve the
problem that the current claim is solving).
 “Suggestion” (e.g.: in order to stop vibration problem, a PHOSITA would
know to add a damper)
 “Motivation” (e.g.: the prior art leads to a lot of vibration, and this
problem would encourage a PHOSITA to solve it)
o KSR Test: IF a PHOSITA would’ve had to do something crazy that no one would
think would work in order to make the current claim from the existing prior art 
THEN the current claim is indeed non-obvious and passes the [103] test.
 Examiner’s PHOSITA should have ordinary creativity, not incredible
creativity!
-
(d) Examiner has to consider the full scope of each claim
Q) 103 Prior Art (10.03.5a) [2009]
5. In accordance with the patent laws, rules and procedures as related in the MPEP, which
of the following does not constitute prior art upon which a primary examiner could
properly rely upon in making an obviousness rejection under 35 USC 103?
(A) A U.S. patent in the applicant’s field of endeavor which was issued two years before the
filing date of applicant’s patent application.
(B) A non-patent printed publication in a field unrelated to the applicant’s field of endeavor
but relevant to the particular problem with which the inventor-applicant was concerned,
which was published the day after the filing date of applicant’s application.
(C) A printed publication published more than 1 year before the filing date of applicant’s
patent application, which publication comes from a field outside the applicant’s field of
endeavor but concerns the same problem with which the applicant-inventor was
concerned.
(D) A printed publication in the applicant’s field of endeavor published 3 years before the
filing date of applicant’s patent application.
(E) A U.S. patent which issued more than 1 year before the filing date of applicant’s patent
application, which the Office placed in a different class than the applicant’s patent
application, but which concerns the same problem with which the applicant-inventor was
concerned, and which shows the same structure and function as in the applicant’s patent
application.
5. ANSWER: (B) is the most correct answer. MPEP § 2141.01. Quoting from PanduitCorp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.),cert. denied, 481
U.S. 1052 (1987), MPEP 2141.01, under the heading “Prior Art Available Under 35 U.S.C.
102 Is Available Under 35 U.S.C. 103,” states “‘[b]efore 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.’ Subject matter that is prior art under [102] can be used to support a rejection
under [103]. Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter. 1981) (‘it
appears to us that the commentator [of 35 U.S.C.A.] and the [congressional] committee
viewed section 103 as including all of the various bars to a patent as set forth in section
102.’).” Because the printed publication in (B) was not published until after the filing
date of the patent application, it does not constitute prior art.
- (A) is incorrect because the patent pre-dates the application, therefore qualifying as
prior art, and comes from the same field as the application, therefore qualifying as
analogous.
- (C) is incorrect because the printed publication pre-dates the application, therefore
qualifying as prior art, and concerns the same particular problem sought to be
solved in the patent application, therefore qualifying as analogous.
- (D) is incorrect because the printed publication pre-dates the application, therefore
qualifying as prior art, and comes from the same field as the application, therefore
qualifying as analogous.
- (E) is incorrect because the patent issued before the application, therefore
qualifying as prior art, and concerns the same particular problem sought to be
solved in the patent application, therefore qualifying as analogous. The USPTO
classification in a different class does not render the patent nonanalogous.See MPEP
§ 2141.01(a) (“While Patent Office classification of references . . . are some evidence
of ‘nonanalogy’ or ‘analogy’ respectively, the court has found ‘the similarities and
differences in structure and function of the inventions to carry far greater weight.’”).
Claim Drafting like a BOSS:
Just know enough to pass the test—don't worry about making it perfect.
[112]
-
[102]’s role here is simply to state that the invention must have one thing about it that
cannot be found in the prior art.
o [103] will never be tested in the context of claim drafting b/c it’s a subjective test
(e.g.: KSR test, etc.)
[112] 1st Paragraph:
-
(1) What you describe + (2) What you’ve enabled = What you can claim
o This is the bargain that you’ve made w/ the USPTO.
o These are two distinct requirements!
-
(3) Inventor must have a WD, Enable the claims, and disclose the Best Mode of using the
invention.
[112] 2nd Paragraph:
-
Claims are a part of the Spec (they come at the end).
-
“Distinctly claim” means your language must be precise so the public can be reasonably
on notice about what’s allowed and what’s not allowed by your patent.
-
Claims are what you get a right to—if a limitation is not critical to the claim, then you
won’t get a right to it!
[112] 3rd Paragraph:
-
How claims should be written
[112] 4th Paragraph:
-
Most important: You cannot use a MDC as a basis for any other MDC—MDCs cannot
depend on another MDC!
[112] 6th Paragraph:
-
Allows method/process claims to be expressed using functional language.
-
“Known equivalents” means known equivalents at or about the time of filing (not at the
time of issue).
*Note: Claims should cover every possible version of what you’ve invented.*
E.g.: You claim a skate that has at least 3 wheels. This claims every possible version of your
invention—3-wheeled skates, 4-wheeled skates, 5-wheeled skates, etc.
- BUT even if your claim includes the prior art and has something ingenious, it may be
read to be anticipated by the prior art even if in reality the two 3-wheeled skates look like
nothing similar.
Preferred Embodiments:
- Found in the Spec
CLAIM DRAFTING EXERCISE (Coat Hook, Exercise #1):
Before drafting a claim, understand the invention in context by understating the prior art.
- Here, we have a plurality of holes or recesses with corresponding hooks that can be
removed at will.
- “Must have” three legs is a necessary element.
- “Slots or holes” mean you can only use one of these terms—not both!
Both independent claims must be on their own (as two different embodiments), without
depending on each other in any way—they shouldn’t refer to each other!
Use “comprising” as the transition b/c that’s the answer 99% of the time.
CLAIM DRAFTING EXERCISE (Wood Furnishing Method, Exercise #2):
Necessary elements: need a wooden piece of furniture (don’t assume that it is already provided),
-
The “repeating step” can be written as being “optional,” or you can include it here with
the limiting factor being “until finish layered is removed completely.”
Don't forget the gerunds must be used to describe the process—MUST BE IN PRESENT
TENSE!!
Practice claim drafting every day for little things. Do processes and apparatus. Be able to
eventually see the errors on the exam—that’s what you’re being tested on.
SECTION V – REJECTIONS AND RESPONSES & HOW TO HANDLE THEM…like a BOSS
[1.111] and [1.121] are the rules you use when responding to Office Actions and Rejections.
Pg. S50: Since the phrase “exceeds” has no definition in our spec, it gets read out of our claim.
When you take it out of claim #2, then this claim becomes JUST like the Bogart prior art! That’s
why the Bogart claim now anticipates your claim. Every element of claim 2 is already in Bogart.
1. An umbrella, comprising of:
- a vertical unit composed of metal having a top end and a bottom end,
- wherein said bottom end is encapsulated by a rubber material for easy holding.
2. The umbrella of claim 1, further comprising:
- a rigid fabric conically shaped;
- wherein said rigid fabric is attached to said top end at the point of the inner apex;
[MPEP 800]
Restriction practice: PTO will give away one patent on one invention only to one
inventor/inventive entity b/c you’ve only paid for one search and examination—they won’t give
you anything more for free.
-
-
E.g.: You claim two inventions (a screwdriver and plyers). PTO will restriction practice
on these distinct inventions. The one that is not picked can be continued in a divisional or
abandoned—if you continue this one in a divisional, you won’t get another double
patenting rejection.
E.g.: You claim a device and a method of using the device. Are they so closely related
that you cannot break them apart into two separate inventions?
E.g.: You claim a pharmaceutical (chemical elements only) and a therapy (has elements
of pharmaceutical and other biological elements).
IF your app has general and narrow claims  examiner will do prior art search for the broad
concepts of the generic claim and also the specific details of the narrow claims
- IF the general claims are accepted, then a reasonable # of narrow claims (species
claims) may be allowed to tag along, too
-  IF the narrow claims are accepted, then only those narrow claims (species claims) can
be pursued, and everything else may have to via divisional.
Linking claims link apparently separate inventions.
IFF the claims in one app
- (a) are able to support two separate inventions, AND
-
(b) those inventions are EITHER
o Independent, OR
 The two inventions are unconnected in design, operation, or effect
 E.g.: two species that are not usable together
 E.g.: process + apparatus that can’t be used in the process
o Distinct
 The two inventions can be separately manufactured, used, or sold and are
patentable over each other (meaning the two inventions are different
enough that one invention would not be a prior art bar against the other)
 E.g.: Wrench can be used on that boat but doesn’t have to be. Wrench and
boat are distinct and patentable over each other.
 THEN the examiner can restrict the claims so that only one invention is prosecuted.
Types of Restriction Practice:
Genus & Species restriction:
-
-
Generic claim defines the GENUS of a claim—the broadest possible claim of what an
invention is (e.g.: “all shovels…”). Generic claims re usually directed to or cover more
than one species.
Species claims (e.g.: “shovels with plastic handles…” “shovels with metal handles…”
Subspecies claims (e.g.: “plastic shovels with plastic handles…”)
***Note: A generic claim will always include an inoperative species—that’s just the nature of
generic claims b/c they’re broad like that. As long as there are some operative species, the
generic claims can be okay.***
PTO can tell you to identify one version of the invention that will serve as an example for the
application (e.g.: shovel with wooden handles) b/c you think that embodiment/version will claim
what you want to claim.
Combination & Sub-combination restriction:
IF the examiner shows:
- That the combination does not require the particulars of the sub-combination AND
- That the sub-combination can be shown to have utility by itself
 THEN the examiner can make a restriction between a combination and a sub-combination.
E.g.: App has broad claims to a special gear + other elements which make up a transmission, and
specific claims to the special gear only. The gear has no utility outside of this combination
(transmission). Therefore the examiner cannot restrict the combination and sub-combination.
*Note: Two or more sub-combinations are usually distinct from the combination.*
Markush restriction [MPEP 803]
-
Examiners can make a restriction requirement between members of a Markush Group.
o E.g.: “A method for cleaning a surface comprising the steps of: (1) applying to the
surface an aqueous solution containing material chosen from a group consisting of
fiber glass, silicon, and diamonds.”
 Examiner can restrict this so that you can only claim fiber glass for this
method, and silicon in a divisional.
Process, Apparatus, and Product restriction [MPEP 806]
-
Process and apparatus are distinct if it can be shown:
o that the same process can be done by a different apparatus or at least reasonably
(not extraordinarily) by hand, OR
o that the apparatus can be used to do another process
-
Apparatus and product are distinct if it can be shown:
o that the apparatus can make other products besides this one, OR
o that the product can be made by another materially different apparatus
Election (after getting a restriction requirement):
IF you get restriction request
 THEN you must either:
- Elect w/ traverse (stating why you think this restriction requirement is improper)
- Elect w/o traverse
*If you get a restriction requirement you must elect, no matter what.*
Examiner will consider your arguments and may make the restriction requirement Final—this
can be appealed to the BPA, but the standard of discretion is “abuse of discretion,” so it’s really
hard to win these!
- You should traverse in order to preserve your right to petition just in case the examiner
repeats the same restriction requirement the second time around.
Constructive Election:
- E.g.: App has only apparatus claims. Examiner rejects these apparatus claims. Now you
want to add method claims.
o IF those method claims would’ve been restricted initially  THEN you can’t just
add them now b/c you basically made a constructive election when you chose not
to file them in your original app!
Election & Double Patenting:
-
IF you voluntarily file a divisional w/o having faced a restriction requirement  THEN
you might face double patenting trouble.
-
IF you file a divisional b/c the examiner made a restriction requirement  THEN you
don’t face double patenting trouble—b/c examiner can’t make the same restriction
requirement the second time around after he already made you elect!
Double Patenting:
- A comparison of CLAIMS, not disclosure (that’s a [102(e)] problem) between the two
apps that are commonly owned or commonly invented.
o If they’re not commonly owned/invented, then you face a Rejection (may have to
go through Interference)
-
Two types of Double Patenting Rejections:
o (Statutory) Same invention double patenting rejection  must cancel one or the
other
 E.g.: You claim the same invention twice in two applications—you cannot
extend your monopoly by claiming something twice!!
 Instead you must cancel one of the inventions
o (Non-statutory) Obviousness double patenting rejection  can cancel one or file
Disclaimer
 E.g.: Your claims are an obvious variation of another
 You can merge these claims or file a Terminal Disclaimer that says
you will hereafter forever own the apps and whichever has the
shorter term is when both end (basically you get two patents but
they’re identical), OR
 You can cancel one or the other.
*Note: Remember, an examiner can make a Double Patenting rejection in a divisional + parent if
you took it upon yourself to split the two inventions up into two claims w/o having been
restricted by the examiner.
-
[102(e)] is when disclosure is being compared to the prior art. A provisional [102(e)]
rejection is when the application being used to reject is commonly owned by the rejected
application (and the app being used to reject is not published).
Provisional 102(e) Rejection
Same approach as non-provisional [102(e)]
rejection, including swearing back
Compares the disclosure of the two apps
N/A restriction
[102(e)] rejections are only made if the two
apps have a common inventor/assignee.
You can overcome this rejection (i) by filing
Provisional Double Patenting Rejection
Non-statutory (“obviousness” type) rejections
that can be cured by filing a Terminal
Disclaimer. Statutory (“same invention,”
“anticipation” type) rejections are not
curable—one must be cancelled.
Compares the claims of each apps
You can safely elect and file the two apps as
parent + divisional only if you were originally
restricted by the examiner. If you purposely
split up the two on your own, then you can be
double rejected.
Provisional double patenting rejections are
only made if the two apps have a common
inventor OR assignee.
You can overcome this by doing election
the two apps on the same day; (ii) by merging
the two into parent + CIP; (iii) by showing
there was common ownership at the time of
invention
[MPEP 1100]
*Skip this question and come back to it at the end.*
Statutory Invention Registration Apps
-
SIR apps become 102(e) prior art as of their US filing date
SIR apps don’t give you the negative right to exclude others
SIR apps still have to meet [112] requirements
SIR apps can defeat other apps during an Interference
PG Publication Rules
IF the app is filed on/after Nov. 29, 2000 (*applicant can voluntarily publish sooner by filing in
EFS*)  THEN the app will automatically publish 18 months after filing, IFF
-
The app is a new app (not a design app!)
-
The app is a continuing app (continuations, CIPs, divisionals)
o If you file an RCE, you have to authorize it to be published—won’t happen
automatically!
-
The app is a National Stage app (and its corresponding I.A. was filed on/after AIPA Nov.
29, 2000, too!)
o IF that corresponding IA (or foreign app) has more disclosure than the US app
equivalent  THEN you can choose to publish that US app equivalent w/
redactions
 You must submit that redacted copy of the US app equivalent within 16
months of your EE Filing Date
 You must submit that redacted US app equivalent to the PTO via EFS
The app will NOT automatically publish IFF:
- The app is a design app
- The app is not pending anymore
- The app is under secrecy
- The app is a provisional
- The app is actually a RCE
- The app has a Request to Opt Out
o You can only file this IFF:
 If the app has not been and will never be the subject of an application that
was filed in another country that already has its own 18-month publication
rule (like the US does!)
 You file the Request to Opt Out at same time you file the app
 You make your Request to Opt Out have a clear certification that is
conspicuous
o You can withdraw this Request to Opt Out at any time!
Publication Process:
OIPE will look at and fix
- Ts
- Unscannable drawings
- No declarations
- Non-compliant CRFs:
o Non-payment of application size fee
o No-compliant S under [CFR 1.52]
o No abstract
o Non-compliant sequence listing
The Published App after Amendments:
IF the applicant wants to publish the amendments made during prosecution (or at least the prelim
amendments)  THEN the applicant has to submit a clean copy of the app via EFS
- EITHER 1 month from the Filing Date, OR
- 14 months from the earliest benefit claim (whichever is later)
Accessing Apps after Publication:
-
-
Accessing regularly published apps:
o Use the free USPTO PAIR system instead of the costly hard copy of the File
Wrapper if you want to access an app.
Accessing redacted published apps:
o People can only see the redacted File Wrapper (if you’ve submitted your
redaction papers on time!)
[MPEP 1200]
*Know about how new rejections by the BPA are made, and how to make a Request for Remand
to the examiner. Read MPEP 1200 twice! *
Appeals
Process of Appealing:
-
(1) You can only appeal a non-First Action (unless it’s the First O.A. of a
continuation that basically repeats the same reason for rejection that was in the last O.A.
of the parent)
-
(2) File Notice of Appeal before/after response (“perfecting claims for appeal”) and
pay the Fee for filing
o Mailing your Notice of Appeal [MPEP 1205]




If you use Express Mailing, then the “Date In” date is the date that’s used
to calculate the 2 months when your Appeal Brief will be due.
If you use any other delivery method (FedEx, regular mailing, Certificate
of Mailing, fax), then the date the PTO receives it is the date that’s used to
calculate the 2 months when your Appeal Brief will be due.
 That’s why it’s smarter to not use Express Mail for delivering a
Notice of Appeal—you want the Appeal Brief deadline clock to
start a few days later, not sooner.
You can auto extend the 2-month Appeal Brief deadline for up to another
5 months (total 7 months) under [CFR 1.136(a)] b/c it’s a non-statutory 2month deadline, and again extend for cause under [CFR 1.136(b)].
IF you don’t mail your Appeal Brief on time  THEN abandonment!
 You can still amend your app after filing a Notice of Appeal by
following [CFR 1.116]
o Mail your Appeal Brief within the 2 month deadline and pay Fee for filing. If the
Appeal Brief doesn’t have any of these requirements, you have 1 month to fix it:





(1) Real party in interest—this MUST be revealed to the PTO by this
point…this is the only way the PTO can avoid violating someone’s rights.
(2) Related Appeals and Interferences that may be related to this Appeal
(3) Status of each and every claim
 E.g.: “cancelled,” “allowed,” “rejected,” “withdrawn,” etc.
(4) Summary of claimed subject matter defined in each Independent Claim
(5) Status of Amendments, checking USPTO PAIR if necessary
 E.g.: “entered,” “denied entry”






(6) Independent claims and Dependent claims that are being separately
argued
(7) Grounds of rejection to be reviewed on Appeal for each rejection
 E.g.: “Whether claims 1 & 2 are unpatentable under [103] over
Smith in view of Jones.”
(8) Argument about why the examiner was wrong for each and every
claim that is being appealed—it’s better to not group claims together for
this.
 You can file a supplemental paper if new authority pops up after
you’ve already submitted your Appeal Brief.
(9) Claims Appendix of all the claims that are being appealed (so the BPA
can look them up easily)
(10) Evidence Appendix…even if you aren’t using any
(11) Related Proceedings Appendix…even if there aren’t any
*Note: Pro se appellants just have to “substantially comply” with these requirements.*
Failure to timely file Appeal Brief: IF you fail to timely file your Appeal Brief & pay the Fee 
THEN your appeal will usually be dismissed (unless there has been a declaration of
Interference)
-
If there are any claims that aren’t being appealed, those claims will continue to be
examined.
o But if those claims depend on other claims that are being appealed, then those
claims will also be denied.
-
IF your Appeal is dismissed b/c you didn’t timely file an Appeal Brief, and you have at
least one claim that is being allowed and not being appealed (i.e.: your app hasn’t been
abandoned yet)  THEN you can try to reinstate the allowed claims and the Appeal
process—
o but you must file a Petition that satisfies the same “Petition to Revive
Unintentional/Unavoidable Abandoned App” burdens of [1.137]
o pay a Petition to Revive fee
o file a RCE + submission
o file an Appeal Brief
o pay an Appeal Brief fee
- (3) Making Amendments during Appeal:
o Amendments filed after Final O.A. and on date of Notice of Appeal:
 these will be treated like a regular amendment that was filed before the
Notice of Appeal
o Amendment after Notice of Appeal and before Appeal Brief:
 (i) cancel claims




You can cancel/withdraw some claims and not others—the rest
will be disposed.
(ii) comply w/ any requirements set forth in a previous O.A.
(iii) present rejected claims in better form for consideration on Appeal
(iii) by submitting affidavits + showing of good cause why it should be
accepted + overcoming all outstanding rejections
o Amendments after Notice of Appeal and on/after Appeal Brief:
 (i) by cancelling claims that don’t affect the scope of other claims
 (ii) by rewriting Dependent claims into Independent claims
Note: You have more rights to amend after filing Notice of Appeal, and less after filing an
Appeal Brief (rule of diminishing rights!)
-
You do NOT have a right to file a new amendment during Appeal—it’s up to the
examiner’s discretion to allow them [MPEP 1206]
o Amendments will be rejected IF:
 they raise new issues
 they raise new matter
 they don’t put the app in a better form for appeal by materially simplifying
the issues for Appeal
 they present additional claims w/o cancelling a corresponding claim that
has been Finally rejected
-
(4) Filing Affidavits during Appeal [MPEP 1206]: Affidavits (or other evidence)
field after Notice of Appeal and before Appeal Brief may be admitted IF
o The affidavit overcomes all other rejections on Appeal, AND
o The affidavit has a showing of good and sufficient reason why it has to be filed
now and why it wasn’t filed sooner
*Note: Before Examiner files his Examiner’s Answer, he holds an Appeal Conference (unless his
Supervisory Patent Examiner (SPE) approves of his decision to not go forward w/ the Appeal)
[MPEP 1207]
- This Appeal Conference is between: (a) the primary examiner, (b) the SPE, and (c) a
conferee examiner.*
-
(5) Get Examiner’s Answer [MPEP 1207] w/in 2 months of PTO having rec’d your
Appeal Brief
o You can respond to this new Rejection like usual (arguing w/ facts, canceling
 you cannot submit amendments
 you cannot submit [CFR 1.132] affidavits to traverse (argue)
rejections/objections
o Examiner’s Answer may withdraw the Final Rejection and allow your app.
o IF the Examiner’s Answer has a new ground of rejection  THEN you have
(usually) 2 months to either (a) Petition to reopen prosecution track, or (b)
continue Appeal track by responding to the new rejection.
 Examiner cannot make a new ground of rejection IF
 He’s using the same evidence on record to do so, OR
 He’s just addressing an argument that he didn’t address earlier.
 IF applicant fails to respond to new grounds of rejection  THEN the
claims that were newly rejected will be dismissed and the rest will
continue to be prosecuted or appealed.
-
(6) Oral Hearing—you have 2 months from the mailing date of the Examiner’s
Answer/Supp. Examiner’s Answer to request this! [MPEP 1209]
o This 2-month deadline can only be extended for cause [CFR 1.136(b)]—you
cannot auto extend.
o Must pay a Fee for requesting an Oral Hearing
o Oral Hearings usually mean 20 min for applicant, and 15 min for examiner. You
can request more time to speak but only if the examiner allows it beforehand.
 During an Oral Hearing, you can only use the evidence that has already
been entered and considered by the examiner, and make only arguments
that are based on your Appeal Brief or any new cases.
 If it’s a re-exam Appeal Oral Hearing, the public can observe the Hearing
unless you have a valid reason for making it a private affair.
-
(7) Reply Brief—you have 2 months from the mailing date of the Examiner’s Answer
to file this as a matter of right
o You can extend this 2 month deadline for cause only [CFR 1.136(b)]—you
cannot auto extend.
o You don’t have to pay a fee for filing a Reply Brief!
o Reply Brief must include:
 Identification page that has the pp #, filing date, title, art unit, etc.
 Status of each and every claim
 Grounds of rejection that applicant is now arguing against
 Argument against those rejections
o IF your Reply Brief has any new amendments or affidavits  THEN it will be
treated like you just made a request to re-open prosecution
o IF your Reply Brief has new arguments  THEN the examiner may write a
Supp. Examiner’s Answer in order to avoid having the BPA remand the app or go
through the whole process of treating the new issues
 E.g.: In your Reply Brief, you argue that the pump means of claim #1 is
not taught in the prior art. The Supp. Examiner’s Answer argues that the
retaining means of claim 1 is not taught in the prior art.
- (8) Examiner may file a Supplemental Examiner’s Answer
o Examiner could reply to any new issues raised in your Reply Brief
o Examiner cannot raise new grounds of rejection in this! [CFR 41.43(a)(2)]
 You can continue by filing a Supplemental Reply Brief (w/ the same 2month deadline) or request a Oral Hearing (w/ the same 2-month deadline)
o IF this Supp. Examiner’s Answer was written b/c the BPA remanded the case to
the examiner for further review  THEN you must either
 (a) reopen prosecution track by filing a Reply, OR
 If you do this, then examiner can make the next O.A. final if it’s
necessitated by the applicant’s amendments
 (b) maintain appeal track by filing a Supp. Reply Brief
 If you do this, then the Supp. Reply Brief cannot have any new
amendments or affidavits—otherwise it’ll be treated as if you’re
requesting to reopen prosecution!
o Applicant can respond to the Supp. Examiner’s Answer within 2 months—
extendable for cause under [CFR 1.136(b)].
***Summary: IF a Supp. Examiner’s Answer is written in response to a remand by the BPA
(even if the Supp. Examiner’s App doesn’t make a totally new ground of rejection)  THEN
you must either
- (a) reopen prosecution track by filing a Reply w/ or w/o amendments, affidavits, or
evidence OR
- (b) maintain the appeal track by filing a Reply Brief w/o amendments, affidavits, or
evidence—if you do submit these w/ the Reply Brief then they’ll treat it as you reopening
prosecution instead. [MPEP 1211]***
***Summary: IF the BPA remands the app to the examiner for any other reason besides for
further consideration of a rejection (e.g.: to consider an IDS, to consider a Reply Brief that has
new issues the examiner didn’t address, to consider an amendment)  THEN the applicant
CANNOT try to (a) reopen prosecution track by filing a Reply b/c they’re still on appeal track.**
-
(9) BPA decision [MPEP 1219] can result in 3 things:
o (1) BPA may remand to the examiner for more info, or to the applicant for more
info (you have 30 days—not 1 month—to respond to this; not extendable)




Remand to consider an amendment
Remand to consider affidavits or declarations
Remand to do a better search for p.a.
Remand for the examiner/applicant to address an issue that was ignored
o (2) BPA may issue their own totally new grounds of rejection

you cannot appeal this kind of a BPA decision right away (b/c it’s not a
final rejection)….

Instead, you can do either of these:
 Reopen prosecution: you must instead submit a response
(amendments, evidence) that asks the examiner to reconsider—and
then appeal again after that, OR
o Amendments must address the rejected claims, not simply
add new claims!
o BPA can look at these again and make another decision.
 Request rehearing: request a rehearing within 2 months of BPA
decision
o By doing this, you waive your right to reopen prosecution!
o You must state very specifically why you want a rehearing.
o You must argue using the same evidence on the record—
unless you have good cause for using new evidence and
arguments.
o You have 2 months from BPA decision to request a
rehearing—can only be extended for cause [1.136(b)]
o (3) BPA may issue their final decision on the merits [MPEP 1214]

If this decision is against you, then you can respond by asking the BPA to
reconsider and then appealing to the CAFC or District Court.

If this decision affirms the examiner, you have 2 months from the BPA
decision date to respond to this by:
 Asking the examiner to reconsider, or
 By filing a continuation, RCE + fee, etc.
o Note: You can file a continuation at any time during the
Appeal process! [MPEP 1215]

If this decision overrules the examiner, you can just wait for Allowance
(or continue appealing if you really disagree for some fucked up reason)
 Examiner can also request a rehearing within 2 months of the BPA
decision, and you’ll have 2 months to respond to it.

If the BPA decision allows some claims—but those claims are dependent
on other claims that were ultimately rejected by the BPA—then you lose
those accepted claims, too!
 E.g.: BPA affirms rejection of Claim 1. BPA overrules rejection of
Claim 2, which is dependent on Claim 1. The time for applicant to
appeal this has expired. Examiner should now either:
o Convert the dependent Claim 2 into an independent Claim
2 via Examiner’s Amendment, OR
o Give the applicant 1 month to rewrite the dependent Claim
2 into an independent Claim 2.

If the BPA affirms the examiner’s rejection AND issues a new ground of
rejection, then you can respond to each accordingly.

You may still file an amendment after a BPA decision—only if you also
file a RCE + fee with it, b/c you usually cannot reopen prosecution after a
BPA decision [MPEP 1214].
Withdrawal or Dismissal of Appeal:
-
Withdrawing the appeal after you’ve filed for an Appeal, after the time to respond to a
Final Action has expired, and before the BPA has made a decision means you’re
abandoning the app completely.
-
IF you started an appeal process but now want to withdraw the appeal and instead reopen
prosecution before the BPA makes its decision  THEN you must file an RCE +
submission + fee
o Note: You cannot file RCEs for utility/plant apps filed before June 8, 1995.
-
You can also partially withdraw from appeal those claims that you think won’t win the
appeal and instead proceed with the remaining ones.
*Note: BPA may tell you how to overcome a rejection, but only if they want to—and even if you
do amend accordingly it doesn’t mean that you’ll necessarily overcome it!*
-
(10) Appeal to CAFC (the process afterwards isn’t covered by the exam) within 2
months + appeal Fee [MPEP 1216]
o If you appeal to the Dist. Ct. for the District of Columbia, you have more
flexibility b/c that court follows FRCP—you could try bringing in new evidence.
o If you appeal to the US Court of Appeals for the Fed Circuit (CAFC), you have
less flexibility b/c they only view the record that already exists—you cannot
really bring in new evidence.
*Note:
- In re-exams filed before Nov. 29, 1999, the assignee may appeal to either CAFC or Dist.
Cot. for DC.
- In re-exams filed on/after Nov. 29, 1999, the assignee may appeal only to the CAFC.*
Summary:
- Remember, you cannot appeal a first-time rejection ever
- You must write to request an Oral Hearing and pay a Fee
- If the BPA rejects you on totally new grounds of their own, then you can EITHER
o Submit a response and ask the examiner to reconsider, OR
o Request a rehearing from the BPA (for free—no fee required) and argue against
this new ground of rejection
Notice of Appeal
Appeal Brief
Examiner’s Answer
Reply Brief
Request for Oral Hearing
BPA Decision
Appeal to the CAFC
Request for BPA rehearing
Rejection must’ve been given
twice or be final
Due 2 months from “Date In”
date or date the PTO rec’d
your Notice of Appeal (auto
extendable another 5 months,
may be extended for cause
after that)
Can raise a new grounds of
rejection
You have a right to file this—
but must do so within 2
months of the mailing date of
Examiner’s Answer
(extendable for cause only)
Must be filed within 2 month
of the mailing date of
Examiner’s Answer
(extendable for cause only)
BPA may (i) affirm examiner;
(ii) overrule examiner; (iii)
issue new grounds of rejection
Must do this within 2 months
of the BPA decision
Must do this within 2 months
of the BPA decision
(extendable for cause only)
Must pay a Fee for filing this
Must pay a Fee for filing this
n/a
No Fee
Must pay a Fee for filing this
n/a
Must pay a Fee for filing this
No Fee
E.g.: Examiner issues you a Final Rejection that rejects all your claims based on [103]. You file a
Notice of Appeal and Appeal Brief to the BPA. As they deliberate on your appeal case, your
client tells you (3 months after the Final Rejection) that there was commercial success of the
patent. What can you do to preserve his rights while the case is still being heard on appeal?
-
The best thing to do would be to file a continuation using this new information about
commercial success (just make sure you don’t introduce new matter, unless you do CIP)
-
Another thing you could do is send a declaration of this information about commercial
success to the BPA w/ a sufficient showing of good cause as to why you didn’t send it to
them earlier (b/c the inventor needed 3 months to record the commercial success!)
o If you wait for the BPA to make their decision first, then you risk getting a
negative decision from them—you should try to influence their decision before
it’s made!
[MPEP 1300]
*Know how to withdraw an app from issue, and the fact that you cannot get an extension to pay
the Issue Fee. PTA/PTE are rarely tested. *
ALLOWANCE & ISSUE
Examiner’s Amendments:
-
IF the app is a paper app  THEN the examiner can make informal amendments w/ a
pen by handwriting minor things in the app that should be fixed (e.g.: misspelled words,
noun/verb, grammar, etc.).
o When correcting originally filed papers in paper apps, the examiner must use
clean red ink (not blue or black ink).
-
IF the app was submitted via EFS THEN the examiner cannot make informal
amendments and must instead make formal examiner amendments, or let the applicant
make amendments
-
IF the app is a continuation under [1.53(b)] that accidentally left out its priority
information  THEN the examiner cannot add that priority information himself.
*Note: Only Examiner’s Amendment is allowed to use interlineations (the only other thing is
you changing an O/D by hand w/ interlineations). *
Issue Fee:
-
IF you get a Notice of Allowance  THEN you have 3 months to pay the Issue Fee +
any formal Drawings that haven’t been submitted yet [MPEP 1309]
o Late payment of Issue Fee:
 You cannot ask for an extension of time [1.136] to pay the Issue Fee
late—instead you must file a [1.137] petition + [1.137] petition Fee to ask
the PTO to accept your late payment.
o Late submission of formal Drawings:
 You have to submit these at the same time you submit the Issue Fee.
Notice of Allowance:
-
Reasons for Allowance:
o If you get a Notice of Allowance, the examiner may choose to tell you the reasons
behind his Allowance.
 You can choose to respond to this if you want.
-
Deferring Issuance:
o IF you want to defer Issuance  THEN
 You can only do it after you get a Notice of Allowance (duh) and



-
You can only do it you’ve paid the Issue Fee (b/c until then you don’t
really have anything to defer!)
You must file a Petition to Defer Issuance [MPEP 1306]
You can only defer Issuance for up to 1 month—unless there are
extraordinary circumstances (which don’t include anything about foreign
filing, more time for filing CIP, or more time to negotiate patent licenses)
Withdrawing from Issuance:
o If you do this before paying Issue Fee  THEN
 You must show good reason for doing so AND pay a Withdrawal Fee
 OR you can just file a continuation before the parent abandons
o If you try to do this after paying the Issue Fee  THEN only the PTO can
actually withdraw your app after you paid the Issue Fee
Possible Repeat Question (2010):
Test takers report a question involving the use of red and black ink on an examiner’s
amendment. Can an examiner use clean black ink to make an amendment in something related to a
reissue. “Clean red ink” (not clean blue or black ink) must be used in correcting originally filed
papers. [MPEP 1302.04Examiner's Amendments and Changes [R-3] – 1300 Allowance and Issue]
The question appears to be asked in the form “which is not correct”. Thus, the answer was using
black ink (should be done with red).
Other References to Red Ink in the MPEP –
 Red Ink is generally not allowed, but only used for IFW (Image File Wrapper) purposes (see
714.17).
 37CFR 1.530(d)(3) “showing the proposed changes in RED for approval by the examiner”
 MPEP 605.04(g): When the request is granted to add or delete inventors under 37 CFR 1.48,
the change should be noted in red ink in the left margin of the original oath or declaration.
[MPEP 1400]- Correction of Patents
*Know the difference between Certificate of Corrections vs. Reissues vs. Reexaminations*
Standard of Error:
-
IF you make a substantive mistake on some procedure during prosecution  THEN
fixing it must follow: (a) unintentional/unavoidable error excuse or the (b) error w/o
deceptive intent.
o There is no “oops, I changed my mind about what I said before” standard!!!
Reissue [MPEP 1401] requirements:
-
(Owner) Owner of the patent can request a reissue if they think their patent was issued
(incorrectly but in good faith) wholly/partially inoperative/invalid
-
(Narrowing claims)
o IF the RI app is trying to narrow claims or at least NOT trying to broaden claims
  THEN it must be signed by the assignee or the inventor
-
(Broaden claims)
o IF the RI app is trying to broaden claims
  THEN the RI O/D must be signed by all inventors
  THEN it must be filed within 2 years of the original patent
-
(Surrender) RI app must have a Formal Offer to surrender the original patent
-
(Copy of Original) RI app must have a copy of the original S&C (w/ brackets for
deletions and underlines for additions)
-
(Fee) RI app must have a RI Fee
-
(Consent)
o IF the original inventors signed the original O/D  THEN the assignees must
show their consent to the RI app.
o IF the assignee signed the original O/D  THEN the assignee doesn’t have to
show their consent to the RI app.
-
(RI O/D) [CFR 1.175]
o Must state that the applicant believes the original patent is wholly/partially
inoperative/invalid b/c of one of those 4 reasons
o Must state that all errors were made w/o deceptive intent
 IF there are any additional errors that are not covered by the original O/D
 THEN you have to file a Supp. O/D
-
(Drawings) RI app must have brand new drawings [MPEP 1413]
-
(RI IDS) An RI IDS is optional, but if you file it you must do it at the same time that you
file the RI app—not 3 months after the RI issues [MPEP 1441]
Why file a RI app? [MPEP 1402]
-
B/c current claims in patent are too broad/narrow
-
B/c you failed to properly claim priority in the original patent
o You must remake all previously-made foreign priority claims in your RI app
(even if you properly claimed priority in the original app), but this time around
you don’t have to submit a certified copy of the foreign app that you’re claiming
priority from.
-
B/c you the original disclosure is incorrect for some reason
-
B/c you failed to refer to a co-pending app in your patent
What can’t you do in a RI app?
-
You can never add new matter!
You cannot get a RI if the original failed [112] to begin with
Only the patent owner—not a 3P—can file a RI app [MPEP 1412]
How to amend RI claims? [MPEP 1453]
-
-
You can amend RI claims after filing the RI app:
o By submitting a description of the claims, OR
o By submitting an entire claim with underlining (additions) and brackets
(deletions)—as long as these changes encompass ALL the changes made in the
original patent [CFR 1.121]
Amendments must state the status of each claim
Public Access to RI apps:
-
RI file is public and can be accessed while it’s pending (b/c the patent undergoing the
reissue has already been issued, so why should we hide the reissue app)
RI oral hearing is public
RI interview is private
RI Restriction Practice:
-
In RD, restriction practice cannot be done on the original matter, but can be done on the
new matter in order to separate it from the original matter (b/c you cannot add new matter
to an old app!)
RI in Continuing Apps:
-
IF you file a continuation of a RI under 1.53(b) or (d)  THEN you must file a new O/D
for that continuation of the RI that says “there’s an error in the parent patent and it still
hasn’t been fixed by the RI.”
E.g.: You do restriction practice on an app by electing one invention and cancelling/withdrawing
the other inventions. Later, you can NOT broaden those cancelled/withdrawn claims b/c you got
rid of them willfully as a result of the restriction practice.
- IF you had gotten rid of that information as a result of restriction practice  THEN you
could’ve applied to broaden the claims in your RI app.
3P Intervening Rights:
-
You get an app. 3P starts doing something that’s not infringing on you. But then you file
a Reissue to broaden your claims—thus making those 3P activities infringing.
o Royalty Rule: You cannot now sue the 3P for the past infringement b/c they have
intervening rights—their past activity wasn’t infringement and so they don’t have
to pay for it and may even be able to continue doing that activity!
RI (Re-Issue)
Only the patent owner can file a RI
When applicant files, they can ask for any kind
of p.a. to be reviewed
If applicant wants to broaden claims, they have
to file within 2 years of the original issue date
Applicant can get auto extensions [CFR
1.136(a)]
There has to have been a mistake in the
original issuance of the patent
Applicant can always withdraw a RI once
started
RE (Re-Exam)
Anyone can file a RE
When applicant files, they can only ask for
patents and printed publications to be reviewed
[102(a) or (b) or (e)]
RE doesn’t do any broadening/narrowing of
claims—it’s just a review of the same app all
over again
Applicant cannot get auto extensions
There doesn’t have to be any mistake in the
original patent issuance
Applicant cannot withdraw a Re-Exam once its
started
Multiple Re-exams of the same patent may be
merged.
Once you get a Re-exam issued, you do NOT
have to pay an Issue Fee
At the end of a Re-exam, the examiner will file
a Reason for Confirmation/Patentability
Certificates of Correction:
When to file a Certificate of Correction? [MPEP 1480]
-
-
Use this for minor errors
o Inventorship
o You can file a Certificate to fix priority—as long as you made the correct priority
claim in the parent app…
 If you didn’t actually make the priority claim in the parent, then you have
to file a Re-Issue to assert priority.
You can file this for free if the PTO messed up something [MPEP 1481]
Disclaimers:
Disclaimer of claims:
-
Use this to renounce (give up) a claim that has been issued but is actually invalid w/o
deceptive intent.
Pay a Disclaimer of Claims Fee
Make a Disclaimer of Claims in writing
Terminal disclaimer of patents (not claims):
-
Use this if you have two identical patents and you want to give up one a portion of their
patent terms in order to overcome a obviousness-type double-patenting rejection.
Disclaimer of subject matter:
-
Use this if the applicant:
o Didn’t make the claims in his app that were suggested for an Interference
o Didn’t copy a claim in his app for the purpose of an Interference
o Didn’t respond to a rejection (or appeal the rejection) of a claim that was copied
for an Interference
*Note: Only patent claims can be “disclaimed;” and only app claims can be “cancelled.” *
[MPEP 1500] Design Apps:
Acceptable design patent claims:
-
“The ornamental design for a squirt gun as shown and described in the drawing [MPEP
1505]
Unacceptable design patent claims:
-
“A design for the device as shown and described.”
“The device substantially as shown and described.”
“The aesthetic appearance of the device as shown in the Spec.”
Priority of Design Apps:
-
YES design apps can claim priority from prior NON-PROVISIONAL utility apps only—
not prior provisional apps!!!!
[MPEP 1800] PCT Apps
Abstract of PCT App:
-
IF a PCT app is missing an Abstract (of if the Abstract is defective), and the applicant
doesn’t fix that shit within a specific time limit  THEN the International Search
Authority (ISA) can make one itself!
o The applicant then has 1 month from the date the International Search Report
(ISR) is mailed to him to review, comment, and/or fix the ISA’s version of the
Abstract [MPEP 1826] [PCT Rule 38.3]
-
Abstract should indicate the field of invention, describe what the problem was in the
world and how this invention fixes it, the gist of the invention.
o Abstract should NOT have any superfluous language, legalese, or anything about
the merits of the invention.
Note: A FFL is NOT required to file a PCT app in the USPTO, but may be required before the
applicant/PTO can forward a copy to the foreign patent office (SMS, PCT, FFL) [MPEP 1832].
Possible Repeat Question (2007):
Specifically, one test taker reported a question about the International Searching Authority writing
someone’s abstract and what could be done to amend it when the applicant didn’t think it was well
written.
- ANSWER: The International Searching Authority shall establish an Abstract (if missing),
and the applicant may within one month from the date of mailing of the international search
report, submit comments on the abstract established by the International Searching
Authority.
- The answer is different if it does not specifically hinge on a PCT Rules (red herring –
International Searching Authority) from [MPEP 1800].Generally, USPTO procedure is that
the examiner will not supply an abstract if one is absent, but the examiner may revise an
abstract if the application is otherwise in a condition of allowance. [See MPEP 608.01(b)]
*SEE HANDWRITTEN NOTES*
[MPEP 2000] Duty of Disclosure
*Know that the duty to disclose extends beyond the inventors who have signed the O/D and the
patent agent…to every other person who is associated w/ the filing and prosecution of the app.*
Who has the Duty to Disclose?
-
Anyone connected in the chain of communication to the PTO has this duty:
o Each inventor
o Each attorney/agent
o Every else associated w/ the inventor, the assignee, or w/ anyone to whom there is
an obligation to assign the application
-
You discharge this duty by handing over info to the attorney of record
Materiality of the Info under Duty to Disclose:
-
The info you disclose must be material:
o Goes towards patentability ([101], [102], [103]…)
 Even prior art that can be easily overcome must still be disclosed.
o Goes against your previous arguments made to the PTO
*Note: CAFC has a different standard of what “duty” is. While the PTO shifts the duty to you,
the CAFC shifts it to whatever the PTO thinks is important (i.e.: everything!)*
[MPEP 2100] Patentability
***Note: If you want to submit [1.132] or [1.131] affidavits to argue against any of these
Rejections…you can do so ONLY if you have facts to back it up. If the fact pattern doesn’t
suggest that you have any additional facts for the examiner to (re)consider, then don’t select the
choice to submit a [1.132] or [1.131] affidavit. ***
Patentable Subject Matter
Living Subject Matter:
- Diamond case said microorganisms produced by genetic engineering may be patentable
subject matter b/c it is a human-made product of nature
Computer-Related Inventions:
-
IF it’s a computer-related invention  THEN it must be associated w/ a machine in
order to be patentable—otherwise it’s protected under copyright law, not patent law.
-
Examiners evaluate computer-related inventions by:
o What does the program do?
o How does the computer have to be configured to do that?
o Computer program vs. other part of computer?
-
Computer-related inventions do have to be enabled under [112]—a PHOSITA has to be
able to make/use the invention w/ some reasonable experimentation.
Limitations on Patentable Subject Matter:
-
Only machines, manufactures, compositions of mater, or processes can be patented.
-
Non-statutory subject matter:
o (Computer-related inventions) Functional descriptive material like data structures
and computer programs which have functionality when encoded on a computerreadable medium are not patentable.
o (Computer-related inventions) Nonfunctional descriptive material like music,
literary works, and other arrangements of data are not patentable.
-
Statutory subject matter:
o “Machine” is a concrete thing that has parts or devices (or combination of
devices)
o “Manufacture” is the production of things from raw/prepared materials by giving
these materials new forms, qualities, properties, or combinations—either by labor
or machinery.
o “Composition of matter” is a composition of two or more substances to make a
composite article in the form of a gas, fluid, powder, or solid—either by chemical
union, mechanical mixing.
“Intended Use” or “Field of Use” Statements
o You cannot use claim language that simply specifies an intended use or field of
use for the invention, b/c that doesn’t actually limit the scope of the claim!
-
Utility/Useful Rejections:
Wholly Inoperative Inventions; “Incredible” Utility:
-
Invention must have some legal utility (some illegal utility is okay, too but that cannot be
the only utility!) in order to pass this requirement.
-
IF the invention has no credible/realistic utility  THEN it is not patentable
o E.g.: perpetual motion machine, flapping function
-
Utility doesn’t have to be explicitly stated—just reasonably ascertainable by a PHOSITA.
-
Claims can be rejected for having an improper connection between elements of the
invention.
o NO: “Means for lifting a horse onto a truck, comprising: (i) …., (ii)…., and
(iii)….”—but none of the claims form a connection to a lifting machine!
Relationship between [112] 1st Paragraph vs. [101]:
-
[101] problems usually mean [112] problems, b/c you can’t accurately describe how to
make/use something that has no utility.
Claimed Invention is the Focus of the Utility Requirement:
-
An Independent claim’s utility generally carries over into its dependent claim.
o Sometimes the Independent claims’ utility is different than the utility of the
Dependent claims!
-
What the applicant asserts as his inventions’ utility must be very specific
o NO “This compound may be useful in cancer treatment.”
o YES “This compound treats cancer by doing X.”
Claim Interpretation:
-
Examiner should interpret claims as broadly as possible within the scope of the
disclosure.
Plain Meaning:
-
Examiner should give the claim language its “plain meaning” as its understood by a
PHOSITA—unless the applicant explicitly says they should be interpreted another way
[MPEP 2111]
o Applicant can be his own lexicographer—as long as he doesn’t give stupid or
confusion definitions for words
o IF you used words and phrases in your claims that can be supported by the Spec
 THEN the examiner cannot reject these claim for being “vague and indefinite”
just b/c the examiner thinks you could’ve used more specific words and phrases—
examiner must accept w/e language you set forth.
Preamble:
-
How much weight the examiner should give to the Preamble depends on what it says:
o IF the preamble “breathes life into the claims” or is “essential” to point out what
the claim means  THEN the Preamble is very important and can read
limitations into the claims
o IF the Preamble just says the purpose and field of invention  THEN it’s not as
important and doesn’t read limitations into the claims.
-
Do NOT include “means” in your preamble.
o NO “Means for lifting a horse onto a trailer, comprising: (a) a sling for attachment
to a suspended winch, for placing beneath the horse…”
*Note: In a Jepson claim, the Preamble is always a limitation.*
Transitional Phrases:
-
“Comprising” means “including,” “containing,” or “characterized by” and is an openended transitional phrase that may allow other (un-recited) elements/steps to be read into
the claim.
-
“Consisting of” is a closed transitional phrase that excludes other stuff from being read
into the claim.
-
“Consisting essentially of” is a medium transitional phrase (used mostly when you have
active ingredients) that limits the claims to elements that don’t have basic novelty.
New Uses of Known Compounds:
-
Something that’s old doesn’t necessarily become patentable if you’ve now suddenly
discovered some new property of it.
-
IF you find a “new” use for something that already exists, and that use is already within
PHOSITA’s knowledge  THEN the claims of this “new “ use are not patentable.
o New and nonobvious use of existing things may be patentable!
-
For chemical claims, remember that identical chemical compositions have exactly the
same physical properties—structure and function are inseparable.
o If the prior art teaches the same exact chemical structure as the current invention,
then the properties that the current invention claims are also obvious under [103].
Product-by-Process Claims:
*Note: If you see a product-by-process claim on the exam, it’s probably the wrong answer b/c
you generally should be claiming the process in those claims.*
-
For product-by-process claims, the patentability of the product doesn’t depend on the
process used to make it—but rather on whether the product itself is obvious or not.
o E.g.: “A fertilizer prepared according to the following process: chopping and
cooking planti cokius and mixing the chopped and cooked plant w/ whiskey.”
*Note: Enablement of claim doesn’t depend on what type of prior art the disclosure talks about.
You need the same level of disclosure for all claims, regardless of what type of prior art is at
issue.*
Abandoned Non-Provisional and Provisional Apps as Prior Art:
-
Abandoned apps can be used as prior art if they’ve been referenced in the disclosure of
another app, or in a publication, or by the current inventor’s IDS [MPEP 2127]
Apps that have Issued into US Patents as Prior Art:
-
Remember, [102(e)] prior art must be published in order for it to be effective as prior art.
ONLY the info that’s actually published is used as prior art—any cancelled/withdrawn
stuff that hasn’t been published cannot be used as prior art.
o Cancelled matter only becomes prior art on the date the app issues into a patent,
b/c that’s the date when the File Wrapper becomes publicly available.
Printed Publications as Prior Art:
-
A “printed publication” is a reference if it is publicly accessible (the date the publication
is received by the public is what’s important, not necessarily the date the thing was
printed!)
o “Public accessible” means reasonably publicly accessible—the publication has to
be disseminated or made publicly available to the extent that an interested
PHOSITA could find it using reasonable diligence [MPEP 2128]
Level of Public Accessibility Required for a Printed Publication to be Prior Art:
-
-
In re Hall says even one single reference that was meaningfully organized in a foreign
library still counts as prior art [MPEP 2128]
o “Internal documents” that are meant to be confidential cannot be used as prior art
b/c they’re not meant to be publicly available.
Papers that are orally presented at a lecture become a “printed publication” that can be
used as prior art as soon as it’s written and becomes publicly available.
Admissions as Prior Art:
-
Any admission that the applicant makes can be used as prior art [MPEP 2129]
o IF you say “Yes, that work of mine is prior art,”  THEN that shit automatically
becomes prior art that can be used against you (even if it doesn’t fit into any of
the [102] categories)—but you can later deny this.
o IF you say, “Yes, that other person’s work is prior art,”  THEN that shit
automatically becomes prior art that can be used against you (even if it doesn’t fit
into any of the [102] categories), and you cannot later deny this!
 E.g.: Jepson claims have preambles that are like admissions which can be
used as prior art.
Genus-Species as Prior Art:
-
A species anticipates a genus!
o E.g.: IF the prior art discloses a species that falls within the genus that’s being
described by the current invention  THEN the genus in the current invention
has been anticipated.
Anticipation of Ranges from the Prior Art:
-
IF a specific example in the prior art is within a claimed range  THEN that prior art
anticipates that entire range.
-
IF the prior art teaches “with sufficient specificity” a range that’s “within, overlapping,
or touching” the range that’s being claimed in the prior art  THEN that prior art
anticipates that claimed range.
Non-Analogous Prior Art:
-
Applicant cannot argue that [102] prior art is non-analogous b/c it actually teaches away
from their claimed invention—you can’t mix [103] arguments w/ [102] like that! [MPEP
2131]
Factors of “Commercial Exploitation” under [102(b)] “on-sale” Bar:
-
Look at the subjective intent of the person doing the “on-sale” action by using objective
evidence.
o Did the person prepare commercial documents?
o Did the person prepare price lists?
o Did the person charge people to use the invention?
o Did the person display samples/prototypes to the public?
o Did the person advertise the product?
-
“Offer for sale” doesn’t mean the product has to be actually sold, or that it has to be
commercially made, or that the offer price was only estimated.
Factors for Experimental Purpose (as a [102(b)] exception):
-
-
Invention is such that it has to be publicly used in order for it to be tested (e.g.: concrete)
o Inventor is allowed to test the product in order to improve it
o Inventor CANNOT use the product to do some market testing
The experimental use was done only for a while
The experimental use was always done under supervision in controlled environments
The inventor regularly inspected the experimental use
o Inventor should have sufficient control over the invention during the experimental
use
-
There were restrictions placed on the people doing the experimental use
There were restrictions placed on the people making the sales/offers for sale
The experimental use was for a specific period of time—not too long!
The people doing the experimental use had to report back w/ the inventor.
Inventor disclosed how to NOT use the invention based on his earlier experimental use.
Inventor collected experimental use data
Note: Even if a 3P “uses” or does an “on-sale” activity of the invention, the inventor could be
barred under [102(b)], even if the inventor did experimental use.
- E.g.: 3P can steal the invention and offer to sell it!
Inventorship:
-
Inventor is someone who contributed to the CONCEPTION of even one element of a
claim [MPEP 2137]
Inventor doesn’t have to actually RTP it!
Requirements for Joint Inventorship:
-
Inventors don’t have to have physically worked together at the same time on the
invention
Inventors don't have to have contributed equal proportions to the claims
Inventors don't have to have contributed to the subject matter of each and every claim.
Conception:
-
“Conception” is the complete performance of the mental part of the inventive act [MPEP
2138]
Reduction to Practice:
-
Actual RTP
o Invention must work for its intended purpose—but it doesn’t have to be
commercially ready just yet.
 Some inventions are so simple that they don’t have to actually be RTPed.
-
Constructive RTP
o Happens by filing the invention.
“Reasonable Diligence” (see time charts of [MPEP 2138.01])
-
[102(g)] first to conceive but last to RTP situations:
o You don’t have to drop everything to RTP your invention
o The time period is FROM the time just before the first RTPer entered the field TO
the time when the first conceiver finished RTPing.
o Look at the affirmative acts (or acceptable excuses) the inventor made during that
time period
o The inventor’s diligence must be related to the RTP of the invention somehow!
*Note: What happens from RTP to filing date doesn’t matter.*
[103] Rejections and Inoperative Prior Art:
[103(a)] “A patent may not be obtained through the invention is not identically disclosed or
described as set forth in [102], if the differences between the current invention’s subject matter
and that of the prior art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a PHOSITA. Patentability shall not be negatived by the
manner in which the invention was made (eureka/accidental inventions are okay!).”
-
Examiner should use the references that are disclosed by the applicant (and the ones that
the examiner finds himself) for ALL that they teach a PHOSITA about the invention—
even if that prior art doesn’t teach a working device.
o E.g.: Prior art is inoperative for what it does, like breathing into a paper bag for
lift-off. Still, this prior art can be used to invalidate a therapy method claim that
involves breathing into a paper bag for something.
[103] Obviousness involves looking at:
-
(i) whether there was a reasonable suggestion for a PHOSITA to combine the references
w/ a reasonable expectation of success?
-
(ii) what the invention as a whole really is
-
(iii) Obviousness secondary considerations (Graham factors)
-
(iv) [102(e), (f), (g)] prior art cannot be used as a [103] reference (post AIPA) if the
subject matter of that prior and the current invention were owned by the same person (or
at least assignable to the same entity) at the time the invention was made.
[103] Obviousness Graham Factors:
-
Examiner should consider the scope & contents of prior art
-
Examiner should look at the differences between the prior art and the current invention
-
Examiner should use prior art (and even post-art) to figure out the PHOSITA’s skill level
-
Examiner should look at the Graham secondary considerations:
o Commercial success
o Long-felt need
o Failure of others
o Copying by others
o Licensing success
o Skepticism of experts
o Unexpected results
-
Examiner should consider the invention as a whole
-
Examiner should see if the references (as a WHOLE) suggest the desirability of the
current invention—if they do, then it’s obvious.
-
Examiner should look at the references w/o hindsight
-
Examiner should see if there’s any reasonable expectation of success in combining the
references to make the current invention
-
Examiner must explain the obviousness rejection clearly and with specificity.
*Note: Examiner always has to look at objective evidence.*
E.g.: Coffee table design was found to be obvious b/c the prior art of other furniture besides
coffee tables (like circular tables and desks) fell reasonably within the PHOSITA’s skill level for
a PHOSITA to have come up w/ the current design.
Common Examples of Obviousness [MPEP 2143]
-
(Combining) Combining prior art elements using known obvious methods to get obvious
results
-
(Substitution) Substituting one prior art element w/ another to get obvious results
-
(Known technique) Using an obvious technique to improve something in an obvious way
-
(Predictable results) Using an obvious technique to improve something to get obvious
results
-
(Obvious to try) Trying something “new” that actually would’ve been quite obvious for a
PHOSITA to have tried.
-
(Parallel field of work) Using something from one field of technology in another field of
technology in a way that a PHOSITA would’ve done
-
(TSM Test) There is some TSM in the prior art for a PHOSITA to combine them w/ a
reasonable expectation of success to create the current invention
-
(Chemical structure + function) If the prior art is a chemical structure that’s very similar
to the current invention, then the prior art probably anticipates the structure and function
of the current invention, b/c chemical compounds’ structure + function are tied.
How to Determine PHOSITA Skill Level:
-
Education level of the inventor
Education level of people who work in this field
Pace that the technology is improving
How complicated is the technology in this field
What the prior art’s solutions to similar problems that the inventor was trying to solve
Post-Date References may be used to find PHOSITA Skill:
-
-
Examiner can even use prior art that’s not even “prior” art—just for obviousness
purposes, as long as that prior art is at least minimally available to the public! [MPEP
2124]
References that don’t qualify as prior art b/c they post-date the current invention may still
be used to show what the level of skill was for a PHOSITA (e.g.: secondary
considerations of [103] analysis) around the time the invention was made.
[112], 1st Paragraph Rejections:
Spec must show CLEARLY and with SPECIFICITY exactly what the inventor is claiming (so
the public knows what infringement is).
Spec must have: (1) Written Description (includes Claims); (2) Enablement; (3) Best Mode
Written Description [MPEP 2163]
-
Written Description must convey w/ reasonable clarity to a PHOSITA of what the
invention actually is.
-
Exemplary language is never allowed b/c it’s not clear what your invention is from this.
o NO: “A mixture comprising ingredients and compound Y in the proportion of 3060% by weight of the total mixture and preferably 57%.”
-
Claims are given their broadest interpretation in light of the supporting disclosure
-
Spec Disclosure can be express, implicit, or inherent—as long as a PHOSITA can
understand it to be what you mean.
o Examiner should use the S language—but they cannot read into the claims
limitations that are there.
-
Examiner has to consider a claim w/ all of its limitations.
***THE SUBJECT MATTER BEING CLAIMED IN THE CLAIMS MUST ALREADY BE
“SUPPORTED” BY THE DISCLOSURE IN SOME REASONABE WAY. Never New
Matter!***
Common Situations of Inadequate Disclosure [MPEP 2163]
-
All amendments or additional claims must be supported by the original disclosure
[MPEP 2163.03]
-
To claim US priority, the prior app must disclose the subject matter of the current app
and whatever it’s currently claiming
-
To claim foreign [119(a)] or provisional [119(e)] priority, the prior app must support the
claims in the current app.
-
Disclosing a class of compounds is not the same thing as claiming a specific compound
within that class of compounds.
-
IF the scope of the claims are broadened or narrowed in a way that’s not supported by the
original disclosure  THEN this is no good—just like adding new matter!
o E.g.: Disclosure said 25-60%. Amendment said “at least 35%.” This is no good
because it puts an upper limit that the disclosure doesn’t support!
-
The scope of the claims can be inferred by looking at what a PHOSITA would believe it
to be.
Amending Spec to Include Claimed Subject Matter
-
IF an app, as originally filed, contains a claim that discloses material which is NOT
disclosed in the rest of the S  THEN the applicant can amend the S to include the
claimed subject matter.
-
IF your Claims disclose something that your Spec does not  THEN:
o This is okay b/c at least that information is still part of your original disclosure…
o This is NOT okay b/c you’ll get a [112], 1st Paragraph rejection for not having a
description (in the Spec) of whatever it is you’re claiming
 You can fix this by:
 Re-filing the app, this time including the new information (this is
costly!)
 Eliminating the subject matter from the claims, and narrowing your
claims (but what if you actually want to claim it!)
 Amending the Spec by submitting a new Spec that includes the
new information (this is a drastic change to your app!)
 Amending the Spec by adding that new info to it (most efficient!)
Enablement:
-
Enablement in computer-related inventions is slightly different than in other inventions.
-
Applicant has to clearly describe how a PHOSITA can make/use the invention w/o undue
experimentation—so the public can understand exactly what infringement entails.
o “Undue experimentation” is determined by looking at:
 the breadth of the claims
 the nature of the invention
 the state of the prior art
 the PHOSITA’s level of skill
 how predictable prior art was
 how much instruction was given to the inventor
 the existence of working examples
 how much experimentation is needed to make/use the invention
Making the invention:
-
The method disclosed for making/using the invention as it’s disclosed must be reasonably
correlated to the entire scope of the claims—it’s okay if this method is inherent.
Working Example:
-
Applicant doesn’t have to provide a working example to satisfy enablement [MPEP
2164]
Obviousness v. Enablement:
-
IF the existing skill/knowledge in the prior art is a lot  THEN you don’t need to
explain your invention a lot (b/c it’d be more obvious to a PHOSITA already).
o The more predictable (according to PHOSTIA) the prior at is, the less enablement
is needed in the app!
Spec must be Enabling as of the App’s Filing Date: [MPEP 2164]
-
Whether the S would’ve been enabling depends on the nature of the invention, the state
of the prior art, and the PHOSITA’s skill level.
Examiner shouldn’t use post-date prior art to say an invention is non-enabling (although
post-date prior art may be used to determine PHOSITA skill level under obviousness)
Entire Scope of Claims must be Enabled:
-
Everything within the scope of the claims (which are given their broadest possible scope)
must be enabled [MPEP 2164]
Inoperative Subject Matter:
-
Just b/c the applicant claims an inoperative embodiment within his claim scope doesn’t
mean that the claim is invalid for failing enablement—the examiner always has to ask:
“Could a PHOSITA normally recognize which embodiments were operative and which
weren’t?”
o If so, then the claim is still enabling!
Critical Features must be Claimed:
-
IF the S has a critical element but the applicant doesn’t actually claim it in the language
(explicitly, implicitly, or inherently), or the applicant just makes that thing “optional” 
THEN the claim is not enabled b/c a PHOSITA wouldn’t know how to make/use it.
Best Mode Requirement:
Inventors can’t just tell the public what the second-best embodiment of their invention is (while
keeping to themselves the best embodiment) [MPEP 2165]
How is Best Mode Determined?
-
First: what is the invention?
-
Second: the app doesn’t have to give a specific example of the invention’s best mode—
it’s okay if the applicant just gives a range of conditions/reactants that could let a
PHOSITA use the invention in its best mode.
-
Third: applicant doesn’t have to update the best mode in a child app—it’s okay to use the
same best mode from a parent app
-
Fourth: applicant doesn’t have to explicitly point out which one of their embodiments is
the “best mode.”
***Note: The standard for determining Best Mode is whether the applicant disclosed the best
mode under [112] 1st Paragraph that is known to the inventor—not known in the art for
practicing the invention!***
[112] 2nd Paragraph Rejections:
Two requirements [MPEP 2171]
-
SUBJECTIVE ANALYSIS: The claims must set forth the subject matter that the
applicant regards as his invention.
-
OBJECTIVE ANALYSIS: The claims must particularly point out and distinctly define
the bounds of the subject matter that is to be protected by the patent grant.
o Every term must be clearly defined from the S or the prior art at the time of filing.
o Applicants can be their own lexicographers, as long as it’s reasonably done.
Clarity of Claim Language [MPEP 2173]
-
This has to be determined by asking:
o What’s been disclosed?
o What does the prior art teach?
o How would a PHOSITA interpret it?
Relative Terminology:
-
Some claim language can be acceptably imprecise:
o E.g.: “About”, “Essentially”
-
Some claim language is too imprecise:
o E.g.: “Substantially”, “Type,” “Similar,” “Relatively”
*Note: Claim language MUST be consistent w/ Spec and prior art.*
Numerical Ranges in Claim Language:
-
It’s ok for applicant to use specific numerical ranges in their claim language, but some
formats are not acceptable:
o E.g.: “A temperature of between 45 and 78 Celsius, preferably between 50-60
Celsius” is imprecise b/c of “preferably.”
 Exemplary language is never allowed.
Exemplary Claim Language
-
Some “for example” claim language can be imprecise under [112] if they’re
contradictory:
o E.g.: “R is halogen, for example, chlorine.”
o E.g.: Material such as rock wool or asbestos.”
o E.g.: Lighter hydrocarbons, such, for example, as the vapors of gas produced.”
Claim Language must have Antecedent Basis:
-
Newly introduced limitations/terms must have the word “an” or “a” before it.
o You can’t say “said lever” if you previously introduced two different levers—you
have to specify which one you’re referring to otherwise the claim will be
indefinite under [112].
-
Applicant doesn’t have to use the same exact words in both the Claims and Spec—they
just have to be reasonably clear, consistent, and precise in the eyes of a PHOSITA.
Referring to Limitations from Another Claim:
-
Applicant can refer to a previous claim in order to define a limitation in another claim—
as long as it’s not confusing.
Functional Limitations:
-
It’s okay to use functional language to define a claim—nothing wrong with defining
some part of the invention in functional terms.
Alternative Limitations in Claim Language:
Markush Groups:
-
It’s okay to use Markush groups as long as it doesn’t cause confusion to a PHOSITA.
o E.g.: IF “Wherein R is a material selected from the group consisting of A, B, C,
and D” is a proper limitation  THEN “Wherein R is a A, B, C, or D” is also a
proper limitation.
-
The examiner only has to find ONE member of the Markush group list to be not novel to
reject the entire claim—you can overcome this by simply removing that offending
member from the Markush group list.
Using “Or” in Claim Language:
-
It’s okay to use “or” in claim language as long as it’s not confusing
o E.g.: Wherein R is A, B, C, or D.”
Using “Optionally” in Claim Language:
-
Sometimes it’s ok to use “optionally” language—but it depends on context.
Negative Claims, Lengthy Claims, Prolixity Claims:
-
Negative claims: It’s okay to use negative limitations as long as they clearly and precisely
set forth the boundaries of the invention under [112].
Lengthy claims can be struck down if they’re confusing or indefinite [MPEP 2173]
Prolixity claims: Examiner can strike down unnecessarily excessive claims [MPEP 2173]
Product-By-Process and Product & Process Claims:
Product-By-Process Claims:
-
It’s ok to use product-by-process claim language that defines the claimed product in
terms of the process that was used to make it.
It’s NOT ok to use claim language that claims both the apparatus and the method.
“Use” Claims:
-
Process claims must list every step/element that’s necessary to get the end result.
Balance this with what blanks a PHOSITA would be able to fit in at the time of
invention.
Trademarks in Claims:
-
It’s okay to use TM in claim language—but you cannot use TMs to identify a limitation
or element of a claim.
Omnibus Claims:
-
Omnibus claim language is not allowed b/c it’s indefinite under [112] 1st Paragraph
o E.g.: “A device substantially as shown and described” (w/ no specifics given) is
an unacceptable omnibus claim.
[112] 6th Paragraph Rejections
-
In means-plus-function claim language, examiner must consider the structure that was
disclosed in the Spec as well as the:
o Claim language must have the phrase “means for” or “step for,”
o these phrases must be modified by functional language, and
o these phrases cannot be modified by structure, material, or actions for achieving
the specified function.
-
IF the claim language doesn’t use “means for” or “step for,” but is still a means-plusfunction claim  THEN the applicant should
o EITHER amend the claim to add that language
o OR argue that those terms are unnecessary b/c a PHOSITA would know what
parts would do the function cited in the limitation
Possible Repeat Question (2010):
In January, 2003, Lefty invented a baseball having a titanium core and wrote a typewritten paper
fully describing his invention and how to make it. On March 1, 2003, Lefty gave the paper to a
friend of his who was a member of a private baseball museum which was open only to members,
not to the public in general. The members of the club were wealthy individuals who were baseball
fans, but had no interest in the design, development, manufacture, use, or sale of baseballs. On
March 15, 2003, Lefty’s friend took the paper to the museum and placed it in the library of the
museum, catalogued under Lefty’s name, where several members saw it between March 15 and
March 31, 2003. In January, 2004, the directors of the museum decided to open the museum’s
library to the general public beginning on May 1, 2004, in hopes of attracting additional members. In
preparation for that opening, during the month of March 2004 the books, periodicals, papers, and
articles in the library, including Lefty’s, were catalogued according to subject matter and placed on
the shelves of the library where they became available to the general public on May 1, 2004. On
April 2, 2005, Lefty consulted a registered patent practitioner about filing a patent application on his
invention. Which of the following is the advice that the practitioner should give to Lefty concerning
patentability of his invention?
(A) Lefty cannot obtain a valid U.S. patent on his invention, because the knowledge of Lefty’s
invention by the members of the museum who read and discussed Lefty’s paper in March 2003
constitutes “known … by others” within the meaning of 35 USC §102(a).
- INCORRECT – you can always antedate a [102(a)] rejection
(B) Lefty cannot obtain a valid U.S. patent on his invention, because the placing of Lefty’s paper in
the museum’s library on March 15, 2003, where it was available to the members of the museum,
rendered the paper a “printed publication” within the meaning of [102(b)].
- INCORRECT – we don’t know if the document was reasonably catalogues so the interested
public could find it.
(C) Lefty cannot obtain a valid U.S. patent on his invention, because the cataloguing and shelving of
Lefty’s paper in the museum’s library in March 2004 rendered the paper a “printed publication”
within the meaning of [102(b)].
- INCORRECT – we don’t know if the document was reasonably cataloged on that day so the
interested public could find it.
(D) [102(b)] will not preclude the issuance of a valid U.S. patent on Lefty’s invention, so long as an
application is filed in the USPTO prior to May 1, 2005, because Lefty’s paper did not become a
“printed publication” until the museum library was opened to the general public on May 1, 2004.
- CORRECT – the effective date of the printed publication is May 1, 2005 b/c that is when it
became reasonably catalogued in a way for interested public to access it. The inventor can
overcome this [102(b)] bar if he files before the prior art is more than 1 year old.
(E) Lefty cannot obtain a valid U.S. patent on his invention, because the opening of the museum
library to the public on May 1, 2004, together with the prior cataloguing and shelving of Lefty’s
paper, rendered the paper a “printed publication” within the meaning of [102(a)].
- INCORRECT – you can always antedate a [102(a)] rejection.
If the question asks for the prior art date (Variant 2), then the answer is: the date the paper is
indexed and cataloged so someone can actually find it. If the question asks for the date of first
public use (Variant 1), then the answer is: the date the thing was displayed for museum patrons to
see it, regardless whether the museum is semi-private.
Variant 1 (public use argument) Just go to the MPEP and read the section with Blaisdell and Kuklo (display in a laboratory
constituted public use; doesn’t have to be displayed to those skilled in the art; and no need for all
inner workings to be shown), and you’ll see what they’re testing. [MPEP 2133.03(a) II A. 2] There
were different times when the reference could have gone into effect; in this case the baseball was
displayed to the museum members over a year before the filing date of the application. Thus, it’s a
102(b) bar, due to the “public use” beginning when it was displayed to members of the museum.
Compare to Moleculon (the rubix cube case) where the inventor did not cause a public use by
leaving the cube on his desk.
Variant 2 (printed publication argument/prior art) –
This is not a public use under 102(b) because it is not a use of the invention at all. A reference is
proven to be a “printed publication” “upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that persons interested and ordinarily skilled
in the subject matter or art, exercising reasonable diligence, can locate it.” In re Wyer, 655 F.2d 221,
Date 4 is when the library was indexed, cataloged, and shelved. Based on the section in the MPEP,
that’s what makes the date critical.
MPEP 2128.01, IV. In resolving whether or not a temporarily displayed reference that was neither
distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a “printed
publication” under 35 U.S.C. 102(b), the court considered the following factors: “the length of time
the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of
reasonable expectations that the material displayed would not be copied, and the simplicity or ease
with which the material displayed could have been copied.” (Note that “printed publication” as used
above applies to 102(a) as well.)
[MPEP 2200] Citation of Prior Art & Re-examinations
Citation of Prior Art:
-
Anyone can put into the file history a piece of prior art that they think is relevant to an
existing patent [CFR 1.501]
o Patent owner can put prior art into the file to show the PTO that they’re aware it
exists.
o 3Ps can put prior art into the file to suggest to the PTO that the patent shouldn’t
have issued in the first place!
-
must be done within the life of the patent + 6 years
-
free!
-
copy of the prior art must be given to the patent owner in order to notify him.
-
can be done anonymously.
Re-examination:
-
Anyone can request a re-exam to challenge an existing patent based on patents and
printed publications.
-
Cannot be stopped in the middle! PTO will stop the re-exam by making official the status
of the claims as they were during the re-exam process
o E.g.: If the claims were being rejected, then they will be finalized as being
rejected—and the patent can lose all its claims that way! That’s why you
shouldn’t stop a re-exam.
Process of Re-Exam in Detail:
-
(1) Make a Re-Exam request + pay huge Fee + notify the patent owner
o Identify what claims should be Re-Examed and why
o Explain the substantial question of patentability w/ written affidavits
o Submit copies of each prior art (patent or printed publications) that’s being cited
as the basis for this Re-Exam
o Copy the S and C on one side only
o Show that the re-exam request has been served to the patent owner.
*Note: Once a Re-Exam app has been filed, it cannot be withdrawn (unlike a Reissue)*
-
(2) PTO must determine that there is a substantial question of patentability—using the
prior art that was submitted.
o The issues of the Re-Exam process must be different from those raised in the
original prosecution!
o Refund of fees: If the PTO denies going forward with the Re-Exam, they will
refund your Re-Exam filing Fee (SMS, re-exam, fees, refund) [MPEP 2615]
[MPEP 2647]
-
(3) Patent owner may voluntarily submit a Statement within 2 months (this never
happens), and Re-Exam requestor may respond to this (this never happens).
-
(4) There is an ex parte prosecution between the examiner and the patent owner—the 3P
requestor cannot participate but can observe these proceedings.
o During Re-Exam, the patent file is open to the public (well, it’s a patent so it’s
already publicly available)
-
(5) PTO will issue a Re-exam Certificate w/ the final result of the Re-Exam
Who can request?
-
IF the requestor is the patent owner  THEN the patent owner cannot petition the
Director to do the re-exam if the PTO rejects his re-exam request b/c they didn’t find a
substantial question of patentability
-
IF the requestor is a 3P  THEN the 3P can petition the Director to do the re-exam if
the PTO rejects his request.
Intervening Rights during Re-Exam:
-
3P may have intervening rights in Re-Exam context (just like during Re-Issues and
Interferences)
What can/cannot Patent Owner do during Re-Exam?
-
Owner cannot file continuations for his patent
Only Owner can appeal to BPAI (within 2 months of Final Rejection)—not the 3P ReExam requestor
Owner can correct inventorship
Re-Exams & other proceedings @ the same time
-
Multiple Re-Exam requests (made within 3 months) can be merged, or at least
determined individually in light of the earlier Re-Exam request.
Re-Exams are usually not stopped if there’s an Interference going on at the same time.
Re-Exams and Reissue processes may be merged if they’re happening at the same time.
Re-Exams and Court Cases are usually not stopped if they’re happening at the same
time—b/c courts don’t want to feel like they can’t handle both.
[MPEP 2300] Interferences
*Know about interferences generally, don’t get into the specifics!*
Interferences are about who made the invention first and who deserves the patent.
- Both parties fight over “the count,” which has to be written into each application.
Interference Process:
Copying Claims:
-
Copy some claims from an existing patent or published app into your own app—the
examiner is supposed to see the similarity and declare an interference!
o Identify the claim numbers of the claims you copied
-
You must do the copying within 1 year of the patent being issued or published!
o If you refuse to copy the claim within this time, then you admit that that claim’s
apps is prior art against you.
o If the two apps are only 6 months (or 3 months for simple inventions) apart in
Filing Date  Then the examiner will not suggest copying
Access during Interference Process:
-
Once two parties are in an Interference, each can access the other’s files.
Prior Art vs. Interference analysis:
-
IF the “reference discloses and claims” the invention  THEN use [102(g)] to analyze
o Current inventor cannot use a [1.131] affidavit to swear behind another patent that
claims the same inventions as them—but they can do so to swear behind a patent
that discloses the same invention as them
-
IF the “reference discloses but does not claim” the invention = don’t use [102(g)], but
may use [102(e)], depending on the date of the prior art.
[MPEP 2400] Biotechnology Apps
IF your invention has some biotech in it AND you can’t possible describe it accurately using just
words and drawings  THEN you may have to give the PTO access to it by depositing
materials into the International Depository Authority (IDA) or some other depository [CFR
1.821]
- DNA sequences have to be listed according to the WIPO rules
[MPEP 2500] Maintenance Fees
*Know when the maintenance fees are due, not how much they are.*
Maintenances Fees:
-
Are only due for utility apps—not design or plant apps!
-
Are due for these utility apps every 3.5, 7.5, and 11.5 years after issue
-
Are due within the 6 month window before the due date OR 6 month window after the
due date (plus late surcharge!)
-
Non-payment of Maintenance Fees must be b/c of unintentional or unavoidable reasons:
o IF unintentional failure  THEN you can pay during the grace period + showing
that the delay was unintentional + pay a late surcharge fee
o IF unavoidable failure  THEN you can pay at any time + showing that the
delay was unintentional + pay a late surcharge fee
Method of Paying Maintenance Fees:
-
Can be paid via fax, mail, or EFS
Anyone can pay it
Lapsed Apps for Failure to Pay Maintenance Fees:
-
Can still be revived, but must be done within 24 months of the 6 month grace period for
paying Maintenance Fees
The period between when the grace period expires (6 months after due date) and when
the late payment is made late is when intervening rights can pop up—and nowhere else!
o Remember, the allegedly interfering 3P cannot be stopped for past “infringement”
and may even be able to continue what they were doing b/c of their rights.
*Note: All rules for reviving an abandoned app, reviving a lapsed app that you haven’t paid
maintenance fees for, and paying late Issue Fees are covered by [CFR 1.137]*
[MPEP 2700] Patent Terms and Extensions
Reasons why you could possibly get a PTA or PTE.
jwhite@pli.edu
Patent Terms
-
Patents filed before 6/8/95 – term is greater of 20 years from filing date or 17 years from
issue date.
-
Foreign and provisional priority not counted when determining filing date for term
purposes.
-
Utility and plant applications filed on or after 6/8/95 – term begins on issue date and lasts
for 20 years from filing date.
-
Design patents – term is always 14 years from issue date.
-
Patents resulting from international applications – term ends 20 years from date of filing
international application.
-
CPAs – term is based on filing date of prior application or, for chain of CPAs, filing date
of application immediately preceding the first CPA in the chain.
Patent Term Extensions
*Note: No patent term extension for applications filed before 6/8/95*
Patent term extensions for apps filed on/after 6/8/95 and before 5/29/2000:
-
PTO delay: can be extended 5 years for delays in issuance due to interference; secrecy;
successful appeal.
Pre-market Regulatory Review (e.g., FDA review) 5 years + 5 years (PTO delay).
Patents issued on applications filed on or after 5/29/00, including CPA (but not design or
reissue)
-
no limit on total length of adjustment.
-
Applicant has one chance to request reconsideration of initial determination, but may also
obtain judicial review.
-
If the delay is due to PTO – day by day patent term adjustments for failure to:
o 1) initially act on an app within 14 months;
o 2) respond to a reply or appeal by applicant within 4 months;
o 3) act on app with at least one allowable claim after BPAI or court decision within
four months of decision;
o 4) issue app after issue fee is paid and all other req.’s are satisfied; and
o 5) issue patent within 3 years of actual filing date of app (unless delay is caused
by applicant requested RCE, interference, secrecy order, or appeal).Other delays –
day by day: interferences; secrecy orders; successful appeals to BPAI or fed court.
Limitations on AIPA term adjustments –
-
where overlapping, no adjustment beyond actual days issuance was delayed;
-
adjustment will be reduced by amount of time applicant failed to engage in reasonable
efforts to conclude prosecution; failures include: requesting EOT; failing to file complete
app at date of filing; failure to fulfill national stage req.’s ; app is not in proper form;
filing papers prior to one month before examiner mails office action – necessitates a
supplemental action by PTO; supplemental reply; amendment after NOA; and
-
further prosecution via a continuing app eliminates any adjustments that may have been
accumulated in the parent.
KSR:
KSR vs. Teleflex (2007) updated the rules for obviousness:
- These guidelines do NOT have the force & effect of law—official rejections/objections
will still be based on substantive law and only these can be appealed/petitioned.
Original obviousness rules:
- Consider the Graham factors for whether or not a claim is obvious:
o Scope & content of prior art
o Differences between the claimed invention and the prior art
o Level of skill of PHOSITA
o Secondary considerations:
 Commercial success
 Teaching-suggestion-motivation for the prior art to lead to the current
invention
KSR added that the TSM test is just ONE rationale to use. There are 6 others:
- (1) Combining the prior art elements according to known methods to yield predictable
results
- (2) Simple substitution of one known element for another to obtain predictable results
- (3) Using a known technique to improve similar devices, methods, or products in the eh
same way
- (4) Applying a known technique to a known device, method, or product readyf or
improvement to yield predictable results
-
(5) “Obvious to try” means choosing from a finite number of identified, predictable
solutions, w/ a reasonable expectation of success
(6) Known work in one field may prompt a PHOSITA to do variations of it for use in the
same or a different field based on design incentives or market forces if they are
predictable to a PHOSITA
*Note: KSR doesn’t replace the last obviousness factor (TSM test) with these 6 rationales—the
examiner still has to make the right factual findings in order to apply the 6 rationales properly!!*
Other things KSR case law has added:
- IF the examiner doesn’t make these required factual findings in his Rejection, and the
applicant/attorney points this out in his Response  THEN the examiner must withdraw
his Rejection or re-send it w/ the right factual findings!
-
The prior art doesn’t have to expressly state in some way that the prior art can be
combined to form the current invention—the rationale to combine the prior art can be
expressly or impliedly contained or it may be reasoned from a PHOSITA’s generally
available knowledge, established scientific principles, or some legal precedent.
o Prior art doesn’t have to have an explicit teaching of a motivation to combine the
prior art.
-
Examiners MUST give a reasoned explanation about why the invention would’ve been
obvious to a PHOSITA at the time the current invention was made—that’s the only way
to make a prima facie case of obviousness.
Examiners should be flexible in determining obviousness factors.
KSR rules apply to all types of invention—not just unpredictable areas of technology.
-
Examiner can use a “teaching point” to quickly determine the relevance of the legal
precedent—but he cannot use it as a substitute for considering the entire state of the law.
Combining Prior Art references:
-
IF the problem that existed before the current invention was made (and which caused the
inventor to make the current invention)  THEN the current invention is nonobvious
and passes [103] requirement (In re Omeprazole).
o In this case, the modification of the prior art that had been presented as an
argument for obviousness was actually an EXTRA process step that actually
added an additional component (and greater work/expense) to a known &
successfully marketed formulation. That’s why this is NOT the same thing as
combining known prior art elements A & B—a PHOSITA wouldn’t have known
to add this element.
o In this case, the modification of the prior art wasn’t done in the prior art to solve a
known problem—instead the modification was done for other reasons and it just
happened to solve an unknown problem.
o Note: You always have to look at the facts to draw these conclusions!
-
IF the prior art teaches away from the claimed combination and the combination of the
prior art results in a combination that yields more than predictable results  THEN it
may be unobvious and pass the [103] test (Crocs vs. Trade Commission)
o In this case, a PHOSITA wouldn’t normally add a foam strap to the Aqua Clog to
make the straps not fall to gravity b/c the foam strap was likely to stretch and
deform to cause discomfort for the Crocs-wearer.
o It’s not enough for the examiner to just point out the existence of all claim
elements in the prior art in order to make a [103] rejection.
-
IF the combination of the prior art (which results in the current invention) would
reasonably have been expected to result in the prior art retaining their original properties
or functions after combination  THEN the current invention is obvious b/c a
PHOSITA reasonably expects the elements to maintain their respective properties after
combining them (Sundance)
-
IF a PHOSITA would recognize an apparent (not necessarily explicit) reason to combine
the prior art elements to make the current invention  THEN the current invention is
obvious under [103] (Echolab)
-
Examiner should construe claims broadly and include in his analysis references that are
reasonably pertinent to the problem—and the examiner should also use his common
sense to make a legal conclusion, as long as he explains it! (Master Lock)
-
IF a PHOSITA would have some reasonable expectation for the prior art references to
work successfully when combined  THEN the current invention is obvious
o IF the alleged reason for combining the prior art elements is actually
counterintuitive to solving the problem that the current invention solves 
THEN the current invention is not obvious—b/c a PHOSITA wouldn’t
reasonably do it then!
Mere Substitution of One Element for Another:
-
IF and examiner must consider whether a prior art from a different technological field
can be used to make the current invention  THEN the examiner should consider
whether that prior art is necessary to the problem that has to be solved (ICON Health)
o Just b/c the prior art reference teaches something undesirable, doesn’t necessarily
mean that the reference “teaches away” from the current invention.
-
B/c Internet has become commonplace for communicating and displaying information,
it’s now okay to adapt existing processes to incorporate them for those functions.
o IF market pressures would’ve prompted a PHOSITA to use modern electronics
and modern means (like the Internet) to modify the prior art  THEN the current
invention is obvious (Leapfrog).
-
For chemical inventions: IF it’s obvious for a PHOSITA to believe that a compound in a
mixture was giving the mixture some desirable property and that he could routinely
separate that compound from the mixture  THEN using that compound in the current
invention is obvious (Aventis vs. Lupin)
-
For chemical inventions: IF a PHOSITA would think it’s actually counterintuitive to
modify the compound and there is no real reason for the PHOSITA to modify the
compound in the way the current invention did  THEN the compound prior art
reference is not obvious (Eisai)
o There has to be a reason for modifying the compound and some reasonable
expectation of success in the result from it!
-
For chemical inventions: IF the prior art compound and the current invention have some
structural similarity between them  THEN the examiner has to show that a PHOSITA
would have some apparent (not necessarily explicit) reason to modify the prior art
compound in order to arrive at the claimed compound in order to make prima facie case
of obviousness.
“Obvious to Try” Rationale:
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Examiner can only use this “obvious to try” rationale to make an obviousness rejection
IF there is a recognized problem/need in the existing prior art, and there are only a finite
number of identified & predictable solutions for it, and a PHOSITA could’ve persuaded
these known solutions w/ a reasonable expectation of success.
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IF the claimed invention is a polypeptide, and a PHOSITA knows how to sequence this
polypeptide, how to make a different one from the nucleotide, and had a reasonable
expectation of success in doing so  THEN the claimed polypeptide is obvious under
[103].