Prior Art Search

The term patent usually refers to a right granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

The first step in the process of patenting is the validation of the invention's originality and novelty. Through a comprehensive searching process we will gather the information you need regarding the novelty of your idea or invention as well as providing a summary of similarities with relevant inventions. The search will cover all of US, Canadian, European and World patent archives.

In order patent your invention a patent application must be filed by patent agent at local or regional patent offices. Our experienced patent lawyear will make sure that your invention is patented without any compromises and as quickly as possible.

We are able to patent in the United States and Canada.

Patent infringement is the performance of a prohibited act with respect to a patented invention without permission from the patent holder. Typically, any party that manufactures, imports, uses, sells, or offers for sale patented technology, during the term of the patent and within the country that issued the patent, is considered to infringe the patent.








  1. PATENT APPLICATION


    A patent application must include the following:
    1. A petition to the Commissioner of Patents;
    2. A specification describing the invention;
    3. Claims defining the invention;
    4. A drawing whenever required;
    5. An oath or declaration (can be later);
    6. A government filing fee (can be later);
    7. A model or sample embodying the invention whenever requested.

    From Application to Issuance:
    1. After the patent application is filed in the US PTO, it is sent to an examining group having jurisdiction of the subject matter of the invention.
    2. The patent office gives each application a serial number and a filing date upon the day of receipt and preserves the application in secrecy.
    3. It is assigned to a patent examiner, who examines it when he reaches it in its turn.
    4. The patent examiner writes a letter to the inventor or his attorney about the application and such a letter is called a Patent Office Action.
    5. The inventor must then reply to the points raised by the patent examiner and such a reply is called an Amendment.
    6. As a result of the sequence of Patent Office Actions and Inventor's Amendments, the application is ultimately allowed.
    7. After allowance the final government fee must be paid in order to obtain the issuance or granting of the patent by the PTO.
    8. Since no opposition can be filed after the allowance of an application, an inventor is not subject to additional prosecution by the Patent Office.
    9. If the application is rejected by the patent examiner, an inventor may then make an appeal to the Board of Appeals and, if unsuccessful, make appeal either to the United States Court of Customs and Patent Appeals (US CCPA) or to a United States District Court. 10. If the inventor is successful in his appeal, a patent is granted on his invention.


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    SPECIFICATION

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


    Formal Requirements of Specification

    The following should be included in the specification:
    1. Preamble stating the name, citizenship, and residence of the applicant and the title of the invention;
    2. Abstract of the invention;
    3. Cross-reference to any related and pending application and microfiche appendix;
    4. Statement regarding federally funding research: 35 USC 202(c)(6); MPEP 310
    5. Background of the invention; MPEP 608.01(a)
    6. Summary and general statement of the object and nature of the invention;
    7. Brief description of the several views of the drawings, if the invention is capable of illustration;
    8. Detailed description of the preferred and illustrative embodiments of the invention;
    9. Best mode contemplated by the inventor for carrying his invention into practice;
    10. Claims defining the invention.


    Summary of the requirements of the specification
    1. written description of the invention;
    2. enablement;
    3. best mode to carry out the invention.


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    ENABLEMENT

    Requirements:

    1. written description
    2. enabling a person of ordinary skill
    3. Best mode known to inventor at the time of U.S. filing

        (1) Compliance with the best mode requirement can exist when an inventor
            discloses his preferred embodiment of the invention.
        (2) Whether or not a particular disclosure is adequate for best mode is
            determined by comparing it with the facts known to the inventor at the time of filing
        (3) The inventor's failure to disclose particular material, source, or a method or technique
            of manufacture beyond info sufficient for enablement does not automatically result in a best mode violation.
        (4) absence of a specific working example is not necessarily evidence that the best mode has not been disclosed.

    A claim that recites a single means without introducing in combination with other elements can be subject of the enablement 112 rejection.
    If a critical feature is not recited then the claim can be rejected under 112, 1st par.


    Factors to consider for Enablement:

    A. presence or absence of a working example;
    B. Nature of the invention;
    C. State of the prior art;
    D. Relative skill of those in the art;
    E. Predictability of the art;
    F. Breath of the claims.


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    BEST MODE

    The specification must state the best mode. Examiner will assume that the best mode is presented unless evidence shows otherwise.

    1. There is no statutory requirement for the disclosure of the specific example.
    2. Compliance with the best mode requirement can exist when an inventor discloses his
          or her preferred embodiment of the invention.
    3. The inventor's failure to disclose particular materials beyond information sufficient for
          enablement does not automatically result in a best mode violation.
    4. In determining the adequacy of a best mode disclosure, only evidence of concealment
          (accidental or intentional) is to be considered. That evidence must tend to show
          that the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment.
    5. If the best mode contemplated by the inventor at the time of filing the application
          is not disclosed, such defect cannot be cured by submitting an amendment seeking to put
          into the specification something required to be there when the application was originally filed.
    6. Failure to disclose the better mode would not violate the best mode requirement, if
          inventor did not know or did not appreciate the better mode.
    7. No requirement to point out which is the best mode.
    8. No requirement to update the best mode in the foreign priority or continuing application.


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    CLAIMS

    1-All patentable inventions are defined by claims, but described, explained, and disclosed by specification.
    2-The claims have to be directed to machines, articles of manufacture, composition of matter, and processes.
    3-In the formulation of the claim, only operative elements or operations should be included and all inoperative elements or operations should be excluded.
    4-It is essential to exclude what is old in the prior art. However, if the invention involves a new combination, old operations or elements may be included.


    Drafting a Claim

    Every claim has a preamble, a body, and a transition between the preamble and body.
    "I (or We) claim:" or "What is claimed is:"


    1. Preamble:       A. It is the introduction to the claim, but it is rarely given any legal effect.       B. It sets forth the category of the invention, such as device, article of manufacture, process, or composition of matter.       C. Not part of claim limitation except when body of claim refers back to preamble and draws part of its meaning from preamble.

    Examples:
    "a machine for making paper"
    "a process for making semiconductor"
    "a composition for fertilizing the soil"
    "a resistor"
    "a sander"
    "a drill"

    • The basic preamble should remain the same in the dependent claim as in the independent claim.
    • For long preamble, use a shorter form in the dependent claims.
    • In Jepson claims all the elements that are old in the art are set forth in the preamble.


    2. Transitional phrases:
          A. Comprising - this basically means including. It is open ended and additional elements ok
          B. Consisting of - This is the most restricted form. closed. No additional elements allowed. Rigidity is
          relaxed in the case of composition of the matter. There, the presence of trace amounts of additional components that are
          normally present as impurities are allowed.
          C. Consisting essentially of - Additional elements ok if they do not interfere with or contribute to activity of listed elements.
          D. For process claims, use "comprising the steps of:"



    3. Body:     A. List of elements       B. Elements must be interconnected.

    Example: What is claimed is: 1. Apparatus for doing something, comprising:



    An elongated element X; A truncated element Y; and Means disposed between said elements X and Y, for slidably coupling said element X to said element Y.

    Claim punctuation

    1. Comma after preamble
    2. colon after transitional phrase
    3. body: (1) each element gets its own paragraph; (2) semicolon at end of each paragraph; (3) "and" between last two elements; and (4) one sentence.

    Each element must have its own paragraph Otherwise - not clear whether element is included in combination or not - indefinite USC 112, 2nd Paragraph

    Claim grammar

    Every element of a combination to be claimed must be introduced in the body of a claim in the following manner: indefinite article plus name of the element.
    Indefinite articles: a, an, one, two, a plurality of, ….
    Never use "the" when introducing an element for the 1st time.
    In the case of the means-plus-function clause, no article is needed to introduce the element.
    Whenever an element is referred to a second time in a claim, it is preceded by the definite article "the" or "said".
    1. Antecedent basis
    (1) Use "A" or "AN" at first introduction
    (2) Use "SAID" to refer back to previously introduced elements
    (3) Use "THE" to refer back to anything else or to refer to inherent property

    2. No Inferential claiming: A new element should not be introduced in the middle of a recitation or description of another element. For example the following is incorrect: A lever having a forked end with a pivot pin mounted between the furcations of the forked end;
    The correct format is as follows: (a) A lever having a forked end; (b) a pivot pin mounted between the furcations of the forked end;


    Means-Plus Function

    35 USC 112:
    An element in a claim for a combination may be expressed as a means or steps for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.
    1. Means for performing a function
    2. Does not cover all structures for performing function, just those in specification and equivalents.
    3. To read on prior art, prior art must do literal function recited and use identical or equivalent structures:       A. If same function - prima facie showing of equivalent structure.       B. Tests of equivalents: (a) same way, same result (b) interchangeable (c) substantially same manner (d) insubstantial change.
    4.To be proper, it should be drawn to a combination. Incorrect: "A switch comprising means for switching currect"

    Elements
    The purpose of the body of the claim is to define the invention in terms of its elements. The term "element" is used in a broad sense, and denotes the structural parts of a machine or article of manufacture, the steps in a process and the ingredients in a composition of matter. The body of a properly drafted claim contains the following: a. A recitation of the elements of the invention; b. A description of how the elements are combined or are associated with each other; and c. Usually a description of how the elements function and cooperate with one another to make up the operation combination recited in the preamble and to accomplish the results set forth in the preamble.
    I. Explains intercooperation of elements or end result
    II. Whereby, so that, wherein clauses
    III. Must recite structure or steps necessary to support function
    IV. Not required - but ok if III is met

    Narrowing claims by adding element
    1. Each added element to claim narrows claim
    2. Claim with additional element can be in independent or dependent form
    3. Key words for dependent claim "further comprising"

    Dependent claim refers to another claim and therefore includes all of the elements of that claim.
    The following phrases indicate dependent claim:   Further comprising,   wherein

    Narrowing by modifying or qualifying element is the Only other way to narrow the claim. Either further define element or relation between elements.
    Aggregation consist of a number of elements that have no particular cooperation with each other. Such claims are not patentable.
    Combination are elements that work together to generated the wanted result.


    Functional expressions:     "so that", "whereby" , "capable of", "adapted for".

    Definite expression: about, essentially, substantially, type.
    Indefinite expressions: similar, relatively shallow, of the order of, order of about 5mm, substantial portion, oar like material.

    Numerical ranges and amounts limitations
    Generally the recitation of the numerical ranges does not raise issue whether the claim is indefinite. Where the applicant has a narrow which falls within a broader range this may be indefinite. Description of the examples and preferences must be in the references, rather than the claims. Open ended numerical ranges are normally ok.
    at least is ok
    Claim can make a reference to the limitation of another claim.

    Dominant - Subservient
    I. Everything covered by subservient also covered dominant
    II. Dominant-------------------------Subservient
        Subcombination-combination------Genus-species


    Subcombination-Combination
    I. Subcombination is dominant
    II. Create combination by adding element
    III. So combination narrower


    Genus-Species
    1. Genus-family or class
    2. Need two members (species) to have genus
    3. Two species take an element from the genus and define it in two mutually exclusive ways
    4. Disclosure must describe species - genus never illustrated - just an inherent commonality that exists among embodiments or species
    5. Same claim can be genus and species
    6. Genus must have all elements of species


    Negative limitations
    1. Do not use negative limitations
    2. Technically OK
    3. Don't claim holes, apertures, recesses hollows, channels, etc.
    4. Instead define a structure having the feature
    5. Doughnut example:     (A) Bad:   A hole; and dough in a ring surrounding said hole.     (B)Good:  A doughnut comprising: dough in a ring shape defining a hole therethrough.


    Alternative Expressions & Markush Group
    1. Don't use
    2. No "OR" , "SUCH AS"
    3. Replace alternatives with generic language
    4. Technically ok as long as alternatives are equivalent (common property)
    5. Do not use -except for MARKUSH group:   A. use only for chemical elements where there is no generic term.     B. Three forms:   (i) "Chemical selected from the group consisting of A, B, C and D";     (ii) "Wherein the chemical is A, B, C or D";     (iii) Pushing toward "Comprising A, B, C or D";     (iv) Use first two closed forms.     C. Element must have a property in common or produce a product with a common property,     D. Adding words broadens claim     E. Comparing to prior art.     (i) Claim: A, B and C,     (ii) Anticipated by prior art


    Improvement (Jepson-Type) claims
    1. Approved and recommended for improvements
    2. Construction
    A. Preamble - defines what is conventional B. Transitional phrase: "wherein the improvement comprises" C. Body - builds on preamble - can add element or modify element in preamble
    In a device [or method] having element [or steps] A, B, and C, the improvement comprising element [or step] X.
    A device [or method] comprising the combination of elements [or steps] A, B, C, and X.

    Product-by-process claims
    I. Whole structure defined by method of making
    II. Form: A. Preamble - apparatus,     B. Transitional phrase - "made by the process of",     C. Body - method steps.
    III. Covers any structure that is identical to result of process steps (no matter what process was used to male it)
    IV. Burden of proof on applicant to prove structures are different - weak
    V. Don't use to write your own claims
    A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima-facie case of obviousness when a product is claimed in the conventional fashion.

    Mixed Class Claims
    I. Cannot have mixed elements:     A. Method claims - no structural paragraphs,     B. Apparatus claims - no method paragraphs
    II. Can have mixed limitations:     A. Method step may have structure limitation,     B. Apparatus element may have process limitation,     C. Limitation defines or modifies an element
    III. Generally:     A. Avoid method limitations in apparatus claims,     B. Apparatus limitations always found in method claims


    Claim - Multiple dependent
    Acceptable multiple dependent claim wordings MPEP 608.01(n)
    Claim 5. A gadget according to claim 3 or 4, further comprising…
    Claim 5. A gadget as in any one of the preceding claims, in which…
    Claim 3. A gadget as in either claim 1 or claim 2, further comprising…
    Claim 4. A gadget as in claim 2 or 3, further comprising…
    Claim 16. A gadget as in claims 1, 7, 12, or 15, further comprising….
    Claim 5. A gadget as in any of the preceding claims, in which…
    Claim 8. A gadget as in one of claims 4-7, in which….
    Claim 5. A gadget as in any preceding claim, in which…
    Claim 10. A gadget as in any of claims 1-3 or 7-9, in which…
    Claim 11, A gadget as in any one of claims 1, 2 or 7-10 inclusive, in which …


    Unacceptable multiple dependent claim wordings MPEP 608.01(n)

    A. Claim does not refer back in the alternative only:
    Claim 5. A gadget according to claim 3 and 4, further comprising…
    Claim 9. A gadget according to claims 1-3, in which…
    Claim 9. A gadget as in claims 1 or 2 and 7 or 8, in which …
    Claim 6. A gadget as in the preceding claims in which…
    Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5 in which….
    Claim 10. A gadget as in claims 1-3 or 7-9, in which

    B. Claim does not refer to a preceding claim
    Claim 3. A gadget as in any of the following claims, in which…
    Claim 5. A gadget as in either claim 6 or 8, in which….

    C. Reference to two sets of claims to different features
    Claim 9. A gadget as in claim 1 or 4 made by the process of claims 5, 6, 7, or 8, in which…

    D. Reference back to another multiple dependent claim
    Claim 8. A gadget as in claim 5 (claim 5 is a multiple dependent claim) or claim 7, in which …


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    DRAWINGS

    (a) Drawing is required if necessary for the understanding of the subject.
    (b) Even if drawing is not necessary for the understanding, but the nature of the subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the examiner will require its submission.
    (c) A patent application, which includes a computer program listing which, is less than 10 printed pages may be submitted as drawings.
    Rule 1.81

    (a) The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.

    (b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views).

    (c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.

    (d) Drawings submitted after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

    Rule 1.83 - Content of drawing.

    (a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).

    (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.

    (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).

    Rule 1.84 - Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting drawings in utility patent applications:
    (1)Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings, or
    (2)Color. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application or the subject matter of a statutory invention registration. The Patent and Trademark Office will accept color drawings in utility patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
    (i)The fee set forth in § 1.17(i);
    (ii)Three (3) sets of color drawings; and
    (iii)The specification must contain the following language as the first paragraph in that portion of the specification relating to the brief description of the drawing: The file of this patent contains at least one drawing executed in color. Copies of this patent with color drawing(s) will be provided by the Patent and Trademark Office upon request and payment of the necessary fee.



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    OATH

    Oath (Declaration)     37 CFR 1.63     Requirements:
    A U.S. patent application must be accompanied by an oath signed by each inventor and sworn before, e.g., a notary public. For convenience, however, inventors are allowed to sign a declaration under penalty of perjury in lieu of an oath. The oath/declaration states, among other things,
    (a) that the inventor(s) named in the patent application are the actual inventors;
    (b) that the inventor(s) have read the application, including the claims; and
    (c) that the inventor(s) are aware of their duty to disclose information material to patentability.

    Sometimes patent examiners ask for submission of evidence, eg., evidence that the invention actually works. That is customarily handled by submitting one or more declarations under penalty of perjury. The declaration shoudl contain the following:
      1. Identify specification
      2. Name each inventor: Residence and Citizenship (family name, and at least one full name and initial.)
      3. Sole or joint
      4. Reviewed & understands specification, including claims
      5. Believes original and first inventor of what is claimed
      6. Acknowledges duty to disclose material information
      7. If claim foreign priority, name foreign app. and any earlier foreign appl.
      8. For CIP, acknowledge duty to disclose intervening material information


    Continuation and Divisional:
    • Copy of the oath/declaration is accepted in continuation and divisional.
    • Even if the specification is revised, but no new matter, still copy accepted.
    • If there is new matter, OIPE still accepts it, then sends it to the Examiner. The examiner will notify the applicant that new Oath is needed.
    • Copy of the 1st oath can be used in the 3rd application.
    • Can use either prior application number or attach prior specification.
    • No need for a new Oath, when deleting inventors.
    • New oath when adding inventors.
    • If one inventor had not signed and permission was granted, no signature is needed in the copy. But copy of the 1.47 status granted is needed.

    (a) PTO no longer requires a new oath where the execution has taken place 3 months or more before the f/d.
    (b) Defective oaths can be fixed by substitute oath.
    (c) If the original oath is not complete and misses some wording, file a newly executed oath which includes the missing wording.
    • If the original oath is signed by less than all inventors, file a new oath naming all but executed by the rest of the inventors.
    (d) Amendment to defective oath is not acceptable.

    Alternatives to signature of inventor

    1. Legal administrator of estate: 37 CFR 1.42
    2. Legal guardian 37 CFR 1.43
    3. If inventor refuses or cannot be found 37 CFR 1.47

    Assignee and Joint inventor

    If a new continuation or division application is filed and the application contains a copy of an oath or declaration that is not signed by one of the inventors and a copy of the decision for SES in the prior application, the office of Initial Patent Examination (OIPE) should forward the newly filed application to the office of petition. The application should be given a Rule 47 designation on the file jacket. The office of petition will inform the non-signing inventor of the filing of the continuation or division and will publish an announcement in the Official Gazette.

    Rule 1.63 Oath or declaration.
    (a) An oath or declaration filed under § 1.51(b)(2) as a part of an application must: (1) Be executed in accordance with either § 1.66 or § 1.68 (2) Identify the specification to which it is directed; (3) Identify each inventor by: full name, including the family name, and at least one given name without abbreviation together with any other give name or initial, and the residence, post office address and country of citizenship of each inventor; and (4) State whether the inventor is a sole or joint inventor of the invention claimed. (b) In addition to meeting the requirements of paragraph (a), the oath or declaration must state that the person making the oath or declaration: (1) Has reviewed and understands the contents of the specification, including the claims, as amended by any amendment specifically referred to in the oath or declaration; (2) Believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought and
    (3) Acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. (c) In addition to meeting the requirements of paragraphs (a) and (b) of this section, the oath or declaration in any application in which a claim for foreign priority is made pursuant to § 1.55 must identify the foreign application for patent or inventor's certificate on which priority is claimed and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. (d) (1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that: (i)The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section; (ii)The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application; (iii)The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and (iv)A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application. (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application. (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47 (inventor refuses to sign), the copy of the executed oath or declaration for such prior application must be accompanied by: (a) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and (b) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application. (4) Where the power of attorney (or authorization of agent) or correspondence address was changed during the prosecution of the prior application, the change in power of attorney (or authorization of agent) or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney (or authorization of agent) or correspondence address during the prosecution of the prior application. (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application. (e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application. The oath or declaration in any continuation-in-part application must also state that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

    Rule 1.64 - Person making oath or declaration.
    (a) The oath or declaration must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43, or 1.47. (b) If the person making the oath or declaration is not the inventor (§§ 1.42, 1.43, or 1.47), the oath or declaration shall state the relationship of the person to the inventor and, upon information and belief, the facts which the inventor is required to state.

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    OBVIOUSNESS


    Test of Obviousness
    Four factors are considered for obviousness:
    1. The scope and content of the pertinent prior art;
    2. differences between the pertinent prior art and the invention at issue;
    3. the level of ordinary skill in the pertinent art; and
    4. evidence of secondary considerations.

    Secondary Consideration

    The following secondary considerations must be taken into account before a decision on obviousness is reached.
    1. produced new, improved, or unexpected results;
    2. satisfied a long-felt want;
    3. solved an outstanding problem;
    4. was contra-indicated in the prior art;
    5. succeeded over unsuccessful efforts of others;
    6. went into extensive use and enjoyed prompt and general adoption;
    7. enjoyed public acquiescence;
    8. had commercial success;
    9. possessed economy, efficiency, or other advantage, including new, improved, unexpected, or contra-indicated results;
    10. turned a halt in the art into progress;
    11. turned failure into success;
    12. involved the taking of a last step as the last step wins in the law of patent.

    Establishing Obviousness


    A patentable invention must not be obvious at the time the invention was made, not just at the time a patent application is filed.

    Legal concept of the prima-fascia obviousness is based on three criteria:
    1. There must be some suggestion or motivation either in the references or in the knowledge generally available to modify the reference or to combine the reference teachings;
    2. there must be a reasonable expectation of success;
    3. the prior art reference, or when references are combined, must teach all the claim limitations, and the teaching and reasonable expectation of the success must be found in the reference.
    • References must expressly or impliedly should suggest in the references.
    Preponderance of evidence: 103 rejection based on the entire record is based on the preponderance of evidence. This requires that the evidence must be more convincing than the evidence in opposition to it.
    • Examiner has the burden of prove of the prima fascia case of obviousness.
    • If the examiner cannot prove, then the applicant is not under obligation to show any prove.
    • If the examiner does, then inventor has to prove otherwise.
    • Examiner has to step back in time and look at the skills of the ordinary person in the art at the time of invention.
    Combining References:
    1. The mere fact that the references can be combined does not render the combination obvious unless there is a suggestion in the prior art that the combination is desirable.
    2. The examiner must have objective reasons to combine the teaching of the references.
    3. If the examiner modifies the references and/or combines the references such that the modification makes the invention to satisfactory for its intended use, then there cannot be a suggestion for a combination of the references.
    4. Similarly if the principal of operation is changed by the modification it is not prim fascia obviousness.
    5. The prior art can be modified or combined as long as reasonable expectation of success at the time the invention was made is there.
    • Obviousness cannot be established by combining the teaching of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.
    • Nonobviousness cannot be established by attacking references individually where the rejection is based upon the teaching of a combination of references.

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PATENTABILITY

In order to patent an invention, first there must be a "conception," then a "reduction to practice."
There are three basic requirements for patentability:
1. Novelty (35 USC 102)
2. Nonobviousness (35 USC 103)
3. Utility (usefulness) (35 USC 101)


CONCEPTION

Conception is the complete performance of the mental part of the inventive act. It is the means or device to accomplish the objective. Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.

Conception can be shown by
a. showing dated documents such as drawings, notebook pages, correspondence, invoices for parts. These should be attached to the inventor's affidavit.
b. using oral or written disclosure to a third party or eyewitness. The third party must provide an affidavit.
c. using inventor's own affidavit, if there are no other dated documents. However, a corroborating witness affidavit will be required.

Conception is established when invention is sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or extensive inventive skill.

Inventor does not have to know that the invention is going to work for there to be a conception.

Conception and ARTP may occur simultaneously. Like in development of chemical compounds.

REDUCTION TO PRACTICE

There are two types of reduction to practice:
1. Actual Reduction to Practice:
This is a physical construction, building or performing testing sufficiently in order to demonstrate whether the conception works for its intended purposes. ARTP is complete when the last test to prove the concept is complete. ARTP must be corroborated. Laboratory testing may be permitted, however, preferred mode is actual environmental testing. In general, type of testing depends on the common practice in that field.

Every limitation of the count (claim) has to be reduced to practice.
Factors that establish reduction to practice: (MPEP 715.07 and 37 CFR 1.131)
a) For Process (or method) inventions, there must be proof that process steps were carried out and that the process works.
b) For Machine or article of manufacture, there must be proof that a physical device was made and that it worked for its intended purpose.
c) For Chemical composition, there must be proof that the composition was made and tested to demonstrate utility.

Test results, measurements, photographs of completed device, videotape of operation of device, and anything else can be used as a proof. These should be submitted with inventor's affidavit.
If there are no dated document, it is permissible to use inventor's affidavit without document but a corroborating witness affidavit will be required.
Later filed application cannot use the CRTP of the earlier filed application. The earlier filed application is only prove of conception.


2. Constructive Reduction To Practice:
The filing of a U.S. patent application which complies with the enablement requirement of 35 USC 112 is a constructive reduction to practice.
CRTP requires sufficient disclosure on how to use and how to make the invention.
Evidence sufficient for CRTP may be not sufficient for the ARTP.


Diligence
Diligence means activity toward reduction to practice or excusable inactivity.
Activity occurring after conception which is an attempt at reduction to practice; and excusable inactivity.
Both attorney of the engineering diligence is at issue. This does not mean that they have to drop everything else and pursue the invention.

Factors that establish diligence:
1. Dated documents such as drawings, notebook pages, correspondence, invoices for parts. These should be attached to the inventor's affidavit.
2. Dated documents of meetings, of efforts by third parties such as assistants, etc. These should be attached to the inventor's affidavit or third party affidavit.
3. Not required to spend every hour of everyday on the invention. But must explain periods of non-work such as prolonged illness. If working on multiple projects inventor must follow a reasonable sequence such as FIFO. Basic standard is reasonableness.
4. Diligence or non-diligence of patent attorney is imputed to the inventor. If patent attorney working on multiple projects, must follow reasonable sequence such as FIFO. No need for attorney diligence if there is actual reduction to practice.

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FILING DATE

Rule 1.53

(a) Application number.
Any papers received in PTO which purport to be an application for a patent will be assigned an application number for identification purposes. (b) Nonprovisional application - Filing requirements
The filing date is the date on which the following are filed: 1. a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and 2. at least one claim pursuant to § 1.75, and 3. any drawing required by § 1.81(a)

No new matter may be introduced into an application after its filing date.
A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).

(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section. (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.

(c) Provisional application - Filing requirements.
The filing date is the date on which the followings are filed: 1. a specification as prescribed by the first paragraph of 35 U.S.C. 112,
2. any drawing required by § 1.81(a).

No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.

(1) A provisional application must also include: 1. the cover sheet required by § 1.51(c)(1) or 2. a cover letter identifying the application as a provisional application. 3. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.

(2) A nonprovisional appl. may be converted to a provisional application and be accorded the original filing date of the nonprovisional. application, (i) Provided that a petition requesting the conversion, with the fee set forth in § 1.17(q), is filed prior to the earliest of: (A) Abandonment of the nonprovisional appl.; (B) Payment of the issue fee of the nonprovisional appl.; (C) Expiration of twelve months after the filing date of the nonprovisional; or (D) The filing of a request for a statutory invention registration under § 1.293 in the nonprovisional application. (ii) The grant of any such petition will not entitle applicant to a refund of the fees which were properly paid in the application filed under paragraph (b) of this section.

(3) A provisional application is not entitled to the right of Priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under § 1.78(a)(3) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.

(d) CPA - Filing requirements (1) A continuation or divisional application (but not a CIP) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that: (i) The prior nonprovisional application is either: (A) Complete as defined by § 1.51(b) ; or (B) The national stage of an international application in compliance with 35 U.S.C. 371; and (ii) The application under this paragraph is filed before the earliest of: (A) Payment of the issue fee on the prior application, unless a petition under § 1.313(b)(5) is granted in the prior application; (B) Abandonment of the prior application; or (C) Termination of proceedings on the prior application. (2) The filing date of a CPA is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph: (i) Must identify the prior application; (ii) Discloses and claims only subject matter disclosed in the prior application; (iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section; (iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph. (3) The filing fee for a CPA filed under this paragraph is: (i) The basic filing fee as set forth in § 1.16; and (ii) Any additional § 1.16 fee due based on the number of claims remaining in the application after entry of any amendment accompanying the request for an application under this paragraph and entry of any amendments under § 1.116 unentered in the prior application which applicant has requested to be entered in the continued prosecution application. (4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except byway of a petition under § 1.48. (5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with §1.125. (6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket. (7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application. (8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability: (i) Title of invention; (ii) Name of applicant(s); and (iii) Correspondence address. (9) Envelopes containing only requests and fees for filing an application under this paragraph should be marked “Box CPA.” Requests for an application under this paragraph filed by facsimile transmission should be clearly marked “Box CPA.”

(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a time period within which to correct the filing error. (2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph. Any petition under this paragraph must be accompanied by the fee set forth in § 1.17(i) in an application filed under paragraphs (b) or (d) of this section, and the fee set forth in §1.17(q) in an application filed under paragraph (c) of this section. In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected. (3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.

(f) Completion of Nonprovisional application subsequent to filing
Nonprovisional (including continued prosecution) application. If an application which has been accorded a filing date pursuant to paragraph (b) of this section, including a continuation, divisional, or continuation-in-part application, does not include the appropriate filing fee or an oath or declaration by the applicant pursuant to § 1.63 or § 1.175, or, if an application which has been accorded a filing date pursuant to paragraph (d) of this section does not include the appropriate filing fee, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, oath or declaration, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application. If the required filing fee is not timely paid, or if the processing and retention fee set forth in § 1.21(l) is not paid within one year of the date of mailing of the notification required by this paragraph, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, the oath or declaration in an application under paragraph (b) of this section, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application; or, if no basic filing fee has been paid, one year from the filing date to pay the processing and retention fee set forth in § 1.21(l) to prevent disposal of the application.

(g) Completion of Provisional application subsequent to filing
If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the appropriate filing fee or the cover sheet required by § 1.51(c)(1), applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application. If the required filing fee is not timely paid, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application.

(h) Subsequent treatment of Nonprovisional application
Nonprovisional (including continued prosecution) application. An application for a patent filed paragraphs (b) or (d) of this section will not be placed on the files examination until all its required parts, complying with the rules relating thereto are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.

(i) Subsequent treatment of Provisional application
A provisional application for a patent filed under paragraph (c) of this section not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).

(j) Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as in 35 U.S.C. 102(e).

Formal requirements for a filing date 37 CFR 1.53(a) & (d)

A. minimum to get filing date: USC 111, Rule 51(a)(1), 53(b)(1) 1. specification 2. claim (somewhere, some kind) 3. drawings, when necessary (but informal ok) 4. names of inventors. Can be filed later if fee paid and petition setting forth the reasons for delay.

B. minimum to get filing date for provisional: USC 111, Rule 51(a)(2), 53(b)(2) 1. specification; 2. drawings, when necessary (but informal ok); 3. names of inventors 4. Must ID as provisional (cover sheet) There is not need for claims. There is a $75 filing fee.

C. Not required to get filing date: 1. Oath or declaration; 2. fees 3. English 4. addresses 5. appointment of patent agent/patent lawyer. (i) If any of the minimum is missing, then filing date is the date last missing minimum is submitted. (ii) Date- actual PTO receipt date or express mail certificate date (date deposited in express mail). (iii) No faxing (iv) No regular certificate of mailing. (v) An application filed under 1.53(a) need not name any inventors in order to be entitled to a filing date under the New rules. (vi) Under the New Rule, if a drawing is missing, you get the filing date unless a petition to reset the filing date is received in response to a Notice of Omitted Items. Filing date is given but there is no substantive examination when there is no oath. Under the new rules, if the correct inventors are not named on a non-provisional application filed without an oath or declaration, the later filing of an oath or declaration will correct the earlier mis-identification.

Missing parts
If any application is filed without the specification, drawing or name, of the actual inventors, applicant will be notified and given a time within which to submit the missing part in order to obtain the filing date. Example: If a drawing is missing but the specification includes a description of the drawing and a claim refers to the missing drawing the only way to get the original filing date is by: An amendment deleting all references to the omitted drawing and the claim; a filing date petition with the proper fee to have the application accepted without the omitted drawing; and a supplemental declaration by the inventor stating the invention is adequately disclosed in, and a desire to rely on, the application as amended for purposed of an original disclosure and filing date. The analysis has to be done: Claim by claim Element by element Limitation by limitation

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PATENT CLASSIFICATION

Classification by the subject matter:

1. Utility patent
2. Design patent
3. Plant patent
4. Plant variety protection dept. of agriculture. This is not a patent and it is not even issued by PTO.


Classification by inventorship:

1. Sole patent
2. Joint patent: Joint Applicants, Joint Inventors

Classification by relation to other applications:

1. Original patent
2. Continuing patent:
    a. Continuation: means that claims in the later application are treated as if they were filed by the earlier application.
    b. Continuation-in-part (CIP): The new matter is always disclosed in the 2nd case. You have to determine whether it matters that the new matter is disclosed.
    c. Divisional
3. Provisional patent
4. Reissue patent
5. Refilled patent
6. Substitute applications & substitute specifications


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PROVISIONAL PATENT
Provisional application is 12-month option patent.
This will allow one to file regular application without starting 20 year term.
Provisional application provides domestic priority document.

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DESIGN PATENT

1. Standard: Novel, nonobvious and ornamental design.
2. Only one claim
3. Patentability judged based on the ordinary designer not ordinary observer.
4. No maintenance fee.
5. It is not necessary for a design application to contain all the elements set forth in 1.154(a).
6. The right of priority for 119 & 102(d) is six months in the case of designs.
7. Term of design patent is 14 years.
8. If you obtain a Federal registration as a trademark, it will be considered as publication, public use or on sale. Therefore, 102(b) applies.
9. When you have a utility patent and then apply for a design patent right after that, there is no need to have terminal disclaimer if there is a double patenting rejection, since the 14 yr of the design patent will be finished before the utility patent term.
10. A double patenting rejection will not be made in a case where the utility appl. and design appl. are based on the same subject matter, but where clearly patentable distinctions exist between them.
11. Several different embodiments of the same design concept can properly be shown in a single design patent application so long as they are based on a single inventive design concept. Otherwise, restriction could be required.

A brief description of the nature and intended use of the article in the design is not necessary component of the preamble in design appl.

If originally a color photo is given, submission of the black and white amendment is new matter.

New = Novel; not done before
Ornamental - visual = a shape configuration, surface ornamental.


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PLANT PATENT

1. Standard: invent or discover novel, nonobvious variety of plant and asexually reproduced.
2. More than One claim is not permitted.
3. The drawing of the plant patent need not include figure number and references unless required by the examiner.
4. Types of plant patent: (a) cultivated sports (b) mutants (c) hybrids (d) newly found seedlings
5. Plants that do not qualify: (a) Tuber propagated plants, such as potato, Jerusalem Artichoke and (b) new plants found in an uncultivated state

Examples:
1. Explorer finding a new plant in jungle will not qualify.
2. A hybrid corn plant discovered in a wheat field and asexually reproduced is patentable.
3.
You may amend the plant application to add additional description of the plant variety inadvertently omitted from the original application.
You may not be required to deposit an adequate sample of the plant variety with an acceptable depository and the claim may not be rejected under 112 without the deposit. Note that rules on deposits of biological materials do not apply to plant patent applications.
You may be required to restrict the claims between plant variety and plant method inventions you want examined for ultimate issuance as the single claim to plant patent application to which you are entitled.

1. Term and grace periods of the plant patent are the same as the utility patent.
2. Fees are less than utility patent.
3. Two copies of the specification should be sent.
4. Only one signed oath
5. Two copies of the color drawings or color photographs.

Examination of plant application:
1. Plant application may be submitted by PTO to Depart. of Agriculture for study and report.
2. When required by the examiner, affidavits from qualified agricultural expert regarding novelty and distinctiveness of the variety of plant claimed may be submitted.
3. If the examiner requires applicant to furnish specimens of the plant, and it is not possible to forward such specimens, plants must be made available for official inspection where grown.

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EXAMINATION OF THE PATENT
Once the application arrives at PTO, it is inspected by OIPE. It is then send to an examiner group, which then assigns an examiner for the application. The examiner examines the patentability of the application.

Applications are examined in the order of their U.S. filing date (not foreign priority date). However, "special applications" are given priority.


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ALLOWANCE

Allowance
Notice of Allowance
Quayle Action - Informal notice of allowance: MPEP1302.03
Quayle action closes the prosecution on the merits and imposes limitation on the type and scope of amendments. It is a precursor to formal notice of allowance.
1. Substantive prosecution closed; file continuation if you need different or broader claims.
2. You may respond to formal objections such as claim dependency, grammatical errors, revise the abstract.
3. No major substantive amendments will be accepted.
4. Discretionary amendments - same as after a formal notice of allowance.
5. If the examiner gives reasons for allowance you have absolute right to respond.

Time Line:
Note the time as to before or after the notice of allowance is the time when the examiner mails the letter.
Formal notice of allowance: What the PTO does:
1. Examiner renumbers claims so they are in sequence.
2. Examiner performs interference search.
3. Examiner may give reasons for allowance MPEP 1302.13, CFR 1.109

How Applicant can respond:
1. No amendment as a matter of right. Amendments may be made within the scope of 1.312. Entry of such amendment is discretionary with examiner.
2. Three months from the time of mailing of notice of allowance to:
a. pay issue fee - no extension - if you are late, application abandoned; must file petition to revive.
b. submit rule 312 amendment (CFR 1.312). Can have amend. before and after the issue fee.
c. Submit drawings or drawing changes - extension with fee permitted.
d. Submit response under CFR 1.109
e. Submit priority claim under USC 119, 120, 365.

Three-month period for payment of the issue fee is a statutory requirement and payment must be made within this period (35 USC 151).
Formal drawings will be accepted through the end of a six month statutory period (35 USC 133), provided a request for an extension of time and the correct fee are submitted before the end of the six month period.
If the 3 months is passed, file a petition to accept delayed payment of the issue fee based on failure to pay the issue fee due to unintentional delay, together with the issue fee and petition fee.


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ISSUE

The grant of a patent may be deferred up to one month under extraordinary circumstances. The following are not extraordinary circumstances:
1. negotiating a license.
2. filing a foreign counterpart appl.
3. collecting data for filing a CIP
4. desire for simultaneous issue of a related appl.

Withdrawal from issue before fee paid
1. Need petition plus good and sufficient reason to withdraw application. (Examples -- prior art or copy claims for interference.)
2. Fee required if reason for withdrawal is not the fault of PTO
3. Examiner can withdraw application from issue for prior art or for interference purposes in which case no petition or fee required.

Withdrawal from issue after fee paid
When the issue fee has been paid, withdrawal is not permitted unless:

1. A mistake on the part of the office;
2. A violation of 1.56 (duty to disclose info) or illegality in the appl.
3. Unpatentability of one or more claims;
4. for interference; or
5. for abandonment to permit consideration of an IDS under 1.97 in a continuing appl.
6. similar requirement as in 1.313(a): petition, fee, reason.

Payment of the Issue fee:
1. must pay Three months after date of the notice of allowance.
2. Application is abandoned for failure to pay issue fee.
3. Fee may be paid late.
a. requires petition plus extra fee.
b. if delay unavoidable. Must file petition, plus issue fee, plus delayed payment fee, plus showing of unavoidable -- this must be done promptly after applicant aware of the abandonment.

For cases filed before June 8, 1995, if petition is not filed within six months of abandonment date (i.e., 9 months from notice of allowance) otherwise a terminal disclaimer will be required.
But no terminal disclaimer or six months rule for applications filed after June 7, 1995.

c. if delay unintentional, CFR 1.316(c) applies. Must pay issue fee, file petition with larger fee under CFR 1.17(m) and statement that delay was unintentional.

must file within one year after date of abandonment (i.e., 15 months from notice of allowance) or

if you file petition under 316(b) and PTO rejects your petition, then you must file under 316(c) within 3 months after first PTO decision on unavoidable. No extension to file here even if you ask PTO to reconsider their first decision on unavoidable.

4. Beware of annual fee changes. CFR 1.18. You must pay the amount due as of the date of payment not the date of the notice.


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AMENDMENT

Amendment before examiner acts
The applicant may amend
1. Any changes must be supported by original except when filed concurrently with application and later filed oath or declaration refers to both.
2. before or after the first examination and action and also
3. after the second or subsequent examination or reconsideration as specified in 1.112 or when as specifically required by the examiner.
4. may amend in accordance with 1.510(e) and 1.530(b) prior to reexamination and during reexamination proceedings in accordance with 1.112 and 1.116.

Each response must be
1. bona fide attempt to advance case to final action and
2. Must address each rejection and objection (Must be fully responsive).

Non-responsive reply
a) If intentional, application considered abandoned - unless remedied within statutory period.
b) If not intentional, examiner sends letter pointing out deficiency and setting ( 1 month) deadline to correct

Note- New deadline can be outside six month period, but cannot be extended

Amendments after final action or appeal. Rule 1.116

(a) After a final rejection, amendments may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration on appeal may be admitted.

The admission of, or refusal to admit, any amendment after final rejection, and any related proceedings, will not operate to relieve the application or patent under reexamination from its condition as subject to appeal or to save the application from abandonment under § 1.135.

(b) If amendments touching the merits of the application or patent under reexamination are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.

(c) No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in § 1.198, or to carry into effect a recommendation under § 1.196.

Premature: If the final rejection is premature, applicant can file a request to the primary examiner to recommend the finality of the rejection be withdrawn.

Amendment entered as a matter of right

1) Canceling rejected claims prior to a final O/A;
2) Before mailing of the notice of allowance, the amendments may be made as a matter of right.

Amendment NOT entered as a matter of right

1) Amending finally rejected claims;
2) Adding new claims after a final rejection;
3) Reinstating a previously cancelled claim;

After Final rejection or action

After final rejection
1. An amendment may be made canceling claims or complying with any requirement.
2. An amendment may be admitted upon showing of good and sufficient reasons why it is necessary and was not earlier presented.
3. An amendment cannot be made as a matter of right in a properly appealed case.
4. An amendment presenting rejected claims in better form for consideration on appeal is admissible.
5. An amendment cannot be made as matter of right after a final rejection, no added claims and no request to reinstate previously canceled claims.

If amendment is rejected, the additional fees for new claims will not be refunded.

? Amendments after notice of allowance: 1.312

(a) No amendments may be made as matter of right after the mailing of the notice of allowance.
Amendments filed before the payment of the issue fee may be entered on the recommendation of the examiner and approval of the commissioner.

(b) After the payment of the issue fee the amendment must be accompanied by a petition including fee and a showing of the good and sufficient reason why it is necessary and was not earlier presented.

In addition to giving directions to amending the claims, the applicant should show:
(1) why the amendment is needed;
(2) why the proposed amended or new claims require no additional search or examination;
(3) why the claims are patentable, and
(4) why they were not earlier presented.


Summary:
1. Before issue fee paid, need good and sufficient reasons why claims not presented earlier since examiner is supposed to be finished with the application. CFR 1.312(b).
2. After issue fee paid, need petition good and sufficient reasons, plus fee. CFR 1.17(I)
3. No broader claims because they require new search.
4. No claims of different statutory categories.
5. Narrower claims OK; prefer dependent form.
6. No extensive editorial changes.


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INTERFERENCE

Persons may be liable:
(1) for directly infringing a patent;
(2) for inducing another to infringe a patent;
(3) for contributory infringement;
(4) for importing, selling or using a product made abroad through a process protected by a U.S. process patent; or
(5) for manufacturing or selling certain components of a patented invention to be assembled abroad.


To infringe directly, the defendant must have made, used or sold the patented invention in the U.S. To determine whether this has happened the court will look to the claims in the patentee's patent and determine whether the defendant's alleged infringing matter falls within the description in the claims.

In determining infringement, two inquiries are involved;
1. Scope of claims; and
2. whether claimed invention has been infringed.




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PCT

To get international filing date under PCT the following are necessary:
1. The designation of at least one PCT state;
2. A part of the application which appears to be a claim;
3. A part of the application which appears to be a description;
4. An application in a language prescribed by the receiving office;
5. An indication that the application is intended as a international application.

The name of the inventor need not be given to obtain f/d. Only the name of the applicant which may not be the inventor.

The payment of the fee is not required to get f/d.

In order to prevent abandonment of the PCT, fee must be paid within 30 months of the priority date.

Only residents or nationals of US may file intern appl. in US receiving office.

Necessary drawings in PCT can be filed within 30 days after filing.

No need to file Oath and fee at the time of filing to get f/d

Name of the inventor need not be given to get f/d. Only name of the applicant who may not be the inventor is needed

If a request for PCT does not indicate the country for which the priority appl. was made and the filing date of the appl., any priority date shall be considered not to have been made.

Amendments in PCT must be in the form of replacement sheets.

Priority claim in PCT application may not be added after the PCT filing date: if the request for a PCT application does not indicate the country for which the priority application was made and the filing date of the application, any priority date shall be considered not to have been made.


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Patent Maintenance

Patent term and extensions

1.      Patent lives for 17 years if fee paid if based on pre-June 8, 1995 filing, otherwise 20 years from filing date.
2.     
Patent extensions:
(a)   
which patents? Human and Animal Drug and Devices if marketing delayed by FDA review. No extension for plant or design patents.
(b)   How long? 5 years maximum extension but patent can not continue more than 14 years from date extension is granted.
(c)    Petition plus fee.
(d)   Must apply before patent expires -- interim extension.
(e)    apply within 60 days after FDA approval otherwise you have waived to get your extension.
3.     
Patent extensions: PTO delay
(a)    Utility patent applications filed after June 7, 1995 and pending more than 3 years;
(b)   Must meet at least one of the following:
(i)     If no terminal disclaimer required for any other reason, then extension added to end of patent term based upon total non-overlapping periods of delay (CFR 701(c) for calculation rule) up to maximum of 5 years;
(j)     if applicant was diligent.

Importance of the Issue date:

1.      patent rights become enforceable on issue date.
2.      Issue date is bar to filing continuing/divisional applications. USC 120
3.      issue date starts the two year period for broadened reissue claim USC 272.
4.      Issue date starts the one year period for opponent copying your claims for interference USC 135(b)5.      Due date of maintenance fees computed from issue date.

Maintenance Fees

1.      No maintenance fee for plant or design patents.
2.     
Maintenance fees due  3.5 for the 1st , 7.5 for the 2nd , and 11.5  years for the 3rd maintenance fee from issue date CFR 362(d); amount of fee specified in CFR 1.20(e-g) and USC 41(b).
3.     
Can pay during 6 month grace period after due date by paying fee & surcharge. CFR 1.20(h)
4.     
If failure to pay unavoidable, pay after grace period with surcharge plus petition and fee and a showing that the delay was unavoidable, including steps taken to ensure timely payment, etc. USC 41(c), CFR 1.20(i)(1) and 378(a).
5.     
If failure to pay unintentional, pay not more than 24 months after the 6 months grace period with petition and large fee and statement that delay was unintentional 37 CFR 1.20(i)(2) and 378(c).
6.     
Can seek reconsideration once, with additional petition fee under CFR 378(d).
7.     
Any person can pay the maintenance fee. No authorization needed. (1.366).
8.     
At the time of payment of the maintenance fee on a patent which qualified as SES, you have to determine whether the current owner of the patent qualifies as a SES and whether he has sold or licensed any right  to any entity that does not qualify for SES. 1.28(b)

If  a petition to defer issuance of a patent is granted, the issuance is deferred for a period up to one month only, in the absence of extraordinary circumstances or a requirement of the regulations.

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Ownership

Ownership

Inventorship

Can be bought, sold, or transferred
like any other personal property

Determined by application of law  to  specific facts

Cannot cure erroneous
inventorship but can determine enforceability

If inventorship is wrong, patent is
invalid unless correctable and
corrected

Can control patent and prosecution and exclude inventor

Has no rights against owner

Patent office cannot determine, only courts can

Patent office can determine

Can be any legal entity 

Must be natural people

5.1 Persons entitled to obtain a patent:

1. a sole inventor,
2. joint inventors
3. employers and employees,
4. government employees with the exception of Patent Office employees,
5. a legal representative of an insane or a deceased inventor,
6. a foreign executor or administrator, or
7. a miscellaneous group, including
a) an infant,
b) a woman,
c) an alien.
8. Anyone in the world except PTO employees (plus one year)
9. PTO employees can inherent, but not acquire)
10. Exception: If invention prior to PTO employment.
11. If one invents, then assignee, then becomes PTO employee, the assignee can require the employee to apply for patent.

5.2 Ownership:

Joint applicants do not need to be joint inventors of every claim:
n ownership follows inventorship
n claim by claim analysis.
Original inventor(s) are original owners and remain so until they transfer their interest.
n Employee/employer
- express agreement re inventions
- implied obligation
--- employed to invent
--- shop right: A paid up nontransferable nonexclusive license.

1. Absent agreement, each owner can make, use or sell without accounting to the others.
2. Each joint owner treated as sole-owner regardless of share each owns.
3. Exception: All joint owners- must be parties to suit charging interfringement of the jointly owned patent.

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Assignment
5.3 License or assignment?

Assignment

License

Entire interest  transferred

At least title retained by owner

Recordable and effective against subsequent innocent buyer

Recordable but no constructive effect against buyer

May be conditional in writing. Oral is only effective against assignor
35 USC 261
  37 CFR 3.56

Transfer  for periods less than remaining term or less than all claims

5.5 Assignment USC 261, CFR 3.11

Certificate of Acknowledgement is Prima facie evidence of execution of assignment if sworn:
A) Before notary to
B) certain persons in foreign country
Conditional assignment treated as absolute (but only for PTO purposes)

1. New assignment required for CIP, not for continuation.
2. prior assignment of the 1st appl. applies to continuation, divisional, reissue, reexamination.
3. Assignees has right to intervene anytime.
4. There is no need to obtain written authority of the alleged owner of patent appl. to obtain copy of the assignment. PTO upon showing of prospective purchaser or licensee will provide a copy of the assignment agreement in the appl.
5. By including the assignment of patents with applications, the entire document becomes available to public. Therefore, to keep it confidential, record the assignment of the patent and applications separately
6. If A licenses to X and assigns to Y, Y had legal title subject to X's license..
7. If application is assigned in entirely, patent issues to assignee.
8. Transfer of future interest is not assignment: A transfers all rights in inventions conceived by during the next year to X.
9. Assignment records relating to an abandoned non-reissue appl. are open to public inspection if abandon. appl. is referred to in an assignment covering a number of patent appl. having issued as patent.

5.5.1 Assignment Recording: CFR 3.21

An assignment shall be void as against the subsequent purchaser for valuable consideration, w/o notice, unless it is recorder in PTO within 3 months from its date or prior to the date of the subsequent purchaser.
1. Legal title passes whether recorded or not;
10. Constructive notice to subsequent purchase defeats later purchaser if
A) consideration paid:
- purchaser or mortgagee
- valuable consideration

B) recorded within 3 months from its date
C) before date of subsequent purchase
D) innocent purchaser (without actual notice)

11. English or foreign with signed translation
Identify patent or application

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Inventors
Application and patent must name the true inventors involved. To be an inventor one must:
1. contribute to conception (reduction is irrelevant)
The mental creation of a complete and operative invention.
2. Be a natural person
(not a corporation, partnership, government, etc.)
Oath must designate the true inventors.
Joint Inventors
Inventors: Inventors may apply for patent jointly even though
(1) they did not physically work together or at the same time,
(2) each did not make the same type or amount of contribution,
(3) each did not make a contribution to the subject matter of every claim.
If a joint inventor
refuses to join in an application or
cannot be found or reached after diligent effort,
the application may be made by the other inventor on behalf of himself and the omitted inventor.
--Two applications need not have the same inventorship for domestic priority
1. Must be at least one-way communication between joint inventors
• some element of joint behavior
• direct or indirect
2. Must disclose what is claimed fully enough to enable a skilled person to practice the invention
3. But suggesting old solutions from another art may not yield joint inventorship.
4. There must be some collaboration between the joint inventors.
5. If A conceives outside U.S. and tells it to B on telephone, who is in U.S., A is still the sole inventor.
Inventors in a nonprovisional applicatin
Ø The inventors of the U.S. nonprovisional application and of the foreign application must be the same, for the right of priority, even though the two applications may be owned by the same party.
Ø Joint inventors A and B in application filed in the U.S. may claim the benefit of the application filed in a foreign country by A and another by B, i.e., A and B may each claim the benefit of their foreign applications.
Ø If the Foreign application is filed by A+B+C
but US application is filed by A only. In order to get the priority of the foreign application, need to have:
n A US oath which names A as the sole inventor;
n Identify foreign application
n Statement that foreign application was filled by:
foreign inventors;
assignee;
legal representative; or
agent(s)
of inventor or on behalf of inventor.
Ø Each claim in an application can have different date of invention and different inventorship.
Inventors in a Provisional
Names of one or more inventors of provisional disclosure
Best mode contemplated by inventors(s) of claim in subsequent regular application
Nonprovisional vs. provisional
- At non-provisional filing application must name all correct inventors
- at least one correct inventor named in earlier filed provisional
That named inventor's invention must be claimed in one or more claims supported in provisional application.
A claim having incorrect inventorship is invalid unless it can be corrected and is diligently corrected after discovery.
Correction of inventorship
1. The options for correction of an application:
1. refile the application with the correct inventive entity without need to a petition.
2. file a petition under 1.48 in a non-reissue appl.
3. in a reissue appl., file another reissue oath or declaration
2. The options for correction of a patent are:
1. file a petition under 1.324 for certificate of correction
2. file a reissue application (1.171 & 1.175)
3. obtain a court order (35 USC 256)
3. Requirements:
n Oath (notary) or a declaration which refers to and incorporated language from 37 CFR 1.65 or 28 USC 1746
n Whenever through error a person is named in an application as an inventor, or an inventor is not named, and such error arose without any deceptive intention, the Commissioner may permit the application to be amended accordingly.
n Note, there is no diligency requirement any more. However, the petition after final rejection or allowance are still subject to the 1.116 or 1.312.
n When an executed oath/declaration is not submitted in the beginning, during the pendency of the application, it can be later submitted to operate to automatically change the inventorship along with the surcharge for the delayed submission.
No verification required under the New Rule
Patent application, other than reissue application
(a) Error: If error arose without any deceptive intention in any application other than reissue
- on the part of the person named as an inventor in error or
- on the part of the person who through error was not named as an inventor,
the application may be amended to name only the actual inventor or inventors.
Such amendment must be accompanied by:
(1) A petition including a statement from persons being added and deleted that the error occurred without deceptive intention on his part;
(2) An oath or declaration by the actual inventors
(3) The fee set forth in § 1.17(i); and
(4) consent of the assignee.
(b) Delete: If the correct inventors are named in a nonprovisional application, other than a reissue application, it is later changes by amendments, must file amendment deleting persons who are not inventors.
Such amendment must be accompanied by:
(1) A petition including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed in the application; and
(2) The fee set forth in § 1.17(i).
(c) Add: If a nonprovisional application, discloses subject matter by inventors not named in the application, the application may be amended to add claims to the subject matter.
Such amendment must be accompanied by:
(1) A petition including a statement from each person being added as an inventor that the amendment is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his part;
(2) An oath or declaration by the actual inventors
(3) The fee set forth in § 1.17(i); and
(4) written consent of the assignee
(d) Provisional: If the names of inventors were omitted in a provisional
application through error without any deceptive intention on the part of the
omitted inventors, the provisional application may be amended to
add the names of the omitted inventor or inventors.
Such amendment must be accompanied by:
(1) A petition including a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventors; and
(2) The fee set forth in § 1.17(q).
(e) Provisional: If persons were named as inventors in a provisional application through error without any deceptive intention on the part of such persons, an amendment may be filed in the provisional application deleting the names of the persons who were erroneously named.
Such amendment must be accompanied by:
(1) A petition including a statement by the persons whose names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(2) the fee and
(3) the written consent of the assignee.
If the correct inventors are not named on filing a nonprovisional application without an executed oath or declaration, the later submission of an executed oath or declaration during the pendency of the application will act to correct the earlier identification of inventorship.

If the correct inventor or inventors are not named on filing a provisional application without a cover sheet the later submission of a cover sheet during the pendency of the application will act to correct the earlier identification of inventorship.
The Office may require such other information as may be deemed appropriate
under the particular circumstances surrounding the correction of inventorship.
When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under 1.634.
In a CPA the inventors are the same as the ones in the prior application at the time of CPA application. Petition is needed to correct the inventors.
Correction of inventorship in patent after issue
Rule 1.324: When a patent is issued, and there is an error in the inventorship without deception, the Commissioner, on petition of all parties and assignees, and proof of facts and payment of fees, or on order of court, issue a certificate naming only the actual inventor.
n Application by all parties and assignees
n satisfactory proof of facts
n fee
n order from federal court
To federal court
motion with notice and hearing
Result: certificate by commissioner naming actual inventors.
By reissue (USC 251)
Correcting inventorship in interference proceedings
Inventorship determined in usual way
evidentiary standards must be consistent between PTO and courts
Opposing party will have opportunity to be heard.

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